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.

______________________ 

Decided: May 13, 2016 

______________________ 

ELIZABETH WOOD KING, Sutton McAughan Deaver 

PLLC, Houston, TX, argued for appellant. Also represented 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 . Hereinafter 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 registration 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 connection 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 because 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 registration 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 standard 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 understood by the relevant public primarily to refer to that 

genus of goods or services?” Id.; see also Princeton Vanguard, 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 publications.’” 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 registration of the CHURRASCOS word mark (the ’321 Registration) 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 question 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 conceded 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 incontestability 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. Cordua is correct that “[registration] is ‘prima facie evidence 

of the validity of the registered mark . . . .’” B&B Hardware, Inc. v. Hargis Indus., 135 S. Ct. 1293, 1300 (2015)

(quoting 15 U.S.C. § 1057(b)). The presumption of validity applies generally against any challenge that the mark 

is invalid, including an allegation that the mark is generic. 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 presumption.”). 

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 mistakenly registered a similar or identical mark suffering 

the same defect. Thus, whether or not the term “churrascos” 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 validity, 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 generic, 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 Steelbuilding.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 sustained 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 determination 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 adjudicated 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 Procedure 26” concerning discovery). 

But there is no suggestion in B&B Hardware that an 

examiner’s decision to register a mark or to refuse registration 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 Monopolies § 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 determined 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 determine, 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 services; Catering.” J.A. 27. 
 10 IN RE: CORDUA RESTAURANTS, INC. 

We agree with Cordua that “a proper genericness inquiry 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 applicant’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 restaurantgoing 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 (quoting 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 generic for restaurant services generally, as identified in the 

’191 Application. The Board found, “[b]ased on the evidence 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 English 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 Englishlanguage 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, pluralization 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 characterizes 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 understand the term to be generic.” 1800Mattress.com, 586 

F.3d at 1364. “[A]ny term that the relevant public understands to refer to the genus . . . is generic.” Id. 

In 1800Mattress.com, we affirmed the Board’s determination 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,” because “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 understand 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 Elsevier decisions of our court supersede precedent of the 

TTAB and make clear that a term is generic if the relevant 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 “churrascos” 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 decision 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 distinguished 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 therefore 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 “churrascarias”), 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 protection.”). “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 “churrascos” 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 substantially 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 particularity” 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 churrascarias (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 determine 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 genericness inquiry to the broad category of restaurants generally.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 adopted 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 whether the design background of a word mark may be separately registered, the essential question is whether or not 

the background material is or is not inherently distinctive. . . . If the background portion is inherently distinctive, 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 commercial 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 stylized 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