The Fourth Circuit’s recent decision in Moke America LLC v. Moke International Ltd. is a striking example of how trademark rights can be lost through genericide, a process where a once-distinctive mark becomes the common name for a type of product. The ruling, which vacates and remands the district court’s determination that “MOKE” is a generic term, highlights the challenges companies face in protecting brand identity when a name becomes widely associated with a product category rather than a single source.
Beyond its immediate impact on the competing manufacturers of low-speed, open-air vehicles, this case carries broader implications for brand owners. It underscores the importance of proactive trademark enforcement and brand education to prevent a mark from slipping into the public domain. Additionally, the case raises key procedural questions about evidentiary burdens in disputes over genericide, particularly when neither party asserts that a mark is generic.
Background and Procedural History
The dispute between Moke America LLC and Moke International Ltd. (along with its affiliated entity, Moke USA, LLC) centers on the U.S. rights to the name “MOKE,” a mark associated with a line of lightweight, open-air vehicles originally produced in the 1960s by the British Motor Corporation (BMC).
The controversy began when Moke International’s predecessor applied to register the MOKE mark with the U.S. Patent and Trademark Office (USPTO) in 2015. Moke America opposed the application, claiming it had superior rights based on its own prior use. After losing at the Trademark Trial and Appeal Board (TTAB) in 2020, Moke America appealed to the U.S. District Court for the Eastern District of Virginia under 15 U.S.C. § 1071(b), seeking de novo review. Both parties claimed ownership of the mark and asserted infringement counterclaims against each other.
During the litigation, both sides focused on proving priority of use, largely ignoring the fundamental question of whether MOKE was even a valid, protectable trademark. However, the district court raised this issue on its own initiative and ultimately found that MOKE had become generic, rendering it ineligible for trademark protection. The court’s reasoning relied heavily on the historical use of the term “Moke” to describe a type of vehicle rather than a specific brand.
Moke America appealed, arguing that the district court improperly placed the burden of proving non-genericness on the parties and relied on insufficient evidence to conclude that MOKE had lost its distinctiveness.
The Fourth Circuit’s Decision
The Fourth Circuit agreed with the district court’s decision to place the burden on the parties to prove that MOKE is not generic, reaffirming that those claiming trademark ownership must demonstrate that their mark is distinctive and protectable. However, it found that the record lacked sufficient evidence to determine definitively whether MOKE had undergone genericide.
The court emphasized that while a party challenging an existing trademark registration on genericness grounds bears the burden of proof (as seen in prior cases like Interprofession du Gruyere v. U.S. Dairy Export Council), in disputes over unregistered marks, the claimant must establish validity—including non-genericness. However, since neither party had initially raised the issue, the evidentiary record was underdeveloped.
As a result, the Fourth Circuit vacated the district court’s ruling and remanded the case for further proceedings, instructing the lower court to allow additional evidence on whether MOKE retains its trademark significance or has, in fact, become a generic term for a category of vehicles.
Future Implications and Takeaways
This decision serves as a cautionary tale for brand owners. It underscores the need to actively manage a trademark’s public perception to prevent genericide. Companies with marks that have the potential to become generic (e.g., describing a type of product rather than a specific brand) must take proactive steps, including:
- Educating consumers: Reinforcing that the mark identifies a particular source, not just a product category.
- Policing usage: Preventing competitors and the media from using the mark generically.
- Using trademark notices: Ensuring consistent branding with ® or ™ symbols.
- Conducting consumer surveys: Gathering evidence that the public associates the mark with a single source.
The Moke case also highlights the importance of addressing all elements of trademark validity in litigation—not just priority of use. As courts increasingly scrutinize whether marks function as source identifiers, parties cannot afford to overlook the distinctiveness inquiry.
For now, Moke America LLC v. Moke International Ltd. remains unresolved, but the Fourth Circuit has provided a roadmap for how the district court must proceed. The next round of litigation will likely focus on whether MOKE remains protectable or has, through decades of public use, lost its trademark significance entirely.