In Re: Cordua Restaurants, Inc.

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: CORDUA RESTAURANTS, INC.,
Appellant
______________________
2015-1432
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
85/214,191.
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Decided: May 13, 2016
______________________
ELIZABETH WOOD KING, Sutton McAughan Deaver
PLLC, Houston, TX, argued for appellant. Also represent-
ed by ROBERT JAMES MCAUGHAN, JR., ALBERT BERTON
DEAVER, JR.
THOMAS L. CASAGRANDE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for appellee Michelle K. Lee. Also represented by
THOMAS W. KRAUSE, CHRISTINA HIEBER, MARY BETH
WALKER.
CHARLES SARON KNOBLOCH, Arnold, Knobloch &
Saunders, L.L.P., Houston, TX, for amicus curiae Houston
Intellectual Property Law Association.
______________________
2 IN RE: CORDUA RESTAURANTS, INC.
Before PROST, Chief Judge, DYK, and STOLL, Circuit
Judges.
DYK, Circuit Judge.
Cordua Restaurants, Inc. (“Cordua”) appeals from the
final decision of the United States Patent and Trademark
Office (“PTO”) Trademark Trial and Appeal Board
(“TTAB” or “Board”) refusing registration of a stylized
form of the mark CHURRASCOS. 1 In re Cordua Rests.
LP, 110 U.S.P.Q.2d 1227, 2014 WL 1390504 (TTAB 2014)
(“Cordua”) (affirming refusal of registration of Serial No.
85/214,191). The Board’s decision contains no harmful
legal error, and the Board’s finding that the mark is
generic is supported by substantial evidence. We affirm.
BACKGROUND
Appellant Cordua owns and operates a chain of five
restaurants branded as “Churrascos,” the first of which
opened in 1988. The Churrascos restaurants serve a
variety of South American dishes, including grilled meats;
the Churrascos menu describes chargrilled “Churrasco
Steak” as “our signature.” J.A. 34. Cordua applied for
registration of the service mark CHURRASCOS (in
standard character format) and obtained U.S. Trademark
Registration No. 3,439,321 on the Principal Register (“the
’321 Registration”) on June 3, 2008, for use of the word in
connection with “restaurant and bar services; catering.”
1 The stylized mark is . Hereinaf-
ter we refer to this mark as “the stylized form of
CHURRASCOS.”
IN RE: CORDUA RESTAURANTS, INC. 3
On January 10, 2011, Cordua filed U.S. Trademark
Application Serial No. 85/214,191 (“the ’191 Application”),
the application at issue in this case, seeking protection of
the stylized form of CHURRASCOS for use in connection
with “Bar and restaurant services; Catering.” J.A. 27.
The trademark examiner rejected the ’191 Application as
merely descriptive and on the basis that “the applied-for
mark is generic for applicant’s services,” barring registra-
tion under Lanham Act § 2(e)(1) (15 U.S.C. § 1052(e)(1)).
J.A. 70. On June 14, 2012, the examiner issued a final
rejection, again refusing registration of the stylized form
of CHURRASCOS on the basis of descriptiveness and
genericness. With respect to genericness, the examiner
concluded that the term “churrascos” “refer[s] to beef or
grilled meat more generally” and that the term “identifies
a key characteristic or feature of the restaurant services,
namely, the type of restaurant.” J.A. 112–13.
Cordua appealed to the Board, which affirmed the
examiner’s refusal to register the mark for use in connec-
tion with restaurant services. The Board agreed with the
examiner that “‘churrascos’ is the generic term for a type
of cooked meat” and “a generic term for a restaurant
featuring churrasco steaks.” Cordua, 2014 WL 1390504,
at *6. The Board held that Cordua’s earlier registration
of the underlying CHURRASCOS word mark (the ’321
Registration) had no bearing on whether the stylized form
of CHURRASCOS was generic. The Board also agreed
with the examiner that the stylized form of
CHURRASCOS was also ineligible for registration be-
cause it is merely descriptive of a restaurant serving
barbecued steaks and because Cordua had not provided
sufficient evidence of acquired distinctiveness. Cordua
appealed. We have jurisdiction under 28 U.S.C.
§ 1295(a)(4)(B).
4 IN RE: CORDUA RESTAURANTS, INC.
DISCUSSION
I
We consider whether the Board erred in refusing reg-
istration on the ground that the mark is generic. We
review the Board’s legal conclusions de novo and its
factual findings for substantial evidence. Aycock Eng’g,
Inc. v. Airflite, Inc., 560 F.3d 1350, 1355 (Fed. Cir. 2009).
The standard of genericness is a question of law that we
review de novo. See In re Save Venice N.Y., Inc., 259 F.3d
1346, 1351–52 (Fed. Cir. 2001). The question of whether
a particular mark is generic under the applicable stand-
ard is a question of fact, which we review for substantial
evidence. In re Hotels.com, L.P., 573 F.3d 1300, 1301
(Fed. Cir. 2009); In re Reed Elsevier Props., Inc., 482 F.3d
1376, 1378 (Fed. Cir. 2007).
As the Supreme Court has held, “[g]eneric terms are
not registrable, and a registered mark may be canceled at
any time on the grounds that it has become generic.”
Park ’N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S.
189, 194 (1985) (citing 15 U.S.C. §§ 1052, 1064). This is
so because “[g]eneric terms, by definition incapable of
indicating source, are the antithesis of trademarks, and
can never attain trademark status.” In re Merrill Lynch,
Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569 (Fed.
Cir. 1987); see also Princeton Vanguard, LLC v. Frito-Lay
N. Am., Inc., 786 F.3d 960, 965 (Fed. Cir. 2015).
“A generic term ‘is the common descriptive name of a
class of goods or services.’” Princeton Vanguard, 786 F.3d
at 965 (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire
Chiefs, Inc., 782 F.2d 987, 989 (Fed. Cir. 1986)). “The
critical issue in genericness cases is whether members of
the relevant public primarily use or understand the term
sought to be protected to refer to the genus of goods or
services in question.” Ginn, 782 F.2d at 989–90. Under
Ginn a two-step test is applied to determine whether a
IN RE: CORDUA RESTAURANTS, INC. 5
given term is generic. Id. at 990. “First, what is the
genus of goods or services at issue? Second, is the term
sought to be registered or retained on the register under-
stood by the relevant public primarily to refer to that
genus of goods or services?” Id.; see also Princeton Van-
guard, 786 F.3d at 965; Reed Elsevier, 482 F.3d at 1378.
“Evidence of the public’s understanding of the mark may
be obtained from ‘any competent source, such as consumer
surveys, dictionaries, newspapers and other publica-
tions.’” Princeton Vanguard, 786 F.3d at 965 (quoting In
re Northland Aluminum Prods., Inc., 777 F.2d 1556, 1559
(Fed. Cir. 1985)).
II
At the outset we note that Cordua’s existing registra-
tion of the CHURRASCOS word mark (the ’321 Registra-
tion) does not preclude a finding that the stylized form of
the mark is generic. Cordua contends that the
CHURRASCOS word mark had achieved incontestable
status under 15 U.S.C. § 1064 (Lanham Act § 14) because
the ’321 Registration was more than five years old at the
time of the TTAB’s decision and argues that the Board’s
“failure to fully consider the incontestable registration is
error.” Appellant’s Br. at 55.
The PTO disputes Cordua’s contention that the ’321
Registration had achieved incontestable status at the
time of appeal to the TTAB. We need not address this
question, because even if the earlier registration were
incontestable, incontestability is irrelevant to the ques-
tion of genericness. Section 15(4) of the Lanham Act
mandates that “no incontestable right shall be acquired in
a mark which is the generic name for the goods or services
or a portion thereof, for which it is registered.” 15 U.S.C.
§ 1065(4). “[A] registered mark may be canceled at any
time on the grounds that it has become generic.” Park ’N
Fly, 469 U.S. at 194. “Under the cancellation provisions
6 IN RE: CORDUA RESTAURANTS, INC.
of § 14 [of the Lanham Act, 15 U.S.C. § 1064], a registered
mark that has become generic may be cancelled at any
time . . . . ‘[I]ncontestability is never a shield for a mark
that is generic.’” 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition § 12:60 (4th ed.
2016) (“McCarthy”) (quoting Retail Servs., Inc. v. Freebies
Publ’g, 364 F.3d 535, 548 (4th Cir. 2004)). Cordua con-
ceded at argument that incontestability cannot protect a
mark against a challenge of genericness. Thus, the Board
did not err in declining to consider the alleged incontesta-
bility of the CHURRASCOS word mark in evaluating the
genericness of the stylized form thereof.
Cordua also argues that under § 7(b) of the Lanham
Act (15 U.S.C. § 1057(b)), registration on the Principal
Register is prima facie evidence of a mark’s validity, even
if the mark has not achieved incontestable status. Cor-
dua is correct that “[registration] is ‘prima facie evidence
of the validity of the registered mark . . . .’” B&B Hard-
ware, Inc. v. Hargis Indus., 135 S. Ct. 1293, 1300 (2015)
(quoting 15 U.S.C. § 1057(b)). The presumption of validi-
ty applies generally against any challenge that the mark
is invalid, including an allegation that the mark is gener-
ic. See Coca-Cola Co. v. Overland, Inc., 692 F.2d 1250,
1254 (9th Cir. 1982) (“The general presumption of validity
resulting from federal registration includes the specific
presumption that the trademark is not generic.”); see also
2 McCarthy § 12:60 (“When the plaintiff asserts a federal
registration in an infringement suit, it constitutes a
strong presumption that the term is not generic and
defendant bears the burden of overcoming the presump-
tion.”).
But this proceeding does not involve a challenge to the
’321 Registration and the CHURRASCOS word mark.
The presumption of validity of 15 U.S.C. § 1057(b) does
not carry over from registration of the older mark to a
new application for registration of another mark that
IN RE: CORDUA RESTAURANTS, INC. 7
happens to be similar (or even nearly identical). See, e.g.,
In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174 (Fed.
Cir. 2009) (“Applicant’s allegations regarding similar
marks are irrelevant because each application must be
considered on its own merits.”); In re Nett Designs, Inc.,
236 F.3d 1339, 1342 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to Nett
Designs’ application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”). The
PTO is required to examine all trademark applications for
compliance with each and every eligibility requirement,
including non-genericness, even if the PTO earlier mis-
takenly registered a similar or identical mark suffering
the same defect. Thus, whether or not the term “churras-
cos” was generic when it was registered, we, like the
Board, must evaluate the evidence in the present record
to determine whether there is sufficient evidence to
establish that it is ineligible.
In any event, regardless of the presumption of validi-
ty, in registration proceedings the PTO always bears the
burden of proving genericness by clear and convincing
evidence. “The Patent and Trademark Office (PTO) bears
the burden of establishing that a proposed mark is gener-
ic, and must demonstrate generic status by clear [and
convincing] evidence.” Hotels.com, 573 F.3d at 1302
(citations omitted); see also In re La. Fish Fry Prods., Ltd.,
797 F.3d 1332, 1335 (Fed. Cir. 2015); In re Steelbuild-
ing.com, 415 F.3d 1293, 1296 (Fed. Cir. 2005); Trademark
Manual of Examining Procedure (“TMEP”) § 1209.01(c)(i).
Here, the Board’s opinion acknowledged the presumption
of non-genericness and the correct burden of proof: “When
a proposed mark is refused registration as generic, the
Office has the burden of proving genericness by ‘clear
evidence’ thereof.” Cordua, 2014 WL 1390504, at *2
(citing Hotels.com, 573 F.3d at 1302). The Board sus-
tained the examiner’s determination that “churrascos” is
8 IN RE: CORDUA RESTAURANTS, INC.
a generic term with respect to restaurant services only
after concluding that the examiner had proved this fact by
clear and convincing evidence. “[T]he examining attorney
has established by clear evidence that the general public
(the consumers of restaurant services) understands that
churrascos is generic for a type of restaurant, specifically
a restaurant that serves ‘churrascos.’” Id. at *3. 2
2 Cordua appears to argue that the examiner’s de-
termination that the CHURRASCOS word mark is
trademark-eligible is binding on this case as a matter of
issue preclusion. In B&B Hardware, the Supreme Court
made clear that a decision of the TTAB may have issue
preclusive effect. “So long as the other ordinary elements
of issue preclusion [set forth in § 27 of the Restatement
(Second) of Judgments] are met, when the usages adjudi-
cated by the TTAB are materially the same as those
before the district court, issue preclusion should apply.”
135 S. Ct. at 1310. The Court held that issue preclusion
did apply to a TTAB decision in an inter partes opposition
proceeding, noting that the procedures there resembled
the procedures of a district court. Id. at 1309 (observing,
inter alia, that, in opposition proceedings, “the TTAB has
adopted almost the whole of Federal Rule of Civil Proce-
dure 26” concerning discovery).
But there is no suggestion in B&B Hardware that an
examiner’s decision to register a mark or to refuse regis-
tration satisfies the traditional requirements of issue
preclusion. See Restatement (Second) of Judgments § 27
(1982) (requiring that an issue be “actually litigated”
between parties for issue preclusion to apply); see also 4A
Callmann on Unfair Competition, Trademarks and Mo-
nopolies § 26:68 (4th ed. 2015) (“A decision in an ex parte
registration proceeding does not have preclusive effect in
a subsequent inter partes proceeding, though statements
IN RE: CORDUA RESTAURANTS, INC. 9
III
We next consider whether the Board properly deter-
mined that the stylized form of CHURRASCOS is generic.
A
Cordua argues that the Board failed to apply the Ginn
test correctly. The Ginn test requires the Board to deter-
mine, first, “what is the genus of goods or services at
issue?” and, second, “is the term sought to be registered or
retained on the register understood by the relevant public
primarily to refer to that genus of goods or services?”
Ginn, 782 F.2d at 990. Cordua complains, inter alia, that
the Board (and the examiner) misapplied the Ginn test by
concentrating on the wrong genus of services, focusing
improperly on Cordua’s own services rather than on the
wider genus identified in the ’191 Application, restaurant
services. 3
At a few points in its decision, the Board’s analysis of
genericness addressed Cordua’s own restaurant services.
The Board’s opinion noted, for example, that “Churrasco
Steak” is advertised as the “signature” dish of Cordua’s
Churrascos restaurants and is listed as the first entrée on
its menu, Cordua, 2014 WL 1390504, at *6, and suggested
that “churrascos” is generic as applied to Cordua’s own
restaurants: “The ‘Churrasco’ steak is clearly one of the
primary items applicant’s CHURRASCOS restaurants
serve,” id. at *6.
made during ex parte proceedings may be considered in
later proceedings.”).
3 Cordua applied to register the stylized form of
CHURRASCOS as a mark for “Bar and restaurant ser-
vices; Catering.” J.A. 27.
10 IN RE: CORDUA RESTAURANTS, INC.
We agree with Cordua that “a proper genericness in-
quiry focuses on the description of services set forth in the
certificate of registration.” Magic Wand, Inc. v. RDB, Inc.,
940 F.2d 638, 640 (Fed. Cir. 1991). “The authority is
legion that the question of registrability of an applicant’s
mark must be decided on the basis of the identification of
goods set forth in the application regardless of what the
record may reveal as to the particular nature of an appli-
cant’s goods, the particular channels of trade or the class
of purchasers to which sales of the goods are directed.”
Octocom Sys., Inc. v. Hous. Comput. Servs., Inc., 918 F.2d
937, 942 (Fed. Cir. 1990) (citing cases); see also In re
1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1363
(Fed. Cir. 2009) (defining the genus of goods or services at
issue as the genus of goods or services for which the
applicant sought protection, as set forth in its trademark
application); Can. Imperial Bank of Commerce v. Wells
Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1492–93 (Fed.
Cir. 1987).
Thus, the correct question is not whether “churrascos”
is generic as applied to Cordua’s own restaurants but
rather whether the term is understood by the restaurant-
going public to refer to the wider genus of restaurant
services. See Ginn, 782 F.2d at 990; see also Princeton
Vanguard, 786 F.3d at 966; Reed Elsevier, 482 F.3d at
1379. The Board’s suggestion that “churrascos” is generic
as applied to Cordua’s own restaurant services misses the
point. 4 Cordua, 2014 WL 1390504, at *6.
4 We do not suggest that Cordua’s own advertising
could never be pertinent to the public’s understanding of
the term “churrascos” but rather that the focus must be
on the public’s understanding with respect to the overall
genus of restaurant services, not limited to the term’s
connection with Cordua’s own restaurants.
IN RE: CORDUA RESTAURANTS, INC. 11
However, the Board’s apparent error in considering
Cordua’s own restaurant services is harmless. At the first
step of the Ginn test, the Board properly determined
“[t]he genus of goods or services at issue,” id. at *2 (quot-
ing Ginn, 782 F.2d at 990), and concluded that “the genus
of the services at issue is adequately defined by a portion
of the recitation of services in the application, specifically
‘restaurant services,’” id. at *2 (citing Magic Wand, 940
F.2d at 640). This aspect of the Board’s decision reflects
the correct approach, and Cordua agrees that restaurant
services is the relevant genus.
B
We next address whether the term “churrascos” is ge-
neric for restaurant services generally, as identified in the
’191 Application. The Board found, “[b]ased on the evi-
dence that ‘churrascos’ is the generic term for a type of
cooked meat,” that “‘churrascos’ is a generic term for a
restaurant featuring churrasco steaks.” Cordua, 2014 WL
1390504, at *6. The Board’s decision in this respect is
supported by substantial evidence.
Cordua concedes that the term “churrasco” is a word
in Spanish and Portuguese referring to barbecue, and the
’191 Application itself acknowledges that “[t]he English
translation of churrascos in the mark is barbecue.” J.A.
30. “Under the doctrine of foreign equivalents, foreign
words from common languages are translated into Eng-
lish to determine genericness, descriptiveness, as well as
similarity of connotation . . . .” Palm Bay Imps., Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 1377 (Fed. Cir. 2005); see also In re Spirits
Int’l, N.V., 563 F.3d 1347, 1351 (Fed. Cir. 2009). Because
“churrasco” is a common word in Spanish and Portuguese
and because the ’191 Application itself concedes that
“churrascos” means “barbecue,” the PTO would have been
justified in translating “churrascos” into “barbecue” and
12 IN RE: CORDUA RESTAURANTS, INC.
subsequently determining whether the term “barbecue” is
generic when applied to restaurant services. Indeed, the
examiner aptly remarked that “a foreign equivalent of a
generic English word is no more registrable than the
English word itself.” J.A. 71.
But the examiner, and the Board, did not rely here on
the doctrine of foreign equivalents. Instead, the examiner
and the Board found that “churrasco” is used in the
English language to refer to grilled meat. The evidence
before the Board included, inter alia, three English-
language dictionaries that define “churrasco” as grilled
meat. See Cordua, 2014 WL 1390504, at *3. Two of the
dictionaries specify that the meat is steak or beef. Id.
The dictionaries constitute evidence that “churrasco” is a
generic English-language term for grilled meat, especially
grilled steak. Cordua essentially concedes this point. In
its brief, Cordua concedes “‘churrasco’ can be used as a
noun meaning grilled steak specially prepared in the
churrasco style.” Appellant’s Br. at 47.
However, Cordua contends that the addition of the “S”
at the end of CHURRASCOS makes the term non-generic.
That is, while Cordua concedes that “churrasco” describes
a grilled steak, it argues that adding an “S” changes the
term’s meaning because “churrascos” is not the proper
pluralization of “churrasco” in Spanish. While each
trademark must always be evaluated individually, plural-
ization commonly does not alter the meaning of a mark.
See In re Belgrade Shoe Co., 411 F.2d 1352, 1353 (CCPA
1969); Wilson v. Delaunay, 245 F.2d 877, 878 (CCPA
1957). Since “churrascos” is an English-language term,
there is nothing in the record to indicate that the addition
of the “S” at the end alters its meaning (beyond making
the word plural). In fact, the Board found that at least
one English-language dictionary presents “churrascos” as
the plural form of “churrasco,” meaning meat cooked over
an open fire. Cordua, 2014 WL 1390504, at *3. The
IN RE: CORDUA RESTAURANTS, INC. 13
Board also credited an article that appeared in an online
(English-language) version of Esquire Magazine that used
the precise term “churrascos” to refer to “juicy, charred
slabs” of tenderloin steak. Id. at *4. There is, therefore,
substantial evidence to support the Board’s conclusion
that “‘churrascos’ is the generic term for a type of cooked
meat.” Id.
Cordua next argues that “churrascos” (or “churrasco”)
refers specifically to a style of grilling meat and not to
restaurant services. But a term can be generic for a
genus of goods or services if the relevant public—here, the
restaurant-going public—understands the term to refer to
a key aspect of that genus—e.g., a key good that charac-
terizes a particular genus of retail services. “A generic
name of goods may also be a generic name of the service
of selling or designing those goods.” 2 McCarthy § 12:23.
We have held that “[t]he test is not only whether the
relevant public would itself use the term to describe the
genus, but also whether the relevant public would under-
stand the term to be generic.” 1800Mattress.com, 586
F.3d at 1364. “[A]ny term that the relevant public under-
stands to refer to the genus . . . is generic.” Id.
In 1800Mattress.com, we affirmed the Board’s deter-
mination that MATTRESS.COM is generic for “online
retail store services in the field of mattresses, beds, and
bedding” because the term “mattress” identified a key
aspect of such services. Id. at 1361, 1364. In Hotels.com,
we affirmed the Board’s determination that
HOTELS.COM is generic for “providing information for
others about temporary lodging” and “travel agency
services” because the term “hotels” “names a key aspect”
of such services. 573 F.3d at 1301, 1304, 1306. And in
Reed Elsevier, we affirmed the Board’s determination that
LAWYERS.COM is generic for “information exchange
concerning the law, legal news, and legal services,” be-
cause “an integral, if not the paramount, aspect of infor-
14 IN RE: CORDUA RESTAURANTS, INC.
mation exchange about legal services as Reed defines it
concerns identifying and helping people to select lawyers.”
482 F.3d at 1379, 1380 (alterations and internal quotation
marks omitted); see also In re Tires, Tires, Tires, Inc., 94
U.S.P.Q.2d 1153, 1157, 2009 WL 4075360, at *5 (TTAB
2009) (holding that TIRES TIRES TIRES is generic for
retail tire sales); In re CyberFinancial.Net, Inc., 65
U.S.P.Q.2d 1789, 1791, 2002 WL 1980117, at *3 (TTAB
2002) (“[A] term which is the generic name of a particular
category of goods is likewise generic for any services
which are directed to or focused on that class of goods.”). 5
Thus, Cordua is wrong that “a dish, even a specialty
dish, does not identify the genus of restaurant services.”
Appellant’s Br. at 33. If the relevant public would under-
stand a term denoting a specialty dish to refer to a key
aspect of restaurant services, then the term is generic for
restaurant services. See Hunt Masters, Inc. v. Landry’s
Seafood Rest., Inc., 240 F.3d 251, 254 (4th Cir. 2001)
(holding that “crab house” is a generic term referring to a
class of restaurants that serve crabs).
5 Cordua argues that two precedential decisions of
the TTAB, In re Le Sorbet, Inc., 228 U.S.P.Q. 27, 1985 WL
71953 (TTAB 1985), and In re France Croissant, Ltd., 1
U.S.P.Q.2d 1238, 1986 WL 83305 (TTAB 1986), hold that
the generic name of a food is merely descriptive but not
generic for a restaurant serving that food. The PTO
points out that those cases only addressed the issue of
descriptiveness and did not reach genericness. In any
event, the 1800Mattress.com, Hotels.com, and Reed Else-
vier decisions of our court supersede precedent of the
TTAB and make clear that a term is generic if the rele-
vant public understands it to refer to a key aspect of the
genus of goods or services in question. 586 F.3d at 1364;
573 F.3d at 1304, 1306; 482 F.3d at 1379–80.
IN RE: CORDUA RESTAURANTS, INC. 15
There is substantial evidence in the record that “chur-
rascos” refers to a key aspect of a class of restaurants
because those restaurants are commonly referred to as
“churrasco restaurants.” For example, the TTAB’s deci-
sion points to one newspaper article praising a “Brazilian
churrasco restaurant” notable for its “sizzling food” served
“on spits straight from the fire”; a second article that
describes a “churrasco restaurant” as a restaurant distin-
guished by serving “[m]eat of all kinds”; and a third
article that characterizes a “churrasco restaurant” as a
kind of restaurant that serves “South American mixed
grill.” Cordua, 2014 WL 1390504, at *3–4. Each of these
articles constitutes evidence that the restaurant-going
public understands the term “churrascos” to refer to a
type of restaurant as well as a dish. Each article there-
fore supports the Board’s conclusion that “there is a class
of restaurants that have churrascos as a central focus of
their services, and that both competitors in the field and
consumers use the term ‘Churrasco’ to refer to this type of
restaurant.” Id. at *6. We perceive no error in this part
of the Board’s analysis.
C
Cordua argues that even if “churrascos” is generic as
to “churrasco restaurants” (also known as “churrascari-
as”), it is not generic as to all restaurant services. But a
term is generic if the relevant public understands the
term to refer to part of the claimed genus of goods or
services, even if the public does not understand the term
to refer to the broad genus as a whole. Thus, the term
“pizzeria” would be generic for restaurant services, even
though the public understands the term to refer to a
particular sub-group or type of restaurant rather than to
all restaurants. See, e.g., Northland Aluminum, 777 F.2d
at 1561 (affirming the TTAB’s determination that
BUNDT is generic “for a type of ring cake”); In re Analog
Devices, Inc., 6 U.S.P.Q.2d 1808, 1810, 1988 WL 252496,
16 IN RE: CORDUA RESTAURANTS, INC.
at *3 (TTAB 1988) (“There is no logical reason to treat
differently a term that is generic of a category or class of
products where some but not all of the goods identified in
an application fall within that category.”), aff’d, 871 F.2d
1097 (Fed. Cir. 1989) (unpublished); see also Otokoyama
Co., Ltd. v. Wine of Japan Imp., Inc., 175 F.3d 266, 271
(2d Cir. 1999) (“Generic words for sub-classifications or
varieties of a good are [ ] ineligible for trademark protec-
tion.”). “A registration is properly refused if the word is
the generic name of any of the goods or services for which
registration is sought.” 2 McCarthy § 12:57. A “term
need not refer to an entire broad species, like ‘cheese’ or
‘cake,’ in order to be found generic.” 1–2 Anne Gilson
LaLonde, Gilson on Trademarks § 2.02[7][a] (2011).
We do not, of course, suggest that the term “churras-
cos” is necessarily generic as to any and all restaurant
services. Had another applicant applied for registration
of the mark CHURRASCOS in connection not with the
entire broad genus of restaurant services but instead with
a narrower sub-genre of restaurant at which grilled meat
is not a key aspect of the service provided—for example,
vegetarian or sushi restaurants—the result could well
have been different. “[B]y expanding or contracting the
definition of a ‘genus’ of products, a court can substantial-
ly affect the final determination of whether a term is
‘generic.’” 2 McCarthy § 12:23. It is up to the applicant to
identify the genus of goods or services for which it seeks
protection. See 15 U.S.C. § 1051(a)(2), (b)(2); 37 C.F.R.
§§ 2.32(a)(6), 2.71(a); TMEP § 1402.01; see also Stone Lion
Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d
1317, 1324 (Fed. Cir. 2014) (“Parties that choose to recite
services in their trademark application that exceed their
actual services will be held to the broader scope of the
application.”); Octocom Sys., 918 F.2d at 942
(“[R]egistrability of an applicant’s mark must be decided
on the basis of the identification of goods set forth in the
IN RE: CORDUA RESTAURANTS, INC. 17
application . . . .”). The PTO will generally accept any
identification of goods or services so long as it is “specific,
definite, clear, accurate, and concise.” TMEP § 1402.01;
see also In re Omega SA, 494 F.3d 1362, 1365 (Fed. Cir.
2007) (holding that “[i]t is within the discretion of the
PTO to require that one’s goods be identified with particu-
larity” in a trademark application) (quoting In re Water
Gremlin Co., 635 F.2d 841, 845 (CCPA 1980)).
Here, Cordua sought registration of the stylized form
of CHURRASCOS in connection with the broad genus of
all restaurant services, and the question of genericness
must be evaluated accordingly. As the PTO points out,
registration of the stylized form of CHURRASCOS on the
Principal Register would give Cordua rights that it could
enforce against all others providing restaurant services,
including operators of traditional Latin American chur-
rascarias (churrasco restaurants) that specialize in meat
grilled in the churrasco style. See 15 U.S.C. §§ 1057(a)–
(b), 1115; see also Stone Lion Capital Partners, 746 F.3d
at 1324 (“[T]he services recited in the application deter-
mine the scope of the post-grant benefit of registration.”);
Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975 (Fed. Cir.
1993) (“The benefits of a Principal Register registration
apply with respect to the goods named in the registration
. . . .”); 2 McCarthy § 24:65. By seeking broad protection
for its mark, Cordua obliged the PTO to direct its generic-
ness inquiry to the broad category of restaurants general-
ly. 6
6 At argument, Cordua requested, for the first time,
that this court remand the case back to the PTO to permit
Cordua to amend the ’191 Application and narrow the
identified genus of services. No such request was made
before the PTO. Such a request comes too late when a
case is on appeal before our court. Singleton v. Wulff, 428
18 IN RE: CORDUA RESTAURANTS, INC.
IV
Finally, we consider whether the stylization of
CHURRASCOS in the ’191 Application renders the mark
eligible. As the Board has previously held, “[a] display of
descriptive or otherwise unregistrable matter is not
registrable on the Principal Register unless the design
features of the asserted mark create an impression on the
purchasers separate and apart from the impression made
by the words themselves, or if it can be shown by evidence
that the particular display which the applicant has adopt-
ed has acquired distinctiveness.” In re Sadoru Grp., Ltd.,
105 U.S.P.Q.2d 1484, 1486, 2012 WL 3875730, at *2
(TTAB 2012); see also Northland Aluminum, 777 F.2d at
1561 (affirming the TTAB’s rejection, as generic, of a
stylized mark that was “not so distinctive as to create a
commercial impression separate and apart from the” word
itself); 2 McCarthy § 12:40; cf. In re Chem. Dynamics, Inc.,
839 F.2d 1569, 1570 (Fed. Cir. 1988) (“In deciding wheth-
er the design background of a word mark may be sepa-
rately registered, the essential question is whether or not
the background material is or is not inherently distinc-
tive. . . . If the background portion is inherently distinc-
tive, no proof of secondary meaning need be introduced; if
not, such proof is essential.”) (citation, internal quotation
marks, and emphasis omitted). The Board concluded that
“the display of Applicant’s mark, consisting primarily of
stylized letters, does not make the applied-for matter
registrable, despite the genericness of the term
CHURRASCOS, since it does not create a separate com-
mercial impression over and above that made by the
generic term.” Cordua, 2014 WL 1390504, at *7.
U.S. 106, 120 (1976); see also Golden Bridge Tech., Inc. v.
Nokia, Inc., 527 F.3d 1318, 1322–23 (Fed. Cir. 2008).
IN RE: CORDUA RESTAURANTS, INC. 19
While Cordua now describes the stylized form of
CHURRASCOS as “highly stylized,” “using a unique and
arbitrary font,” Appellant’s Br. at 10, Cordua did not
argue before the Board and does not argue now that this
stylization creates a separate impression, see Cordua,
2014 WL 1390504, at *8 n.11. Cordua also did not argue
that the stylization (i.e., the graphic quality) of the styl-
ized form of CHURRASCOS has acquired distinctiveness;
instead, it has argued only that the underlying word mark
has acquired distinctiveness. The stylized nature of the
mark cannot save it from ineligibility as generic.
CONCLUSION
We affirm the TTAB’s decision that the stylized form
of CHURRASCOS applied for in the ’191 Application is
generic as applied to restaurant services and therefore
trademark-ineligible. Because we hold that the Board did
not err in concluding that CHURRASCOS is generic, we
do not reach the Board’s alternate ground of ineligibility,
descriptiveness.
AFFIRMED