Last week, the U.S. Court of Appeals for the Fourth Circuit issued an opinion in Moke Am. LLC v. Moke Int'l Ltd., No. 23-1634 (Jan. 15, 2025), vacating and remanding the district court’s finding that MOKE is a generic term.
From the early 1960s to 1993, now-defunct British Motor Corporation sold approximately 50,000 vehicles colloquially referred to as “Mokes” in the UK, Australia, and Portugal. By 1988, there was a meaningful secondary market for Mokes in the US. Moke International Limited and Moke USA, LLC began selling vehicles bearing the MOKE mark in the US in 2015 and sought registration at the PTO. Moke America LLC opposed registration claiming ownership of MOKE based on priority of use in selling its own vehicles in the US. After the dismissal of its opposition to the proposed registration of MOKE by the TTAB, Moke America filed a lawsuit against Moke International and Moke USA seeking a declaration of trademark ownership and trademark infringement. Moke International and Moke USA counterclaimed for affirmance of the TTAB decision, a declaration of trademark ownership, and trademark infringement.
The district court found that both parties claiming ownership of the mark bore the burden of proving distinctiveness even though the parties expressly agreed that the MOKE mark is distinctive and not generic. After finding both parties failed to prove distinctiveness, the district court found adequate evidence in the record that MOKE was once inherently distinctive but became generic before either party sold a vehicle bearing the MOKE mark. The parties appealed.
The Fourth Circuit vacated and remanded. The Court found the district court properly placed the burden on both parties to prove MOKE is not a generic term. Additionally, the Court rejected the parties’ assertion that the district court was obligated to accept their stipulation as to distinctiveness, finding the assertion incompatible with the court’s role of protecting third-party interests by preventing generic terms from being removed from the public “linguistic commons.” However, the Court vacated the district court’s finding of genericness because the evidence of record was inadequate to resolve whether MOKE is a generic mark or an abandoned, inherently distinctive mark. Specifically, the Court noted that abandonment of an inherently distinctive mark does not necessarily lead to genericide, and important questions remained, including how potential customers perceive the MOKE mark, that required additional evidence such as purchaser testimony, consumer surveys, dictionaries, and publications.
