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May 13 — “Churrascos” is a generic word for restaurants serving South American-style grilled meats or barbecue and can't be registered as a trademark, the U.S. Court of Appeals for the Federal Circuit ruled May 13.
The court affirmed the Patent and Trademark Office's rejection of an application to register a stylized logo, even though the applicant already has a registration on the word “Churrascos” by itself.
If a word is generic for an applicant's goods or services, then the PTO is right to refuse registration, the court said. That's true even if the refusal contradicts an earlier registration, it said, suggesting the older registration might have been granted in error.
It also applies even if the older registration has achieved “incontestable” status after five years under Section 14 of the Lanham Trademark Act of 1946, 15 U.S.C. §1064.
The decision means a business operating for years under a particular name, and maybe even holding a trademark registration for five years or more, is not immune to a finding that its supposed trademark is actually a generic word that any competitor can use.
Cordua Restaurants Inc. operates a chain of five Churrascos locations in the Houston area, the first of which was opened in 1988 by Michael and David Cordúa.
In 2007, Cordua applied to register the word mark “Churrascos” with the PTO. The registration was issued the next year.
In 2011, the company filed to register its Churrascos logo, but a PTO trademark examiner rejected it as generic after finding the word “churrascos” meant “beef or grilled meat more generally,” and that this was “a key characteristic or feature of the restaurant services, namely, the type of restaurant.”
The Trademark Trial and Appeal Board affirmed the examiner's conclusion and Cordua, not satisfied with that result, appealed to the Federal Circuit.Source Material:
In re Cordua Restaurants Inc.
TTAB Opinion:March 24, 2014
The Federal Circuit agreed with the PTO. It rejected Cordua's argument that its 2008 registration's “incontestable” status meant that the PTO couldn't rule that the current application was doomed as generic.
The PTO is ruling on a new registration, not on existing registrations, so whether the old registration could or should be cancelled in the face of its incontestability is not relevant, the court said.
Section 15 says a registration becomes “incontestable” after five years, meaning someone else can't come along and challenge the trademark's validity.
However, the court said, Section 14 of the Lanham Act, 15 U.S.C. 1064, says that an existing registration—even an incontestable one—can be killed if the term it covers is later found to be generic.
The fact that an earlier registration went through doesn't prevent a finding of genericness with respect to the application currently before the examiner, the court said.
“The PTO is required to examine all trademark applications for compliance with each and every eligibility requirement, including non-genericness, even if the PTO earlier mistakenly registered a similar or identical mark suffering the same defect,” the court said.
The Federal Circuit also found no error in the examiner's and the board's finding that “churrasco” was a generic term for South American-style grilled or barbecued meats and, by extension, for restaurants featuring those dishes. It rejected the argument that making the term plural—as in the restaurant's name, “Churrascos”—made any difference.
The fact that Cordua's application sought to cover restaurant services in general also weighed against him, the court said. In fact, an entirely different kind of applicant might have had better luck.
For an applicant seeking to register “CHURRASCOS” in connection with “a narrower sub-genre of restaurant at which grilled meat is not a key aspect of the service provided—for example, vegetarian or sushi restaurants—the result could well have been different,” the court said.
Judge Timothy B. Dyk issued the court's opinion. Judges Sharon Prost and Kara Farnandez Stoll joined.
Sutton McAughan Deaver PLLC represented Cordua Restaurants. The PTO's Office of the Solicitor represented government.
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