Pages

People

IP Case Updates Blog

Practices

Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

Home - IP Case Updates Blog

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion in <a href="https://www.cafc.uscourts.gov/opinions-orders/24-1118.OPINION.12-9-2025_2616391.pdf"><em>In re: Bayou Grande Coffee Roasting Co.</em>, No. 24-1118 (Dec. 9, 2025)</a>, reversing the Trademark Trial and Appeal Board’s affirmance of an examiner’s refusal to register the mark KAHWA for cafés and coffee shops.

core/paragraph

Bayou operates 14 coffee shops in the Tampa-St. Peterburg area under the name KAHWA. It applied to register KAHWA for cafés and coffee shops. Relying on the doctrine of foreign equivalents (“DFE”), which requires marks consisting of foreign words be translated into English for purposes of assessing registrability, the assigned examiner rejected the mark as generic or merely descriptive of cafés and coffee shops, finding “kahwa” means “coffee” in Arabic (the “coffee meaning”). The examiner also refused registration because Bayou had not submitted an English translation of “kahwa,” as required by PTO procedures implementing the DFE. In response to the non-final office action, Bayou disputed the coffee meaning and argued the DFE did not apply because “kahwa” refers in English to a traditional Kashmiri green tea from Central Asia (the “tea meaning”). The examiner maintained the refusal, citing the tea meaning as additional grounds. On reconsideration, Bayou argued the refusal lacked substantial evidence because no record evidence showed kahwa tea was sold in American cafés or coffee shops. The examiner maintained the refusal based on both the coffee and tea meanings. The Board affirmed based solely on the tea meaning.

On appeal, the Federal Circuit first determined the Board’s refusal based on the tea meaning did not constitute an improper new ground because Bayou had had a fair opportunity to respond to it. But the Court rejected the Board’s genericness finding for lack of substantial evidence: “KAHWA … cannot be generic for cafés and coffee shops because there is no evidence selling kahwa is a key aspect of café and coffee shop services.” For the same reason, the Court rejected the Board’s mere descriptiveness finding: “[T]here is no evidence selling kahwa is a ‘characteristic of the goods or services’ of cafés or coffee shops, let alone evidence showing relevant customers would immediately know selling kahwa is a characteristic of cafés and coffee shops.” Finally, the Court determined as a matter of law that the DFE does not apply here because “kahwa” has a well-established alternative English meaning – Kashmiri green tea. Accordingly, the Court reversed the determination that KAHWA is not registrable.

CAFC Reverses Refusal of KAHWA Registration

Related Professionals