The U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s refusal to register the stylized mark CHURRASCOS for bar and restaurant services based on genericness.  In re Cordua Restaurants, Inc., 2016 WL 2786364 (Fed. Cir. May 13, 2016).

The Board refused registration of the stylized version of the mark CHURRASCOS, holding that “churrascos” is a generic term for both a type of meat as well as a restaurant featuring that type of meat.  The applicant, Cordua Restaurants, appealed the decision of the Board, arguing that the mark CHURRASCOS is incontestable based on Cordua’s already-existing federal registration for the word mark CHURRASCOS, and that the Board’s refusal was therefore an error.

Cordua owned the federal registration for the work mark CHURRASCOS (U.S. Registration No. 3,439,231), and it was more than five years old at the time the Board refused to register the stylized version of the mark.   Cordua argued that the mark had consequently attained incontestable status, and that the Board failed to consider this factor.

On appeal, the Court acknowledged that while a federal registration of a trademark is prima facie evidence of validity, this does not weigh against genericness of a later registration of a similar mark.  The Court held that the current proceeding of the stylized mark was distinct from the previous registration, and that the validity of the previous registration of the word mark did not “carry over” into the new registration for the stylized version.

In assessing genericness, the Board found that the genus of services at issue was “restaurant services” and that the term “churrascos” is generic with respect to these services.  On appeal, Cordua argued that “churrascos” is actually a style of grilling meat, and that therefore the term does not denote actual restaurant services.  Cordua’s argument rested on the notion that the relevant public would not refer to the restaurant itself as “churrascos,” but rather might only use the term to identify the type of cooked meat served.

The Court disagreed with Cordua’s argument, stating that genericness is not limited to how the relevant public might use the term for goods or services; genericness can be proven if the general public simply understands that such term refers to a key aspect of the goods or services at issue.  Thus, the relevant public here may not use the term “churrascos” to identify the restaurant itself, but it is enough that the relevant public understands that “churrascos” is a type of meat primarily served at the restaurant.

Lastly, the Court upheld the Board’s finding that the stylization of the mark did not create a new and distinct commercial impression that would otherwise bring the mark out of generic status.  The Board found that the stylization was not sufficient to show that the mark had acquired distinctiveness.  Conclusively, the Court found that the Board’s decision to refuse the stylized mark based on genericness did not contain a “harmful error”, and the Board’s refusal was upheld on appeal.

Simple stylizations of a mark do not, per se, bring that mark into distinction, and it is therefore important to consider the uniqueness of a mark’s design when attempting to show that a mark is not generic.  Additionally, a prior registration of a mark does not ensure that similar variations of that mark will be guaranteed registration in the future.