A recent decision by the Federal Circuit Court has reiterated that generic terms should never be used as trademarks.   In Re Cordua Restaurants, Inc., 2016 WL 2786364 (Fed. Cir. May 13, 2016)(“Cordua”).

In the Cordua case, the company received in 2008 a registration for the service mark CHURRASCOS in connection with “restaurant and bar services; catering.” In 2011, the company sought a service mark for the same mark CHURRASCOS, but this time included specific stylized use of the lettering. Again, the second application was based on the same class of services, “restaurant and bar services; catering.”   Notably, but to no effect, the first mark had become incontestable by the time the Trademark Trial and Appeal Board (“TTAB”) decided the case.

No doubt the attorneys representing the client in this application were not particularly concerned about the mark’s registration. After all, the previous registration based on the word alone was granted by the Patent and Trademark Office (“PTO”), and the mark was arguably strengthened based on the particular design elements that were added to the mark.  The first mark had even become incontestable.

Wrong. The PTO’s trademark examiner determined (and the TTAB agreed) that the term “churrascos” was a generic term meaning “grilled beef or meat generally” and that the term already identifies, in a generic way, “a key characteristic or feature of the restaurant services, namely, the type of restaurant.”

Unfortunately for the company, a generic term can never become distinctive for a product or service, even when the mark as become incontestable, as the Federal Circuit pointed out in Cordua. Another way express this unfortunate turn of events – generic terms by definition are not and cannot become incontestable. And, a trademark can be cancelled at any time based on the grounds that it has become generic.   The fact that this application could not be granted due to its generic nature was therefore not impacted in any way by the existing trademark’s potential status as incontestable. One would assume the previous mark has a short life to live.

One important point to take from this case was discussed near the end of the opinion.   The Federal Circuit noted that part of the company’s problem arose out of the broad claim of services provided, i.e. “restaurant and bar services; catering.”   One can deduce that a broad claim for covered services lends itself more directly to a determination that the mark is generic in nature, simply because generic terms tend to include broad descriptions or definitions.