McDermott Will & Emery

On appeal from the Trademark Trial and Appeal Board (TTAB), the US Court of Appeals for the Federal Circuit affirmed the TTAB’s refusal to register a stylized form of the mark CHURRASCOS for restaurant services, finding that the trademark is generic and thus unregistrable. In re: Cordua Restaurants, Inc., Case No. 15-1432 (Fed. Cir, May 13, 2016) (Dyk, J).

Since 1988, Cordua has operated the Churrascos chain of restaurants in Texas. The restaurants serve South American cuisine, including churrasco-style grilled meats. In 2008, Cordua obtained a US trademark registration for the word mark CHURRASCOS in connection with restaurant and bar services. However, when Cordua applied for a stylized version of the CHURRASCOS mark in 2011, the trademark examiner rejected the application on grounds that the mark is generic for Cordua’s restaurant services, since the word “churrascos” simply identifies a type of restaurant and the food it serves.

Cordua appealed the trademark examiner’s decision to the TTAB, which affirmed that the word “churrascos” is generic for a type of cooked meat and therefore “a generic term for a restaurant featuring churrasco steaks.” Furthermore, the TTAB confirmed that Cordua’s earlier registration for the CHURRASCOS word mark had no bearing on the 2011 application for the stylized version of the mark. Cordua appealed.

As a preliminary matter, the Federal Circuit confirmed that Cordua’s existing registration for the CHURRASCOS word mark does not preclude a finding that a later stylized version of the mark is generic, and that the presumption of validity does not carry over from registration of an older mark to a new application for the mark. The Federal Circuit then outlined the two-step Ginn test for assessing whether a mark is generic. The first question requires a determination of the genus of goods or services at issue. The second question looks at whether the relevant public would understand the term in question as referring to that genus of goods or services.

Turning to the issue of whether the TTAB properly determined that the stylized form of CHURRASCOS is generic, the Federal Circuit addressed the first Ginn question and found that the TTAB correctly defined the genus of services at issue to be “restaurant services.” Next, the Court addressed the second Ginn question as to whether the term “churrascos” is generic for restaurant services, and concluded that the TTAB’s decision was supported by substantial evidence. In particular, the Court noted that the TTAB cited to English-language dictionaries and other sources that define “churrasco” as grilled meat.

Cordua argued that while “churrasco” refers to a style of grilling meat, it does not refer to restaurant services. However, the Federal Circuit cited its decision in, in which the Court found MATTRESS.COM to be generic for online retail services in the field of mattresses and beds, because the term “mattress” identified a key aspect of the retail services. Here, the Court noted that there is substantial evidence in the record to show that “churrascos” refers to a key aspect of a class of restaurants referred to by consumers and competitors in the field as “churrasco restaurants.” Thus, the Court held that the TTAB did not err in concluding that the stylized CHURRASCOS trademark is generic as applied to restaurant services, and affirmed.