Fourth Circuit Holds Additional Evidence Needed to Determine Whether “MOKE” is Generic

The Fourth Circuit recently vacated and remanded a finding that the term MOKE is generic for certain low-speed, open-air vehicles. This case originated in the Trademark Trial and Appeal Board (“TTAB”) where Moke America LLC filed a notice of opposition against Moke International and Moke USA’s application to federally register the mark MOKE for vehicles in the USPTO, based on priority and likelihood of confusion. The TTAB dismissed the opposition, and Moke America appealed to the U.S. District Court for the Eastern District of Virginia.

In the district court, the parties asserted competing trademark ownership and trademark infringement claims regarding the mark MOKE for their vehicles. At the close of Moke America’s case-in-chief, Moke International and Moke USA moved for judgment on partial findings. In its opposition to that motion, Moke America argued for the first time that the term MOKE is descriptive and therefore only protectable upon a showing of acquired distinctiveness. The court then ordered post-trial briefing on the issue. After numerous rounds of post-trial briefing, the parties ultimately agreed that MOKE is inherently distinctive.

The district court, however, found that while MOKE was once an inherently distinctive term for the parties’ vehicles, it became generic though the process of “genericide.” The parties cross-appealed, and the Fourth Circuit found that while the district court properly placed the burden on the parties to prove that MOKE is not a generic term for their vehicles, the evidentiary record was inadequate to resolve the issue.

The Fourth Circuit explained it “is well-established that a party claiming ownership of an unregistered trademark bears the burden of proving that it owns a valid and protectable mark,” and showing that a mark is valid and protectable requires showing that it is distinctive. Therefore, as both parties claimed trademark rights in the unregistered mark MOKE, both were required to prove the term is distinctive for their own vehicles. The parties argued on appeal that because neither of them asserted that MOKE was a generic term, neither bore any burden to prove non-genericness. But the Fourth Circuit disagreed, explaining that while the parties essentially stipulated that MOKE is an inherently distinctive mark, that was not dispositive because “a district court need not accept stipulations between parties.”

The Fourth Circuit held that the district court did not have enough evidence to make a proper finding regarding MOKE’s genericness or distinctiveness. The Court reasoned that there is some evidence that MOKE has become generic through genericide, but that there is also evidence that MOKE is and always has been inherently distinctive. Thus, the Court vacated and remanded the case to determine this issue.

U.S. Circuit Judge Julius N. Richardson dissented, finding that while he agrees a party asserting trademark infringement must show the asserted mark is distinctive, “the record is clear and uncontroverted: ‘Moke’ is a distinctive mark.”