In a case being watched by trademark practitioners and brand owners, alike, Moke America LLC and Moke International Limited continue their legal battle over the rights to the “MOKE” trademark – a name that has become synonymous with a niche line of low-speed, open-air vehicles. The case, which got its start in June 2020 and has since landed before the Fourth Circuit Court of Appeals, highlights the complex interplay between trademark validity, “genericide,” and the burden of proof under U.S. trademark law.
Moke America LLC and Moke International Limited are battling over who has the legitimate right to use the MOKE mark in the United States. Both parties sell vehicles styled after the original British Mini Moke, a 1960s-era car designed for military use but later embraced as a quirky, beach-friendly utility vehicle. The court’s central task? Deciding whether “MOKE” is a valid trademark or a generic term for a class of vehicles.
At the heart of the case is the principle that a term (logo, product configuration, color, sound, etc.) must serve as an indicator of source rather than a generic mark describing a product type in order to operate – and be protected – as a trademark. Judge Robert King, writing for the majority in the U.S. Court of Appeals for the Fourth Circuit, affirmed the lower court’s decision to vacate and remand on the grounds that more evidence was needed to determine whether the MOKE mark is distinctive or not.
A judge for the U.S. District Court for the Eastern District of Virginia initially concluded that “MOKE” had undergone “genericide,” a process where a once-distinctive trademark becomes synonymous with a general product category. The district court’s findings included …
> Historical Usage: The original Mini Moke vehicles, introduced in the 1960s, gained widespread recognition as “Mokes,” irrespective of the manufacturer;
> Marketing Strategy: Both parties market their vehicles as updated versions of these iconic cars, drawing on the public’s pre-existing familiarity with the term “MOKE”; and
> Absence of Consumer Evidence: Neither party presented consumer surveys or substantial evidence to prove that the MOKE mark identifies a specific source.
The district court emphasized the potential consequences of granting trademark rights to “MOKE,” stating that such a decision could exclude other manufacturers, including smaller players, from using a term that has arguably entered the public domain. Moreover, the court noted that granting exclusivity might confuse consumers, as both parties in the case at hand position their products as tributes to the original Mini Moke.
The Fourth Circuit’s Decision & Dissent
In its January 15 opinion, the Fourth Circuit vacated the district court’s ruling, citing insufficient evidence to affirm or reverse the finding of genericness. The Fourth Circuit’s panel stressed that the parties bore the burden of proving that “MOKE” is not generic and that more robust evidence – such as consumer surveys, trade usage, and public perception – is required for the court to make an appropriate determination on the matter.
In a dissent, Circuit Judge Richardson argued, among other things, that the district court’s finding that “MOKE” is generic is supported by sufficient evidence in the record. He emphasized that the historical usage of “MOKE” as a term associated with the original Mini Moke vehicles from the 1960s and its continued usage by the parties as a descriptor for a style of vehicle demonstrate the generic nature of the term. He also pointed out that consumer surveys and additional testimony, while helpful, are not legally required to prove genericness when other compelling evidence is present.
Also taking on the issue of residual goodwill, Judge Richardson stated that both parties’ reliance on the goodwill associated with “MOKE” that is rooted in the legacy of the vehicles originally manufactured by the British Motor Corporation undercuts the claim that either party can assert exclusive trademark rights over “MOKE.” On this front, he agreed with the district court’s conclusion that trademark law does not protect parties seeking to appropriate historical goodwill without creating new, source-identifying goodwill tied specifically to their own products.
Implications for Brand Owners
The MOKE case underscores the high stakes involved in proving a trademark’s distinctiveness. Brand owners seeking to enforce trademarks – especially those rooted in iconic or historic products – must navigate the challenges of genericide and ensure they present compelling evidence to establish their claims. Consumer surveys, brand recognition studies, and careful marketing strategies will play pivotal roles in such disputes.
As the case heads back to the lower court, the trademark community will watch closely, recognizing that the outcome could be meaningful for marks that straddle the line between brand identifiers and public vernacular.
The case is Moke America LLC v. American Custom Golf Cars, Inc., 3:20-cv-00400 (E.D. VA).
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