Too often businesses, in conceiving their brand names and the marks/logos that represent their brands, adopt really weak marks that can have disastrous consequences. In the case at hand, a restaurant chain adopted as its service mark a Spanish/Portuguese word that literally means “grilled meat” in English. As it turned out, it seems that “grilled meat” means nothing more than “grilled meat” rather than a brand name for the restaurant’s services.
Since 1988, Cordua Restaurants, Inc. operated a small restaurant chain under the brand name and service mark “CHURRASCOS,” offering various South American cuisines. Grilled meats are among Cordua’s featured dishes, including “Churrascos Steak” as their “signature” menu item. In 2008, Cordua obtained a federal registration for the service mark CHURRASCOS as a basic word mark, covering restaurant and bar services and catering services, Reg. No. 3439321.
Three years later, Cordua filed a new application to register CHURRASCOS in a stylized lettering form for the same services covered in its prior registration. 
However, the application was refused because the Trademark Examining Attorney found the mark was generic. The Examining Attorney concluded that “Churrascos” literally means grilled beef or grilled meat generally and, therefore, the term refers to a key feature of Cordua’s restaurant services. The Examining Attorney also found that the stylized version of CHURRASCOS in the application was at best descriptive, but that Cordua had not submitted any evidence that the public identifies the stylization of the word as identifying Cordua’s restaurant services rather than simply meaning grilled meat.
Cordua Restaurant appealed the refusal of its trademark application to the Trademark Trial and Appeal Board (the “TTAB”). The TTAB affirmed the Examining Attorney’s refusal. Cordua then appealed to the U.S. Court of Appeals for the Federal Circuit, which has immediate appeal jurisdiction from the US Patent and Trademark Office. Unfortunately for Cordua, the Court of Appeals agreed with the TTAB’s decision that CHURARASCOS is generic.
A generic term is one that means or identifies the thing itself. For example, a business that sells or produces tables and uses the trademark “THE TABLE” has a generic mark. The mark identifies the very thing that the business sells rather than the brand of the business. No one can claim exclusive commercial rights to a generic term. Therefore, a generic term can never, ever be claimed as a trademark by anyone. The reason is simple and clear – other businesses in the same industry must necessarily use the same term to identify their products or services.
A descriptive mark, on the other hand, is one that describes the essential nature of the product or service. A descriptive term may be registered as a trademark if the owner can show that the public has come to see it as a brand name rather than merely as a description of the product. But trademark protection for such descriptive marks can be very narrow in scope, often just prohibiting virtually identical marks in the same field of use.
There are many instances where former valid trademarks have become generic because of the owners’ lack of diligence in protecting their marks. A trademark or brand name becomes generic when it is identified as the product itself rather than the business that produces the product. One famous example is “ASPIRIN,” which has long been determined legally as a generic term for a type of pain reliever. However, in Canada “ASPIRIN” is still a valid and registered trademark of the Bayer Co.
What is interesting in the Cordua case is that the company already had a trademark registration for CHURRASCOS. The appeals court found that the prior registration had no bearing on whether the stylized form of the CHURRASCOS mark could be registered. While neither the TTAB nor the Court of Appeals made any decision as to Cordua’s prior registration, nonetheless their decisions that CHURRASCOS is generic could very well put that prior registration in jeopardy by any third party seeking to challenge it.
The lesson here for businesses: it is important to be wary of adopting brand names that are highly descriptive, if not generic. Trademark protection could be refused, rendering marks worthless or at most, if registration of a descriptive mark can be secured, the scope of protection could be very narrow and limited. Marks that are more fanciful or at least suggestive of other qualities than those that merely describe the subject goods or services are usually better and stronger choices. Sometimes, “grilled meat” only means grilled meat.
Like this:
Like Loading...
Related
However, the application was refused because the Trademark Examining Attorney found the mark was generic. The Examining Attorney concluded that “Churrascos” literally means grilled beef or grilled meat generally and, therefore, the term refers to a key feature of Cordua’s restaurant services. The Examining Attorney also found that the stylized version of CHURRASCOS in the application was at best descriptive, but that Cordua had not submitted any evidence that the public identifies the stylization of the word as identifying Cordua’s restaurant services rather than simply meaning grilled meat.