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Generic trademark finding dooms infringement claims

Virginia Lawyers Weekly//May 14, 2023

Generic trademark finding dooms infringement claims

Virginia Lawyers Weekly//May 14, 2023

Where parties disputed who was entitled to use the “MOKE” mark, but the court found that the mark had acquired generic status, neither party could prevail on their respective claims for infringement claim because they could not show trademark ownership.


The instant suit, before the court on appeal from the Trademark Trial and Appeal Board, or TTAB, sounds in trademark law. The parties, both dealers in low-speed, open-air electric vehicles, compete for the United States rights to the “MOKE” mark. The claims and counterclaims in the case mirror each other, as both plaintiff and defendants seek (1) review of the TTAB’s decision below, (2) a declaration of trademark ownership and (3) a judgment against their counterpart for trademark infringement. Before the court are the parties’ cross-motions for judgment on partial findings pursuant to Fed. R. Civ. P. 52(c).


The commercial context surrounding the parties’ use of the MOKE mark informs the court’s finding that the MOKE mark is not fanciful, arbitrary or suggestive. Rather, the existence of nearly identical products bearing the same mark and referred to by the same name – products that the parties themselves explicitly reference when marketing their own vehicles – leads the court to a finding that the MOKE mark proves generic when used in connection with the parties’ “Mokes.” The mark therefore falls beyond the ambit of trademark protection.

Even if the court found the MOKE mark descriptive, however, the outcome of the parties’ dispute would not change. Neither side proffered evidence that the MOKE mark possesses secondary meaning in its hands. Because neither side has shown secondary meaning, neither side would have carried their burden to demonstrate ownership of the mark even if it were descriptive. In the absence of an ownership showing from either party, the court would resolve all six counts in a fashion identical to the resolution laid out in the forthcoming pages, as the lack of common law ownership on both sides drives the result as the case currently stands.


The court’s finding that the MOKE mark proves generic as applied to the parties’ vehicles carries with it several implications. First and foremost, the court modifies its Feb. 27 memorandum scheduling order, pursuant to Rule 54(b), to state that it finds the MOKE mark generic, as opposed to descriptive.

Concerning plaintiff’s actions for a declaration of trademark ownership and trademark infringement, without demonstrating ownership rights to the contested mark, plaintiff cannot prevail in a trademark infringement action or receive a declaratory judgment of trademark ownership. As to plaintiff’s appeal of the TTAB’s April 2020 opinion, however, the court reverses the TTAB. MOKE is a generic term, and plaintiff’s opposition to defendants’ pending registration therefore proves meritorious to the extent that either the TTAB or the examining attorney found the MOKE mark registrable in connection with defendants’ vehicles. The court thus finds for plaintiff and against defendant on this claim.

Like plaintiff, defendants cannot plausibly assert trademark ownership rights in a generic term, and the court therefore must enter judgment against defendants to the extent they seek a declaration of trademark ownership rights to the MOKE mark. To the extent defendant’s counterclaims seeks a declaration of non­infringement, however, the court will enter judgment for defendants.

Finally, regarding defendants’ counterclaim for trademark infringement, because the court finds that the MOKE mark is generic as it concerns both parties’ vehicles, the court will grant plaintiff’s motion for judgment on partial findings and enter judgment against defendants as to their claim for trademark infringement. Defendants cannot prevail on their infringement claim without showing trademark ownership, which is an impossible showing with respect to a generic mark.

Moke America LLC v. American Custom Golf Cars Inc., Case No. 3:20-cv-400, May 3, 2023. EDVA at Richmond (Novak). VLW 023-3-240. 47 pp.

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