kahwa Coffee prevaiLs in preCedentiaL federaL CirCuit tradeMark appeaL
Intellectual property Section Co-Chairs: PatrickReid – CarlsonIPLaw & AndriyLytvyn – HillWardHenderson
as businesses continue to innovate and adopt distinctive brand names, clear rules and predictable standards become increasingly important.
When a St. Petersburg, Floridabased coffee company applied to register its long-standing brand name as a federal trademark, no one expected the case to become a touchstone for how the United States Patent and Trademark Office( USPTO) evaluates evidence— and how far it may go when speculating about market conditions. But that is exactly what happened when the U. S. Court of Appeals for the Federal Circuit issued a precedential decision reversing the USPTO’ s refusal to register KAHWA for Bayou Grande Coffee Roasting Company’ s café and coffee-shop services.
The decision delivers more than a win for a single applicant. It reasserts important limits on the USPTO’ s authority, particularly its reliance on unverified foreignlanguage translations, hypothetical assumptions about what businesses“ might” offer in the future, and tenuous connections between a
word and a service category. At a time when businesses of all sizes rely on distinct, often unconventional brand names, the ruling provides clarity and predictability in how trademarks must be evaluated.
From Routine Application to Significant Appeal
Bayou Grande Coffee Roasting Company, which has operated its KAHWA-branded cafés since 2008, has grown to more than 20 locations across Florida and Texas and supplies hundreds of wholesale accounts. After more than a decade of continuous use of the mark, the company sought federal registration to secure nationwide rights.
The USPTO denied that application in 2021. Relying solely on a Google Translate entry, the examining attorney asserted— incorrectly— that“ kahwa” is a foreign word meaning“ coffee” and therefore could not serve as a registerable trademark for coffee-related services. Bayou submitted extensive rebuttal evidence, including declarations from a native language expert and dictionary research refuting the claimed translation. The record showed that‘ kahwa’ is recognized in English-language sources as the name of a specific Central Asian tea-based beverage— familiar to U. S. consumers only through online recipes, blogs, and pre-packaged products— and, crucially for this case, there was zero evidence of any American coffee shop or café ever serving this drink. That should have disposed of the translation issue, because under trademark law, an established English meaning controls.
Instead, the Trademark Trial and Appeal Board avoided the translation issue entirely. The Board found that because“ kahwa” refers to a tea beverage, and because
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