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Coffee, tea, or doctrine of foreign equivalents?

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.

Stylish but Generic: ‘VETEMENTS’ Can’t Dress Up as Trademark

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s refusal to register the mark VETEMENTS for clothing and related retail services, finding that the mark was generic under the doctrine of foreign equivalents. In re Vetements Group AG, Case Nos. 2023-2050; -2051 (Fed. Cir. May 21, 2025) (Prost, Wallach, Chen, JJ.)

Vetements Group AG applied to register the mark VETEMENTS for various clothing items and online retail store services for clothing items. The US Patent & Trademark Office refused registration, finding the mark generic or, in the alternative, merely descriptive without acquired distinctiveness under Section 2(e)(1) of the Lanham Act. The Board affirmed, applying the doctrine of foreign equivalents to translate “vetements” (French for “clothing”) and concluding that the term was generic for the applied-for goods and services pertaining to clothing. Vetements Group appealed.

The doctrine of foreign equivalents is used to evaluate whether a non-English trademark is generic or descriptive for the applied-for goods or services by translating the foreign-language mark into English, then applying the relevant legal tests. The Federal Circuit affirmed that the doctrine applies when the “ordinary American purchaser” would likely “stop and translate” the foreign word into English. The “ordinary American purchaser” includes all US consumers, including those familiar with the foreign language.

The Federal Circuit emphasized that words from modern languages are generally translated unless there is a compelling reason not to do so. It rejected Vetements’ argument that the doctrine should only apply if a majority of US consumers understand the foreign word. Instead, the Court held that it is sufficient if an “appreciable number” of US consumers would recognize and translate the term.

In this case, the Federal Circuit found that French is widely spoken and taught in the United States (the Board found that as of 2010, French was the fifth most spoken non-English language at home and the second most widely taught non-English language in US schools). The Court thus concluded that “vetements” is a common French word meaning “clothing,” and that given the mark’s use on apparel and in connection with clothing-related retail services, translation of the term into English was likely.

Under the doctrine of foreign equivalents, foreign terms used as trademarks are translated into English, then evaluated under the applicable standards, including genericness, descriptiveness, and likelihood of confusion. In assessing whether a term is generic, courts apply a two-part test: identifying the genus of goods or services at issue, and determining whether the relevant public understands the term primarily to refer to that genus.

Here, the genus was clothing and online retail services for clothing. The Federal Circuit agreed with the Board that “vetements,” once translated to “clothing,” directly named the genus of the goods and services. Therefore, the term was generic and ineligible for trademark protection.

Because the mark was found to be generic, the Federal Circuit explained that it did not have to reach the Board’s alternative holding that the VETEMENTS mark was merely descriptive without acquired distinctiveness [...]

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Coffee, tea, or doctrine of foreign equivalents?

Stylish but Generic: ‘VETEMENTS’ Can’t Dress Up as Trademark

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