IP Law Daily, TRADEMARK—E.D. Va.: ‘MOKE’ mark for electric vehicles and golf carts considered generic, (May 4, 2023)

By Brian Craig, J.D.

Consumers see the MOKE mark as synonymous with a style of vehicle.

The federal district court in Richmond, Virginia has concluded that the ‘MOKE” mark for electric vehicles and custom golf carts is generic. After a bench trial between competing makers of low-speed, open-air vehicles known colloquially as “Mokes,” the court concluded that neither party met their burden of showing that they are entitled to common law trademark protection to support their trademark infringement claims. Neither party put forth any evidence that consumers associate MOKE with their particular products and the court found consumers see the MOKE mark as synonymous with a generic style of vehicle (Moke America LLC v. American Custom Golf Cars, Inc., May 3, 2023, Novak, D.).

Both Moke America LLC and American Custom Golf Cars, Inc. make low-speed, open-air vehicles known colloquially as “Mokes.” American Custom Golf Cars, Inc., then known as Moke USA, LLC, filed an application with the USPTO to register the MOKE mark for vehicles. Moke America LLC file an opposition. In April 2020, the Trademark Trial and Appeal Board granted a motion to dismiss the proceeding finding lack of prior use of the mark.

Moke America appealed the Board’s decision, seeking de novo review under 15 U.S.C. §1701(b). American Custom Golf Cars filed a counter-claim. Both parties asserted claims for trademark infringement. The district court held a bench trial in January 2023. The trial focused on one narrow issue: which party owns the MOKE trademark. Following the bench trial, the court issued its decision. The court, which considered additional issues and new evidence, gave no deference to the Board’s decision.

Policy rationales. The court concluded that the policy rationales of trademark law do not support granting trademark protection to either party. The policy rationales for trademark law are: (1) protecting consumers against fakes and counterfeiters; and (2) safeguarding investments of time and money in building the goodwill associated with holders of the mark.

In this case, consumers largely direct goodwill toward the MOKE vehicles originally made by the British Motor Corporation, and others, not the vehicles produced by either party in this case. The British Motor Corporation, which originally made the vehicles, no longer exists. Consumers view the MOKE as a style reminiscent of the twentieth century MOKES. The parties offered no consumer surveys, no customer testimonials, and no news stories or trade journals evincing an associating between the MOKE mark and their vehicles. The court concluded both companies in this case are capitalizing on consumer goodwill that already exists, not goodwill they built. Both parties market their Mokes as imitations of a pre-existing product sharing the same name. Granting trademark protection to either party would itself give rise to customer confusion. Granting protection would incorrectly signal to consumers that the trademark holder serves as the exclusive source of MOKES.

Genericness. The court concluded that the MOKE mark is generic. Because the MOKE mark remains unregistered and both parties claim common law protection, both parties bear the burden of proof of their respective infringement claims. For common law trademark rights, each party must prove: (1) priority of use; and (2) a valid, protectable trademark.

Moke America asserted common law trademark rights by virtue of a 2016 assignment agreement with non-party Mini Mania, Inc., which began selling MOKE-branded parts in the 1970s. But the court largely ignored the priority issue and focused on whether the parties hold a valid, protectable trademark. The parties presented very little evidence of a valid mark and assumed the court would find the MOKE mark inherently distinctive. But the evidence suggests that consumers see the mark as synonymous with a style of vehicle. Neither party met their burden of showing they own a valid, protectable trademark. Neither party can maintain that they manufacture the “one true MOKE,” the court found. The court held that the MOKE mark, as used in connection with vehicles, is generic. Therefore, the court concluded that neither party can prevail on the respective trademark infringement claims.

The Case is No. 3:20-cv-00400-DJN-EWH.

Attorneys: John M. Neary (Akerman Senterfitt LLP) for Moke America LLC. Victor Kernus (Cantor Colburn LLP) for American Custom Golf Cars, Inc. and Moke USA, LLC.

Companies: Moke America LLC; American Custom Golf Cars, Inc.; Moke USA, LLC

Cases: Trademark USPTO VirginiaNews GCNNews