by Dennis Crouch
Note, I’ve updated this post. I had previously stated that Kahwa meant Coffee in Arabic, but that conclusion is not of record in the appeal. And, the English-Arabic transliteration is typically Qahwa rather than Kahwa.
In November 2025, I wrote about the still-pending cert petition in the trademark case of Vetements Grp. AG v. Stewart. That case focuses on the doctrine of foreign equivalents and argues that the Federal Circuit applies its translation-based framework too rigidly and in tension with the Lanham Act’s consumer-perception principles. This week though the court released a new decision that complicates the narrative somewhat by reversing a TTAB refusal to register KAHWA for café and coffee shop services, holding that the doctrine of foreign equivalents did not apply because the term has a well-established alternative English meaning. In re Bayou Grande Coffee Roasting Co., No. 2024-1118 (Fed. Cir. Dec. 9, 2025). The decision also imposed rigorous evidentiary requirements for genericness and descriptiveness findings, demanding actual marketplace evidence rather than speculation about what cafés might theoretically sell.
Bayou Grande has operated coffee shops in the Tampa Bay area under the KAHWA name since 2008. But, when the company sought federal registration of its name, the examining attorney refused under the doctrine of foreign equivalents, asserting that KAHWA means “coffee” (قهوة) in Arabic. The examiner also added alternative “grounds” based on KAHWA’s meaning as a type of Kashmiri green tea. After Bayou Grande appealed, the Board declined to address the Arabic translation issue entirely, instead affirming the refusal based solely on the tea meaning. The Board reasoned that because KAHWA refers to a type of green tea, and because cafés serve tea, the mark was generic or merely descriptive of café services.
On appeal, the Federal Circuit disagreed on every point, finding the Board’s genericness and descriptiveness determinations unsupported by substantial evidence and holding that the doctrine of foreign equivalents cannot apply when a foreign term has an established alternative English meaning.
The Doctrine of Foreign Equivalents: Under this judicially created guideline, foreign words used as trademarks are translated into English and then tested for genericness or descriptiveness. The doctrine applies when "the ordinary American purchaser would stop and translate" the foreign term. Courts have recognized exceptions, including when a foreign word has a well-established alternative English meaning that makes literal translation irrelevant. The Federal Circuit characterizes this as a "guideline" rather than an absolute rule. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369 (Fed. Cir. 2005).
The doctrine of foreign equivalents has generated considerable controversy. In In re Vetements Group AG, 137 F.4th 1317 (Fed. Cir. 2025), the Federal Circuit affirmed the Board’s refusal to register VETEMENTS (the French word for “clothing”) for apparel and related retail services. The court applied the doctrine and concluded that an “appreciable” number of American consumers would likely stop and translate the word and recognize that the word is simply generic for the goods in question. Vetements asked the Supreme Court to decide whether protectability of a non-English mark should turn on consumer perception of the mark as encountered or on its English translation. The still-pending petition frames the Federal Circuit’s approach as inconsistent with the bedrock consumer-perception principle reiterated in USPTO v. Booking.com, 591 U.S. 549 (2020), and the historic approach in Menendez v. Holt, 128 U.S. 514 (1888). Dennis Crouch, New Clothes for the Doctrine of Foreign Equivalents?, Patently-O (Aug. 2025). Dennis Crouch, Should American Trademark Law Speak English, Patently-O (Nov. 2025).
Bayou Grande presents a different picture of how the doctrine operates in practice. Rather than mechanically translating foreign terms, the Federal Circuit recognized that the doctrine contains meaningful limitations. The exception that it applied here comes from In re Spirits International, N.V., 563 F.3d 1347 (Fed. Cir. 2009). In Spirits, the court held that translation is unnecessary when a foreign word has a “well established alternative meaning that the literal translation is irrelevant.” The Board’s own decision acknowledged that the evidence “shows a well-recognized, alternative meaning to ‘kahwa’ as a type of green tea drink originating from Kashmir.” Given this undisputed alternative meaning, the Federal Circuit held that no translation was necessary as a matter of law.
Although Bayou Grande demonstrates that the doctrine of foreign equivalents contains limiting principles, the decision also exemplifies the other concern animating the Vetements petition: the Federal Circuit’s continued reliance on categorical rules rather than actual consumer perception. The court applied the “alternative meaning” exception as a matter of law, asking whether KAHWA has a well-established alternative English meaning rather than asking how consumers actually perceive the mark when they encounter it at a Tampa Bay coffee shop. This is still a rigid rule-based framework, just with an additional exception layered on top.
Under the consumer-perception principle that Booking.com reaffirmed, the relevant question should be whether consumers viewing KAHWA on a storefront understand it as a source identifier for a particular business or as a generic term for the services offered. The Federal Circuit never posed that question. Instead, it toggled between categorical rules: Does the foreign word have a translation that is generic? If so, is there an alternative meaning that negates the need for translation? This approach treats consumer perception as something to be inferred from linguistic categories rather than something to be measured or evaluated directly. In that sense, Bayou Grande may actually strengthen Vetements’ argument that the doctrine needs recalibration around actual consumer understanding, even as it undermines the claim that the Federal Circuit applies translation requirements too broadly.
The Evidentiary Requirements for Genericness and Descriptiveness
Beyond the doctrine-of-foreign-equivalents holding, the Bayou Grande decision offers an important example of evidentiary requirements. The Federal Circuit held that the Board’s genericness and descriptiveness findings lacked substantial evidence — because no café or coffee shop in the United States has ever sold kahwa tea. This fact was undisputed. At oral argument, counsel for the PTO conceded the point directly: “Q: You agree that there is no evidence that [kahwa] was sold in a café or coffee shop or tea shop? A: Yes, that’s right.” Without evidence that any American café actually sells kahwa tea, there was no basis to conclude that kahwa is a “key aspect” of café services, or indeed any aspect of those services. The fact that consumers might understand KAHWA to refer to Kashmiri green tea is “insufficient to establish genericness for cafés and coffee shops selling coffee and other kinds of tea.” The mere descriptiveness analysis followed the same evidentiary logic.
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I want to circle back to Kahwa and whether it means coffee in Arabic. Although the usual version is the phonetic equivalent Qahwa, the two are – according to the TM examiner – equivalent. Applicant had apparently made a prior admission that “The English translation of the word ‘KAHWA’ in the mark is ‘coffee'” — noting both its original African roots and its use in French slang. In its briefing though Bayou Grande argues otherwise. Although it is unclear, this issue may be raised by the USPTO on remand.
Vetements cert petition status and reply brief:
I wanted to circle back with an update: The Vetements cert petition is now fully briefed, with petitioner filing its reply on December 5, 2025. The Court will likely decide whether to grant review in January. In its reply, Vetements doubles down on the burden-shifting critique, arguing that the Federal Circuit has returned to an approach where foreign terms are translated as a first step rather than asking whether American consumers would actually perform that translation. The reply emphasizes that Census Bureau data shows less than one percent of Americans speak French at home, and characterizes the court’s reasoning as circular: the Federal Circuit found consumers would translate VETEMENTS “because the context is clothing and the proposed marks mean clothing.” As Vetements puts it, this “translate first” methodology predetermines the outcome by assuming knowledge of the translation before asking whether consumers would undertake one.
The reply brief also pushes back on the government’s policy argument that allowing registration would disadvantage American firms marketing clothing abroad. Vetements points out that the VETEMENTS mark has been registered for clothing in multiple English-speaking countries, including Great Britain, Australia, New Zealand, and Hong Kong.