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Exploring the latest in intellectual property law
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Exploring the latest in intellectual property law
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Personal jurisdiction: Are cease-and-desist letters enough?

by | Apr 30, 2026 |

In a decision clarifying how certain pre litigation enforcement efforts can establish personal jurisdiction, the US Court of Appeals for the Eleventh Circuit reversed the dismissal of Lanham Act and tortious interference claims for lack of personal jurisdiction, concluding that cease and desist letters sent into the jurisdiction satisfied the minimum contacts requirement and did not offend due process. Frida Kahlo Corporation v. Mara Cristina Teresa Romeo Pinedo, Case No. 24-10293 (11th Cir. Apr. 17, 2026) (Luck, Lagoa, Abudu, JJ.)

Frida Kahlo and Frida Kahlo Investments (collectively, Kahlo) manage and license a portfolio of trademarks and publicity rights associated with the artist Frida Kahlo. Kahlo sued Familia Kahlo and Mara Cristina Teresa Romeo Pinedo (collectively, Pinedo) alleging tortious interference and Lanham Act violations arising from Pinedo’s efforts to halt a traveling Frida Kahlo exhibition and related merchandise.

Central to the dispute were cease and desist letters sent by Pinedo to Kahlo’s Florida based business partners. The letters asserted that Pinedo held superior rights to Frida Kahlo’s name, likeness, and trademarks and threatened legal action if the recipients continued their involvement with Kahlo. Kahlo alleged those claims were false and caused business partners to withdraw or hesitate, disrupting Kahlo’s licensing relationships.

Kahlo filed suit in Florida. Pinedo moved to dismiss for lack of personal jurisdiction. The district court granted the motion, concluding that Florida’s corporate shield doctrine protected Pinedo from jurisdiction and that, in any event, Pinedo lacked sufficient minimum contacts with Florida. Kahlo appealed.

The Eleventh Circuit reversed, concluding first that the corporate shield doctrine did not bar jurisdiction over Pinedo. The Court focused on the language of the cease and desist letters, which expressly identified Pinedo as the “heiress of the painter Frida Kahlo” and stated that the letters were sent “in our capacity as representatives of Mara Cristina Teresa Romeo Pinedo.” The Court found that those representations showed that Maria Pinedo was acting in her personal capacity, not merely as a corporate agent. As a result, the corporate shield doctrine, which can protect corporate officers from jurisdiction based solely on acts performed for a corporation, did not apply. Because the doctrine was inapplicable, Pinedo was subject to Florida’s long arm statute, which permits jurisdiction where a nonresident commits a tortious act outside the state that causes injury within Florida.

The Eleventh Circuit next addressed whether exercising specific personal jurisdiction would comport with due process. The Court answered in the affirmative, explaining that Pinedo intentionally directed conduct into Florida by sending cease and desist letters to Florida entities. The alleged tortious interference claims arose directly from those communications, satisfying the relatedness requirement for specific jurisdiction.

The Eleventh Circuit also found purposeful availment because Pinedo plausibly alleged an intentional tort, the letters were expressly sent to Florida entities, and it was reasonable for Pinedo to anticipate having to defend itself in Florida based on its actions.

Finally, the Eleventh Circuit concluded that Pinedo failed to make a compelling case that exercising jurisdiction would violate traditional notions of fair play and [...]

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“X” marks the spot: A single DuPont factor may be dispositive

by | Apr 16, 2026 |

The US Court of Appeals for the Federal Circuit affirmed dismissal of a trademark opposition, concluding that a single DuPont factor may be sufficient on its own to support a finding of no likelihood of confusion. Fuente Mktg. Ltd. v. Vaporous Techs., LLC, Case No. 24-1460 (Fed. Cir. April 8, 2026) (Prost, Taranto, Hughes, JJ.)

Fuente Marketing and Vaporous Technologies both sell smoking related products. Fuente owns two standard character trademark registrations for the letter “X,” used in connection with cigars and related accessories. Vaporous sought to register a highly stylized design mark for use with its vaping products. The parties stipulated that Vaporous’ mark consisted of “an abstract stick figure consisting of two diagonal intersecting lines in the shape of a wide stylized letter ‘X’ with a shaded circle above.”

Fuente opposed the application at the Trademark Trial and Appeal Board (TTAB), arguing that Vaporous’ mark was likely to cause confusion with Fuente’s “X” marks. Applying the DuPont factors, the Trademark Trial & Appeal Board dismissed the opposition, concluding that there was no likelihood of confusion. Fuente appealed.

The Federal Circuit reviewed the Board’s factual findings for substantial evidence and its ultimate likelihood of confusion determination de novo. Fuente challenged the Board’s analysis of two DuPont factors and argued that the Board improperly weighed the factors as a whole.

The Federal Circuit focused on the first DuPont factor, which evaluates the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. The court found that substantial evidence supported the Board’s finding that this factor weighed heavily against a likelihood of confusion. The Federal Circuit agreed that consumers were more likely to perceive Vaporous’ mark as a stylized stick figure rather than the letter “X.” Unlike Fuente’s standard character mark, Vaporous’ design mark did not sound like the letter “X” as it had no pronunciation, and it incorporated prominent visual features – including a shaded circle comprising roughly one fifth of the mark – that were “not a minor or unnoticeable feature.”

Although the Board found that the remaining DuPont factors were neutral or favored Fuente, the Federal Circuit explained that it could “discern the Board’s path to dismissal” and affirmed the conclusion that in a case like this one DuPont factor was sufficient to establish dissimilarity between the marks. The Court emphasized that a likelihood of confusion analysis is a balancing test, and no minimum number of factors must favor one party.

Practice note: This decision reinforces that a single DuPont factor, particularly the dissimilarity of the marks, may be dispositive of likelihood of confusion. Parties should not assume that favorable findings on other factors can overcome a clear lack of similarity in appearance, sound, connotation, or commercial impression.



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Settled means settled: Broad settlement release equates to res judicata

by | Apr 16, 2026 |

The US Court of Appeals for the Fourth Circuit affirmed a summary judgment decision, concluding that an intellectual property owner’s claims were barred by the scope of a settlement agreement resolving earlier state court litigation between the parties. Clear Touch Interactive, Inc. v. The Ockers Co. et al., Nos. 25-1304, 25-1374 (4th Cir. Apr. 1, 2026) (Wynn, Harris, JJ.) (Rushing, J. concurring in part and dissenting in part).

Clear Touch, a designer and manufacturer of interactive technology products, entered into exclusive reseller agreements with information and communications technology reseller Ockers in 2014. After Clear Touch revoked Ockers’ exclusivity in 2017, Ockers began developing a competing product called TouchView. Clear Touch terminated Ockers as a reseller in 2019. The following year, Ockers filed suit in South Carolina state court alleging breach of contract and asserting various tort, trade secret, defamation, and civil conspiracy claims.

In June 2021, the parties resolved the state court action through a settlement agreement that dismissed the case with prejudice and included a broad mutual release of all claims and counterclaims – known or unknown – that were brought or could have been brought and that arose out of or related to the subject matter of the lawsuit.

Despite that settlement, Clear Touch filed a federal action one month later against Ockers, two of its officers (John J. Houser and Jason Houser), and TouchView Interactive, asserting claims for trademark infringement, trade secret misappropriation, and unfair competition based on the TouchView product. The defendants moved for judgment on the pleadings, arguing that the settlement agreement and the state court’s dismissal with prejudice barred Clear Touch’s claims.

The district court initially allowed some claims to proceed, including certain Lanham Act claims and claims against TouchView Interactive, but dismissed the remainder. After discovery, however, the court revisited the preclusion issue and granted summary judgment to Ockers and its officers, concluding that all of Clear Touch’s remaining claims were barred by res judicata. The district court also granted summary judgment to TouchView Interactive, finding it to be a shell entity with no commercial activity. Following a jury verdict in favor of Ockers, Clear Touch appealed.

Clear Touch challenged the district court’s res judicata determination, arguing both substantive error and procedural error under Rule 54(b). The Fourth Circuit rejected both arguments. Substantively, the Fourth Circuit held that Clear Touch failed to create a genuine dispute regarding the settlement agreement’s plain language or the parties’ mutual intent to release all claims, including those that could have been brought, arising from the same operative facts. Even when viewed in the light most favorable to Clear Touch, the federal claims were precluded because they could have been asserted as counterclaims in the prior state court action, which had been dismissed with prejudice.

Procedurally, the Fourth Circuit found no abuse of discretion in the district court’s decision to revisit its earlier rulings. Rule 54(b) permits revision of nonfinal orders when new evidence emerges or a legal error becomes apparent. Here, supplemental evidence showed that Clear Touch [...]

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Picture this: AI enhancements to trademark search and examination

by | Apr 16, 2026 |

The United States Patent and Trademark Office (USPTO) has announced several new artificial intelligence (AI) enhancements to its trademark search system and to the Trademark Center, continuing its broader effort to modernize trademark examination and improve both searchability and application quality.

One of the most notable updates is a new beta image-search capability within the USPTO’s trademark search system. This feature allows users to upload an image to identify similar marks with related design elements, functioning in a manner comparable to reverse image search tools available on commercial platforms. By enabling users to search for visually similar marks more intuitively, the tool may enhance clearance efforts, particularly for design marks that can be difficult to capture through traditional keyword-based searching.

The USPTO also announced that, beginning April 23, the Trademark Center will include a mark description and color claim generator. This feature is intended to assist applicants in drafting accurate and complete mark descriptions and color claims, which are often a source of inconsistency and procedural deficiency in trademark applications. By reducing guesswork and standardizing how such information is presented, the generator may help minimize office actions and improve overall application quality.

In addition to front-end user tools, the USPTO highlighted its Trademark Classification Agentic Codification Tool (Class ACT), an AI-driven system designed to automate certain back-end classification and coding functions. Class ACT assigns international classes to applications and generates design search codes and pseudo marks that make trademark records more easily searchable. Historically, these classification and coding steps could take months to complete, delaying examination and limiting searchability in the interim. The USPTO reports that Class ACT can perform these functions almost immediately, while still subject to human review to ensure accuracy and consistency.

Taken together, these developments reflect a continued shift toward integrating AI into both applicant facing and internal aspects of trademark prosecution. By accelerating classification, expanding search functionality, and assisting with application drafting, the USPTO seeks to streamline workflows while maintaining examiner oversight.

Practice note: Trademark applicants and practitioners may wish to incorporate the tools discussed above into clearance and filing strategies, particularly for design marks and applications involving complex descriptions or color claims. At the same time, AI generated results may surface a broader range of potentially relevant marks and classifications, underscoring the need for careful professional review. These tools are best viewed as supplements to – not substitutes for – informed legal analysis and strategic judgment.



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Muddy paws? Franchisor’s unclean hands precludes full equitable relief

by | Apr 2, 2026 | ,

The US Court of Appeals for the Sixth Circuit affirmed a district court’s partial denial of a franchisor’s request for a preliminary injunction, finding that the franchisor’s inequitable conduct barred broader injunctive relief, even where the franchisor showed a likelihood of success on certain claims. Fetch! Pet Care, Inc. v. Atomic Pawz Inc., Case No. 25-1638 (6th Cir. Mar. 20, 2026) (Gibbons, Larsen, Murphy, JJ.)

Fetch! sued several former franchisee locations for breach of contract, trademark infringement, and trade secret misappropriation after the franchisees stopped paying royalties, downloaded client contact information, prepared transition plans, and continued operating competing businesses following termination of system access. Fetch! sought a temporary restraining order and then a preliminary injunction to bar operation of the competing businesses, use of alleged trade secrets, infringement of its registered trademarks, and interference with its business relationships.

The district court granted limited relief prohibiting use of Fetch!’s trademarks and restricting communications with existing Fetch! franchisees but declined to enjoin the defendants from continuing to operate competing businesses. The court concluded that although Fetch! was likely to succeed on certain claims, equitable relief was limited by Fetch!’s own conduct, including evidence that it aggressively marketed and sold its “2.0” franchise model while obscuring material differences from its legacy “1.0” model, and that it cut off certain franchisees’ system access under disputed circumstances. Fetch! appealed.

The Sixth Circuit emphasized that a preliminary injunction is an extraordinary equitable remedy and that equitable doctrines, including unclean hands, may independently bar relief. The Court agreed that the record supported a finding that Fetch!’s conduct in marketing and selling its 2.0 and managed-services franchises (particularly Fetch!’s removal of distinctions in disclosure materials and aggressive profitability representations) could constitute bad faith sufficient to deny broader injunctive relief.

The Sixth Circuit also addressed the three legacy 1.0 franchisees for which the district court had not applied unclean hands. Affirming on an alternative ground, the Court found that unclean hands likewise barred injunctive relief as to those defendants. The Court relied on evidence that Fetch! terminated or restricted their system access while they were current on payments and before they began operating competing businesses, and that Fetch! may have failed to comply with applicable state franchise law requirements governing notice and opportunity to cure.

Although it affirmed on unclean hands, the Sixth Circuit clarified aspects of its preliminary injunction jurisprudence:

  • It rejected the district court’s suggestion that a heightened showing of irreparable harm applies when claims are subject to arbitration, confirming that the traditional four-factor test governs.
  • It found that the district court erred in applying a clear-and-convincing standard for irreparable harm rather than the federal standard requiring a likelihood of irreparable injury.
  • It explained that competitive harms, such as loss of goodwill and customer relationships, can qualify as irreparable precisely because they are difficult to quantify.

Because Fetch!’s inequitable conduct supported denial of broader relief, the Sixth Circuit affirmed the district court’s refusal to enjoin the defendants’ competing operations while leaving in place the narrower [...]

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Hot out of the oven: Trademark limits on pizza-inspired names

by | Jan 29, 2026 |

The US Court of Appeals for the Seventh Circuit affirmed-in-part and reversed-in-part a preliminary injunction barring the use of PIZZA PUFF, concluding that the trademark owner failed to demonstrate a likelihood of success on the merits because the term was likely generic and, in any event, was descriptively and fairly used. Illinois Tamale Company, Inc. v. LC Trademarks, Inc., Case Nos. 24-3317; 25-1072; -1076; -1112 (7th Cir. Jan. 16, 2026) (Scudder, St. Eve, Jackson-Akiwumi, JJ.)

Illinois Tamale Company (Iltaco), a Chicago-based food company, has sold its signature “Pizza Puff” since 1976, distributing the product nationwide alongside other “Puff”-branded products. Iltaco owns federal trademark registrations for PIZZA PUFF (registered in 2009) and PUFF (registered in 2022).

In March 2024, Little Caesars introduced “Crazy Puffs,” small baked dough cups filled with pizza ingredients. The product launched as part of Little Caesars’ long-running “Crazy” line and was marketed prominently under the Little Caesars name, logo, and orange trade dress. Little Caesars secured its own federal registration for CRAZY PUFFS, and the United States Patent and Trademark Office identified no conflicting marks during examination.

Following the product launch, Iltaco sent a cease-and-desist letter claiming that CRAZY PUFFS and the phrase “4 Hand-Held Pizza Puffs” infringed its trademarks. When Little Caesars declined to change its marketing, Iltaco sued for trademark infringement and unfair competition and sought a preliminary injunction. The district court issued a split ruling, enjoining Little Caesars from using PIZZA PUFF but permitting continued use of CRAZY PUFFS and PUFF. Both parties appealed.

The Seventh Circuit found that the district court applied the wrong legal standard in assessing the protectability of PIZZA PUFF. The Court explained that rather than asking whether competitors could offer similar products without using the term, trademark protectability turns on the “primary significance” test, which is whether consumers primarily understand the term as a brand name or as the common name of a product. Because generic terms can never function as trademarks, the Court focused on evidence of consumer perception.

Applying that framework, the Seventh Circuit found substantial evidence that PIZZA PUFF was generic:

  • More than 80% of surveyed consumers viewed the term as referring to a product category rather than a brand.
  • Dictionary definitions treated the term generically.
  • Third-party filings and industry usage consistently employed the phrase as a common name.

This evidence rebutted the presumption of validity afforded by Iltaco’s federal registration, and Iltaco failed to demonstrate a likelihood of proving distinctiveness at trial. The Court therefore concluded that Iltaco did not show a likelihood of success on the merits and reversed the preliminary injunction barring Little Caesars’ use of PIZZA PUFF.

The Seventh Circuit further found that even if PIZZA PUFF were distinctive, Iltaco still could not obtain injunctive relief because Little Caesars was likely to prevail on a fair-use defense. The Court emphasized that fair use requires only descriptive, good-faith use, and not a perfect fit between the challenged term and the product. Here, PIZZA PUFF plausibly described Little Caesars’ light, pizza-filled food [...]

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Baseball was very good to Roberto: Lanham Act permits claims against government officials in personal capacity

by | Jan 29, 2026 |

In a decision addressing the intersection of trademark law, sovereign immunity, and constitutional takings, the US Court of Appeals for the First Circuit partially revived Lanham Act claims brought by the heirs of baseball legend Roberto Clemente against senior officials of the Commonwealth of Puerto Rico. While affirming dismissal of claims against the Commonwealth itself and related public entities, the Court concluded that certain Lanham Act claims against individual government officials in their personal capacities were plausibly alleged and not barred by qualified immunity at the pleading stage. Clemente Props., Inc. v. Pierluisi-Urrutia, Case No. 23-1922, 2026 WL 125574 (1st Cir. Jan. 16, 2026) (Barron, Lipez, Thompson, JJ.)

The plaintiffs, Clemente’s sons and affiliated entities, alleged that Commonwealth officials improperly used Clemente’s name and likeness on commemorative license plates and registration tags without authorization. Proceeds from the program were directed toward a public initiative intended to replace an earlier Clemente-founded project. Plaintiffs claimed trademark infringement, false endorsement, false advertising, and dilution under the Lanham Act, as well as a taking in violation of the Fifth and Fourteenth Amendments. Defendants moved to dismiss on immunity grounds and for failure to state a claim. The district court granted the motions in full. Plaintiffs appealed.

The First Circuit reversed in part. The Court rejected the district court’s conclusion that the use of Clemente’s name and image was not “in connection with” goods or services under the Lanham Act. The Court explained that commemorative license plates and tags qualify as goods, and the fact that they were issued by a government entity did not remove them from the statute’s commercial scope. The Court also pointed to the United States Patent and Trademark Office’s Trademark ID Manual, which expressly recognizes license plates as registrable goods, and found no persuasive basis for excluding fundraising activities supporting the Roberto Clemente Sports District Fund from trademark scrutiny.

The First Circuit further concluded that plaintiffs adequately alleged commercial injury within the Lanham Act’s zone of interests and plausibly pleaded likelihood of confusion, including the mistaken impression that the Clemente family endorsed or financially benefited from the initiative. Accordingly, dismissal of Lanham Act claims under Section 32 (trademark infringement), Section 43(a) (false endorsement), and Section 43(c) (dilution) was improper with regard to officials sued in their personal capacities.

Sovereign immunity remained a shield for the Commonwealth, the Convention Center District Authority, and officials sued in their official capacities. However, the First Circuit concluded that qualified immunity did not bar the personal-capacity Lanham Act claims at the pleading stage and thus vacated dismissal and remanded for further proceedings.

The First Circuit affirmed dismissal of the false advertising claim, determining that plaintiffs failed to allege that defendants’ statements constituted commercial advertising or promotion as required under Section 43(a)(1)(B). The Court also affirmed dismissal of the Takings Clause claim, concluding that alleged infringements of intangible intellectual property do not support a categorical physical-taking theory and cannot be analyzed using frameworks applicable to physical occupation or appropriation.

Finally, the First Circuit deemed waived any [...]

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All rise: Here comes the real judge

by | Jan 22, 2026 |

The US Court of Appeals for the Federal Circuit sustained the Trademark Trial & Appeal Board’s refusal to register trademark applications (over oppositions) for two character marks and a design mark based on the Board’s finding of likelihood of confusion with the common law rights of a world-famous baseball player and major league baseball’s players association  as supported by substantial evidence and consistent with trademark law. Chisena v. Major League Baseball Players Ass’n, Case No. 23-2073 (Fed. Cir. Jan. 8, 2026) (Hughes, Freeman, Lourie, JJ.) (nonprecedential).

Michael Chisena, acting pro se, sought trademark registration for two word marks, ALL RISE and HERE COMES THE JUDGE, and a design mark featuring a baseball field with a superimposed scale of justice and judge’s gavel (pictured below) (Chisena marks) for use in connection with “clothing, namely t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, jerseys, athletic uniforms, and caps.”

Source: Chisena v. Major League Baseball Players Ass’n, Case No. 23-2073 (Fed. Cir. Jan. 8, 2026), Slip Op at 2.

Chisena filed intent to use applications and alleged that the constructive use priority date for the word marks was July 14, 2017, and for the design mark it was October 12, 2017. The Major League Baseball Players Association (MLBPA) and Aaron Judge, a superstar Yankees outfielder and team captain (collectively, appellees), filed Notices of Opposition against registration of the marks, which the Board consolidated into a single proceeding.

Judge is a well-known baseball player whose rise to fame prompted the commercialization of judicial slogans and insignia in connection with his baseball career. The appellees alleged that the Chisena marks would likely cause confusion with their marks, which include ALL RISE and certain judicial symbols. They argued that they had common law trademark rights that predated Chisena’s alleged priority dates. The Board found that the appellees established priority against the Chisena marks and that there was a likelihood of confusion between the marks and therefore refused to register the Chisena marks. Chisena appealed.

The Federal Circuit found that the Board’s priority decisions were supported by substantial evidence that appellees’ marks were used in commerce prior to the Chisena marks’ priority date. The Court concluded that the priority dates for the Chisena marks were the constructive use filing dates since Chisena did not use the marks in commerce until after he filed the applications. The Court further relied on licensed products bearing judicial slogans, phrases, symbols, and personal indicia related to Judge used as early as June 2017 in holding that appellees’ common law trademark rights predated the Chisena marks’ priority dates.

Chisena argued that appellees did not adequately identify the specific marks at issue in their Notices of Opposition. The Federal Circuit agreed with the Board that the notices provided fair notice because they adequately claimed ownership of the marks that served as the basis for the opposition and the basis for appellees’ priority claims.

Chisena argued that the [...]

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Deadlines and discretion: Appeal trips over the clock

by | Jan 15, 2026 |

The US Court of Appeals for the Federal Circuit affirmed in part and dismissed in part an appeal of an International Trade Commission decision. The Federal Circuit affirmed the Commission’s issuance of a limited exclusion order against one set of respondents and dismissed the complainant’s appeal of the Commission’s no‑violation finding against another set of respondents as time‑barred under the statute. Crocs, Inc. v. Int’l Trade Comm’n, Case No. 2024-1300 (Fed. Cir. Jan. 8, 2026) (Stoll, Lourie, Chun, JJ.)

Crocs filed a complaint with the Commission alleging that multiple respondents violated Section 337 by importing, selling for importation, or selling within the US footwear that infringed its registered trademarks (the 3D marks), which are associated with certain features of Crocs’ Classic Clog shoes. Crocs’ complaint requested relief in the form of a general exclusion order (GEO), or in the alternative, a limited exclusion order (LEO). Three respondents participated in an evidentiary hearing before an administrative law judge in September 2022 (active respondents) while four respondents were in default and waived their rights to appear, to be served with documents, and to contest the allegations (defaulting respondents). More than 20 other respondents were terminated based on consent orders or settlement agreements.

In a September 14, 2023, Notice of Final Determination and accompanying opinion, the Commission found no violation by the active respondents, concluding that Crocs had not established likelihood of confusion, infringement, or dilution of the 3D marks. The Commission, presuming the facts alleged in the complaint as true and finding that public interest factors do not preclude relief, also issued an LEO against the defaulting respondents, barring them from importing the infringing shoes.

On December 22, 2023, Crocs filed a notice of appeal challenging the Commission’s no-violation finding as to the active respondents and its decision to issue only an LEO against the defaulting respondents rather than the GEO that Crocs requested. The Commission countered that Crocs’ appeal against the active respondents was time-barred by Section 337(c), which required the appeal to be filed by November 13, 2023, and argued that the Commission did not abuse its discretion in issuing only an LEO against the defaulting respondents.

The Federal Circuit dismissed Crocs’ appeal against the active respondents as untimely. The Court explained that when the Commission issues a single decision that contains a no-violation finding against one set of respondents and enters an exclusion order against another set of respondents, each ruling carries its own deadline for appeal. In this case, Crocs’ December 22, 2023, appeal was time-barred under Section 337(c) because the 60-day period for filing a notice of appeal on the no-violation finding expired on November 13, 2023. The Court also considered and upheld the Commission’s LEO order, concluding that the Commission had articulated a sufficient basis for the remedy and that its decision was not arbitrary, capricious, an abuse of discretion, or otherwise contrary to law.



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Coffee, tea, or doctrine of foreign equivalents?

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit reversed a Trademark Trial & Appeal Board decision upholding refusal of the KAHWA mark for cafés and coffee shops, holding that the doctrine of foreign equivalents was inapplicable since KAHWA has a well-established alternative English meaning. In re Bayou Grande Coffee Roasting Co., Case No. 2024-1118 (Fed. Cir. Dec. 9, 2025) (Moore, Hughes, Stoll, JJ.)

In February 2021, Bayou applied to trademark KAHWA for cafés and coffee shops, claiming use since 2008. The examiner refused, deeming the mark generic or descriptive under the doctrine of foreign equivalents, asserting that KAHWA means “coffee” in Arabic. Bayou argued that it instead refers to a specific type of Kashmiri green tea not sold in US cafés or coffee shops. The examiner upheld refusals on both grounds and denied reconsideration.

On appeal, the Board affirmed the examiner’s refusals based on the Kashmiri green tea meaning but did not address the Arabic meaning. The Board found KAHWA generic and descriptive for cafés and coffee shops due to record evidence showing relevant customers regarded KAHWA as the generic description for a type of green tea beverage, and cafés and coffee shops serve a variety of tea beverages. Bayou appealed.

The Federal Circuit first determined that the Board’s generic and merely descriptive findings based on the Kashmiri green tea meaning did not constitute new grounds of rejection. The Court also reversed the Board’s generic and merely descriptive findings based on the Kashmiri green tea meaning.

The Federal Circuit concluded that the Board’s generic finding was not supported by substantial evidence because of undisputed evidence that no café or coffee shop in the United States sells kahwa. Therefore, whether relevant customers understood KAHWA to refer to a specific type of Kashmiri green tea was insufficient to establish genericness. The Court also held that the Board’s merely descriptive finding was not supported by substantial evidence because kahwa is neither a product/feature of café and coffee shop services nor a tea variety typically offered there. Moreover, registering KAHWA would not grant Bayou rights against cafés or coffee shops merely selling kahwa, and potential future sales were irrelevant to the descriptiveness analysis.

Finally, the Federal Circuit held that because KAHWA’s undisputed English meaning is Kashmiri green tea, translation was unnecessary, and the doctrine of foreign equivalents did not apply. Under the doctrine of foreign equivalents, a foreign mark may be translated into English to evaluate it for genericness or descriptiveness. However, translation is not required when consumers would not translate, or when the mark has a well‑established alternative meaning that makes the literal translation irrelevant.



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