A Tampa Bay coffee chain just won a four-year battle at the Federal Circuit after the USPTO insisted its name meant “coffee” in Arabic.
The Ruling That Changes Foreign Language Trademark Strategy
Bayou Grande Coffee Roasting Co. has operated cafés across Tampa Bay under the KAHWA name since 2008. When the company filed to register the mark in February 2021, it seemed routine. Nearly 13 years of continuous use. Regional brand recognition. Florida’s largest independent coffee roaster.
The USPTO examiner saw it differently. Applying the doctrine of foreign equivalents, the examiner claimed KAHWA translates to “coffee” in Arabic, making it generic or merely descriptive for café services. The Trademark Trial and Appeal Board agreed and affirmed the refusal.
On December 9, 2025, Chief Judge Kimberly Moore authored a precedential Federal Circuit opinion reversing the TTAB. The court rejected both the genericness and descriptiveness findings. More significantly, it held that the doctrine of foreign equivalents does not apply when a mark has a well-established alternative English meaning.
That alternative meaning proved decisive. KAHWA is the English name for a traditional Kashmiri green tea made with saffron, cardamom, cinnamon, and almonds. It’s a winter specialty from Central Asia, sometimes called the “drink of the soul.” No American café sells it. The USPTO couldn’t produce evidence that any ever has. Without marketplace evidence, the genericness claim collapsed.
The ruling sets a new standard: speculation about what cafés might theoretically sell no longer supports registration refusals. The USPTO must prove its claims with actual marketplace data. Applicants facing foreign equivalents challenges now have precedent demanding real evidence, not hypotheticals.
The Doctrine of Foreign Equivalents and Its Limits
Under the doctrine of foreign equivalents, the USPTO translates foreign words to evaluate whether marks are generic or descriptive. The theory makes sense: prevent registration of terms that are generic in another language simply because American consumers might not recognize the translation. CAFÉ for coffee shops would be generic. GELATO for ice cream would be descriptive. The doctrine asks whether American buyers familiar with the language would stop and translate the word. If yes, the USPTO evaluates the English meaning.
But this doctrine is a guideline, not an absolute rule. The Federal Circuit identified a critical exception. When a mark has a well-established alternative English meaning, translation becomes unnecessary. Both the USPTO and Bayou Grande agreed that KAHWA means Kashmiri green tea in English. That agreement ended the translation inquiry before it started.
The genericness analysis applied the same rigor. A term is generic only if consumers understand it as identifying the category of goods or services. The USPTO offered no evidence that American cafés sell kahwa. None. When responding to office action refusals, building an evidentiary record matters. Here, the absence of marketplace evidence meant the genericness finding had no support.
Descriptiveness failed for the same reason. Kahwa is neither a feature of café services nor a tea variety typically offered in American coffee shops. The examiner’s speculation about what cafés could theoretically sell collapsed against the reality of what they actually sell.
This precedential decision binds future TTAB cases. Examiners now face higher evidentiary burdens when citing foreign equivalents. Applicants have a roadmap for challenging translation-based refusals when their marks carry established alternative meanings.
The Food and Beverage Trademark Landscape
Foreign language marks dominate food and beverage branding. LA YOGURT, GLACE LITE, BELLA DI CERIGNOLA: the USPTO regularly scrutinizes culinary terms borrowed from French, Italian, Spanish, and Arabic. Coffee industry brands face particular attention given the product’s global origins and the multilingual vocabulary surrounding it.
The KAHWA case carves out protection for terms with dual meanings. When a foreign word has acquired a distinct English definition, automatic translation stops. Craft coffee roasters, artisan tea importers, ethnic food producers using foreign vocabulary now have stronger ground. The key is documenting that alternative meaning before the USPTO picks a different translation.
Bayou Grande’s scale strengthened its position. Fourteen retail locations across Tampa Bay. Over 800 wholesale customers. In 2008, French chef Paul Bocuse selected their coffee for his Epcot restaurant Chefs de France. Creative Loafing named them Best Coffee Shop from 2010 through 2017. When pursuing federal trademark registration, this kind of documented brand building creates the foundation for successful applications.
The timeline tells a story of persistence. Founded in 2006. First café opened in 2008. Trademark application filed February 2021. Federal Circuit victory December 2025. Four years from application to final resolution. Most businesses would have abandoned the mark and rebranded. Bayou Grande had the resources and resolve to fight.
Appeal statistics explain why most applicants never reach the Federal Circuit. The TTAB affirms examiner decisions approximately 90% of the time. Federal Circuit review costs $500 in filing fees plus $5,000 or more for brief preparation, with reply briefs adding another $2,000 to $8,000. The alternative route through district court can trigger $36,000 or more in USPTO attorney fee reimbursements. Most small businesses abandon applications rather than fight.
Bayou Grande fought and won. The precedent now benefits every food and beverage brand facing similar challenges.
Preventive Strategies for Foreign Language Marks
Pre-application research determines outcomes in foreign equivalents disputes. Before filing, document every possible meaning of your proposed mark: dictionary definitions, culinary references, cultural usage, commercial products using the term. If your mark appears in multiple languages, identify which translation the USPTO might apply and prepare evidence for why a different meaning controls. Build your record before the examiner builds theirs.
Bayou Grande succeeded because KAHWA has an undisputed English meaning as Kashmiri green tea. Wikipedia entries, specialty tea retailers, and culinary publications all confirm this meaning exists independent of Arabic translation. A professional trademark search can identify these foreign equivalents issues before they become four-year legal battles.
Negative evidence proved equally important. No US café sells kahwa. Bayou Grande documented this absence. When your mark could theoretically describe something in your industry, prove your industry doesn’t actually sell it. Surveys, industry reports, competitor analysis: whatever demonstrates the gap between theoretical description and marketplace reality. The absence of evidence can become your best evidence.
Expert declarations strengthen applications facing foreign equivalents scrutiny. Cultural anthropologists, linguists, and culinary historians can establish alternative meanings and consumer understanding. A $2,000 expert declaration during application beats a $15,000 Federal Circuit brief.
First-to-file matters. Bayou Grande claimed use since 2008 but didn’t file until 2021. Earlier filing might have meant earlier resolution. Secure your application early, even anticipating potential opposition.
Budget for the fight before you need it. Initial applications run $225 to $400 per class. TTAB appeals add filing fees and attorney costs. Federal Circuit appeals can exceed $10,000 in legal fees alone. Four years is a long time to wait for your brand name. But for Bayou Grande, the wait was worth it.
How I Help Protect Your Brand
Foreign equivalents challenges turn trademark registration into a years-long battle requiring evidence most applicants don’t know they need. Bayou Grande spent four years proving what seems obvious: their Tampa Bay coffee shops don’t sell Kashmiri green tea. Without proper preparation, a single examiner’s translation can derail your application and force appeals costing $10,000 or more.
I help clients identify foreign equivalents risks before filing, develop evidentiary strategies that document alternative meanings, and build records that withstand USPTO scrutiny. When office actions arrive, I prepare responses grounded in marketplace evidence, not just legal argument. If appeals become necessary, I guide clients through TTAB and Federal Circuit processes with realistic expectations.
If you’re considering a mark with foreign language elements or facing an office action citing the doctrine of foreign equivalents, preparation determines outcome. Contact me for a consultation to discuss your mark’s vulnerabilities and build a strategy before the USPTO forces you into a four-year fight.
