Federal Circuit disposition — 24-1118

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: BAYOU GRANDE COFFEE ROASTING CO.,
Appellant
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2024-1118
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
90549985.
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Decided: December 9, 2025
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ANDRIY L YTVYN, Hill Ward Henderson, PA, Tampa, FL,
argued for appellant. Also represented by T HOMAS J.
BANKS .
MICHAEL CHAJON, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee John A. Squires. Also represented by MARY BETH
WALKER , N ICHOLAS T HEODORE MATICH , IV.
______________________
Before M OORE, Chief Judge, HUGHES and STOLL , Circuit
Judges.
MOORE, Chief Judge.
Case: 24-1118 Document: 62 Page: 1 Filed: 12/09/2025

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IN RE: BAYOU GRANDE COFFEE ROASTING CO. 2
Bayou Grande Coffee Roasting Company (Bayou) ap-
peals a Trademark Trial and Appeal Board (Board) deci-
sion affirming the examiner’s refusal to register the mark
KAHWA for cafés and coffee shops. We reverse.
BACKGROUND
In February 2021, Bayou filed a trademark application
to register the mark KAHWA for cafés and coffee shops.
J.A. 40–45.1 The examiner issued a non-final office action
refusing registration after finding the mark generic or
merely descriptive of cafés and coffee shops. J.A. 58–62.
The examiner relied on the doctrine of foreign equivalents
to refuse registration because KAHWA allegedly means
“coffee” in Arabic. The examiner also refused registration
because Bayou failed to submit an English translation
showing KAHWA means coffee. In response, Bayou argued
KAHWA does not mean coffee in Arabic and the doctrine of
foreign equivalents cannot apply because KAHWA has an
alternative English-language meaning as a specific type of
traditional Kashmiri green tea from Central Asia. J.A. 72–
78; J.A. 134. In a final office action, the examiner main-
tained the prior refusals based on the coffee meaning and
added new grounds of refusal based on the tea meaning.
J.A. 897–901.
Bayou requested reconsideration, arguing KAHWA
does not mean coffee in Arabic and cannot be generic or
merely descriptive of cafés and coffee shops based on its
Kashmiri green tea meaning because there is no record ev-
idence of such tea being sold in American cafés and coffee
shops. J.A. 1000–11. The examiner denied Bayou’s
1 Bayou alleges it began using KAHWA in commerce
in 2008 when it opened its first coffee shop in St. Peters-
burg, Florida under this name. J.A. 41; J.A. 479. Since
launching, Bayou has expanded to fourteen coffee shops in
the Tampa Bay area, all branded under the name KAHWA.
J.A. 29.
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IN RE: BAYOU GRANDE COFFEE ROASTING CO. 3
request and maintained the refusals in the final office ac-
tion. J.A. 1235–38. Bayou appealed to the Board, which
affirmed the examiner’s refusals based on the Kashmiri
green tea meaning of KAHWA. J.A. 1–34. The Board de-
clined to address the examiner’s refusals based on the Ar-
abic coffee meaning. Id. at 1–6.
Bayou appeals. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B) and 15 U.S.C. § 1071(a)(1).
D ISCUSSION
Bayou argues the Board’s genericness and mere de-
scriptiveness findings based on the Kashmiri green tea
meaning of KAHWA constitute new grounds of refusal and
are not supported by substantial evidence. Bayou Br. 21–
42. Bayou also argues the Patent and Trademark Office
(PTO) should be precluded from relying on the doctrine of
foreign equivalents. Id. at 20–21.
I. New Grounds
When considering whether the Board issued a new
ground of refusal, the “ultimate criterion” is “whether ap-
plicants have had fair opportunity to react to the thrust of
the rejection.” Honeywell Int’l Inc. v. Mexichem Amanco
Holding S.A. DE C.V., 865 F.3d 1348, 1357 (Fed. Cir. 2017).
The Board issues a new ground when it “relies on new facts
and rationales not previously raised to the applicant by the
examiner.” Id. (emphasis omitted). Whether the Board re-
lied on a new ground of refusal is a legal issue we review
de novo. Id.
The Board noted the parties devoted “the majority of
their briefs” to addressing whether KAHWA means coffee
in Arabic, and whether the doctrine of foreign equivalents
applies. J.A. 4. The Board, however, exercised its discre-
tion to forgo this issue, focusing instead on the refusals
based on the Kashmiri green tea meaning. Id. at 6. The
Board explained that Bayou and the examiner addressed
this issue and put forth evidence KAHWA has a well-
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IN RE: BAYOU GRANDE COFFEE ROASTING CO. 4
established alternative English meaning as Kashmiri
green tea. Id. at 4–6.
Bayou argues this constitutes new grounds of refusal
because the Board reinstated these refusals after the ex-
aminer had withdrawn them. Bayou Br. 39–42. Bayou
contends the examiner withdrew these refusals in denying
Bayou’s reconsideration request when the examiner stated
that “given the esoteric nature of this beverage, there is no
reason to believe that consumers would understand this
morning [sic] such that it negates the Arabic meaning of
the wording.” Id. at 41; J.A. 1237. Bayou also contends the
examiner’s failure to address the Kashmiri green tea
meaning in its appeal brief to the Board is further evidence
the examiner had withdrawn these refusals. Bayou Br. 41.
We do not agree.
Bayou does not dispute it responded to the examiner’s
refusals based on the Kashmiri green tea meaning. Id. at
40–41 (citing J.A. 898 (final office action); J.A. 1006 (recon-
sideration request)). Moreover, the examiner never with-
drew these refusals. In denying Bayou’s reconsideration
request, the examiner referenced the “esoteric” nature of
the Kashmiri green tea meaning when responding to
Bayou’s argument that the green tea meaning necessarily
negates the coffee meaning, which the examiner did not
agree with. J.A. 1237. In that same denial, the examiner
“maintained and continued” the refusals from the final of-
fice action, which Bayou admits include the refusals based
on the Kashmiri green tea meaning. Id. at 1235 (citing
J.A. 897–901); Bayou Br. 40. And the examiner never
withdrew any refusals in briefing to the Board. See
J.A. 1499–1512. Because Bayou had a fair opportunity to
respond to the examiner’s refusals based on the Kashmiri
green tea meaning and the examiner never withdrew these
refusals, Honeywell, 865 F.3d at 1357, we conclude the
Board’s genericness and mere descriptiveness findings
based on the Kashmiri green tea meaning do not constitute
new grounds.
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IN RE: BAYOU GRANDE COFFEE ROASTING CO. 5
II. Genericness
A generic term is the common descriptive name of a
class of goods or services and cannot be registered as a
trademark because it is incapable of indicating the source
of goods or services. Princeton Vanguard, LLC v. Frito-Lay
N. Am., Inc., 786 F.3d 960, 965 (Fed. Cir. 2015). In deter-
mining whether a term is generic, the critical issue is
whether relevant customers primarily use or understand
the term to refer to the genus of goods or services in ques-
tion. Id. “[A] term can be generic for a genus of goods or
services if the relevant public . . . understands the term to
refer to a key aspect of that genus—e.g., a key good that
characterizes a particular genus of retail services.” In re
Cordua Rests., Inc., 823 F.3d 594, 603 (Fed. Cir. 2016); see
also 2 McCarthy on Trademarks and Unfair Competition
§ 12:24 (5th ed.) (“A generic name of goods may also be a
generic name of the service of selling or designing those
goods.”). Whether a mark is generic is a question of fact we
review for substantial evidence. Princeton, 786 F.3d at
964.
The Board found KAHWA generic for cafés and coffee
shops. J.A. 7–20. Specifically, the Board found record evi-
dence shows relevant customers regard KAHWA as the ge-
neric description for a type of green tea beverage, and cafés
and coffee shops serve a variety of tea beverages. Based on
this, the Board found KAHWA generic because it refers to
a key aspect of cafés and coffee shops. Bayou argues the
Board’s genericness finding is not supported by substantial
evidence. Bayou Br. 21–29.2 We agree.
2 We note the Director of the United States Patent
and Trademark Office (Director) elected not to respond to
Bayou’s genericness argument, arguing instead that we
can affirm based on the Board’s mere descriptiveness find-
ing without reaching the genericness issue. Director Br. 3
n.2.
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IN RE: BAYOU GRANDE COFFEE ROASTING CO. 6
There is no record evidence of any café or coffee shop in
the United States ever selling kahwa, a specific type of
Kashmiri green tea. This is undisputed. Bayou Br. 21, 29
(“[T]he record in the present case contains zero evidence of
a coffee shop or a café serving kahwa.”); Oral Arg. 12:42–
54 (“Q: You agree that there is no evidence that [kahwa]
was sold in a café or coffee shop or tea shop? A: Yes, that’s
right.”). KAHWA therefore 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, let alone any
aspect of these services. In re Cordua Rests., 823 F.3d at
603. In other words, the fact that relevant customers un-
derstand KAHWA to refer to a specific type of Kashmiri
green tea is insufficient to establish genericness for cafés
and coffee shops selling coffee and other kinds of tea. Ac-
cordingly, the Board’s finding that relevant customers
would understand KAHWA to be generic for cafés and cof-
fee shops is not supported by substantial evidence.
III. Mere Descriptiveness
“A term is merely descriptive if it immediately conveys
knowledge of a quality, feature, function, or characteristic
of the goods or services with which it is used.” In re Bayer
Aktiengesellschaft, 488 F.3d 960, 963 (Fed. Cir. 2007). A
merely descriptive mark cannot be registered unless it has
obtained secondary meaning, also known as acquired dis-
tinctiveness. In re Chamber of Com. of the U.S., 675 F.3d
1297, 1300 (Fed. Cir. 2012). Whether a mark is merely de-
scriptive is a question of fact we review for substantial ev-
idence. Id.
The Board found KAHWA merely descriptive for cafés
and coffee shops. J.A. 20–22. Specifically, the Board found
the record evidence shows KAHWA is a type of green tea,
and cafés and coffee shops serve tea. Based on this, the
Board found “KAHWA immediately informs prospective
customers that the establishment serves this particular
type of green tea drink” and “no imagination or thought is
required by prospective customers to discern the nature of
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IN RE: BAYOU GRANDE COFFEE ROASTING CO. 7
Applicant’s services.” Id. at 22. Bayou argues the Board’s
mere descriptiveness finding is not supported by substan-
tial evidence. Bayou Br. 29–31. We agree.
As we already established, it is undisputed that there is
no record evidence showing any café or coffee shop in the
United States has ever sold kahwa. See supra Discussion
§ II. This necessarily means there is no evidence selling
kahwa is a “characteristic of the goods or services” of cafés
or coffee shops, let alone evidence showing relevant cus-
tomers would immediately know selling kahwa is a charac-
teristic of cafés and coffee shops. Bayer, 488 F.3d at 963.
Accordingly, the Board’s finding that relevant customers
would understand KAHWA to be merely descriptive for ca-
fés and coffee shops is not supported by substantial evi-
dence.3
The Director makes several arguments in support of the
Board’s mere descriptiveness finding, each of which is un-
availing. Director Br. 24–31. First, the Director cites rec-
ord evidence showing (1) relevant customers understand
KAHWA refers to Kashmiri green tea and (2) cafés fre-
quently serve tea beverages (though not kahwa). Id. at 24–
28. The Director’s cited evidence, however, provides no
support for the notion that serving kahwa is a “character-
istic” of cafés or coffee shops. Second, the Director argues
the Board’s finding is consistent with our case law recog-
nizing that marks which are the name of goods are descrip-
tive or generic of services featuring those goods. Id. at 28–
29. The Director’s cited cases are inapposite because there
is no evidence selling kahwa is a feature of café and coffee
shop services.
3 Bayou also argues that, if KAHWA is descriptive,
it is still registrable because it has obtained acquired dis-
tinctiveness. Bayou Br. 31–39. Because we hold KAHWA
is not descriptive, we need not address Bayou’s acquired
distinctiveness argument.
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IN RE: BAYOU GRANDE COFFEE ROASTING CO. 8
Third, the Director argues it is irrelevant whether cafés
or coffee shops currently sell kahwa because they could in
the future, id. at 29–30, but this is pure speculation. OSI
Pharms., LLC v. Apotex Inc., 939 F.3d 1375, 1382 (Fed. Cir.
2019) (“Mere speculation is not substantial evidence.”)
(cleaned up). Fourth, the Director argues Bayou would
have “enforceable rights against any café that serves
kahwa in the future” if we reverse the Board, and it is un-
desirable to allow Bayou to have a monopoly on the use of
a descriptive term. Director Br. 30. This is false. Bayou
would have enforceable rights against an entity that tried
to name its café or coffee shop KAHWA; it would not have
rights against a café simply for selling kahwa.
Fifth, the Director argues KAHWA necessarily tells cus-
tomers the café “serves a variety of teas,” which describes
all cafés because serving tea is a defining characteristic of
cafés. Id. at 31. This is a new argument on appeal. See
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1080 (Fed. Cir.
2015) (holding the Administrative Procedure Act precludes
an agency from changing theories “midstream” without
giving respondents reasonable notice of the change and an
opportunity to respond). The Board never found KAHWA
descriptive because it refers to a “variety of teas.” Instead,
the Board found KAHWA descriptive because it informs
customers “the establishment serves this particular type of
green tea drink.” J.A. 22. Moreover, there is no evidence
showing relevant customers would interpret KAHWA—
which refers to a specific type of tea—to refer generally to
a variety of teas. Even if there was such evidence, it would
tend to show the mark is suggestive, not descriptive, be-
cause the relevant customer would have to make the men-
tal leap from Kashmiri green tea to tea generally, and then
to cafés and coffee shops. 2 McCarthy on Trademarks and
Unfair Competition § 11:67 (5th ed.) (“If the mental leap
between the word and the product’s attributes is not almost
instantaneous, this strongly indicates suggestiveness, not
direct descriptiveness.”).
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IN RE: BAYOU GRANDE COFFEE ROASTING CO. 9
Because there is no record evidence showing any café or
coffee shop in the United States has ever sold kahwa, the
KAHWA mark cannot be generic or merely descriptive of
cafés and coffee shops. We therefore reverse the Board’s
generic and merely descriptive findings based on the Kash-
miri green tea meaning.
IV. Doctrine of Foreign Equivalents
Under the doctrine of foreign equivalents, foreign
words used as a mark are translated into English and then
tested for genericness and descriptiveness. In re Vetements
Grp. AG, 137 F.4th 1317, 1322 (Fed. Cir. 2025). There is a
limitation on the doctrine, however, when ordinary custom-
ers would not stop and translate the mark, even if they are
familiar with the foreign language. Palm Bay Imports, Inc.
v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396
F.3d 1369, 1377 (Fed. Cir. 2005). As such, there are situa-
tions when the doctrine does not require translation. In re
Spirits Int’l, N.V., 563 F.3d 1347, 1352 (Fed. Cir. 2009).
One such situation is when the foreign mark “has such a
well established alternative meaning that the literal trans-
lation is irrelevant because even [foreign] speakers would
not translate the mark.” Id. Determining whether the ap-
propriate standard is applied in a doctrine of foreign equiv-
alents inquiry is a legal question we review de novo. See
In re Vetements, 137 F.4th at 1321–22.
The examiner refused registration under the doctrine
of foreign equivalents because KAHWA means coffee in Ar-
abic, and Bayou failed to submit a translation showing this.
J.A. 58–62 (non-final office action refusing registration
based on coffee meaning); J.A. 897–901 (final office action
maintaining refusals based on coffee meaning);
J.A. 1235–38 (reconsideration denial maintaining refusals
in final office action). On appeal, the Board acknowledged
Bayou’s argument that the doctrine of foreign equivalents
does not apply, but the Board declined to address this is-
sue. J.A. 1–6. Bayou argues the PTO should be precluded
from relying on the doctrine of foreign equivalents in any
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IN RE: BAYOU GRANDE COFFEE ROASTING CO. 10
future proceedings because the Board’s decision admits
KAHWA has a well-established alternative English mean-
ing (i.e., Kashmiri green tea). Bayou Br. 20–21; J.A. 4–5
(“[T]he evidence submitted by both the Examining Attor-
ney and Applicant also shows a well-recognized, alterna-
tive meaning to ‘kahwa’ as a type of green tea drink
originating from Kashmir.”). The Director does not dispute
KAHWA has a well-established alternative English mean-
ing. Director Br. 46. Instead, the Director argues we
should not consider this issue because the Board did not
address it. We agree with Bayou.
Given the parties do not dispute KAHWA has a well-
established alternative English meaning, as the Board de-
cision admits, no translation is necessary since the doctrine
of foreign equivalents does not apply as a matter of law. In
re Spirits, 563 F.3d at 1352; see also Cont’l Nut Co. v. Le
Cordon Bleu, 494 F.2d 1395, 1396–97 (C.C.P.A. 1974). Un-
der these circumstances, the Board’s failure to address this
issue, which was fully developed and briefed to the Board,
does not preclude us from deciding a legal question. N. Am.
Philips Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576,
1579 (Fed. Cir. 1994) (“We thus address the legal question,
which the district court did not reach . . . .”).
CONCLUSION
We have considered the Director’s remaining argu-
ments and find them unpersuasive. Because there are no
viable refusals that remain, we reverse the Board’s deter-
mination that KAHWA is not registrable.
REVERSED
COSTS
Costs to Bayou.
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