USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 1 of 68

PUBLISHED

UNITED STATES COURT OF APPEALS FOR THE FOURTH CIRCUIT

No. 23-1634

MOKE AMERICA LLC, a New York limited liability company,

Plaintiff – Appellee,

v.

MOKE INTERNATIONAL LIMITED,

Counter Claimant – Appellant,

and

AMERICAN CUSTOM GOLF CARS, INC., a California corporation; MOKE USA, LLC, a Delaware limited liability company,

Defendants,

and

BLACK AND WHITE CORPORATIONS I-X; ABC PARTNERSHIPS I-X; JOHN AND JANE DOES I-X; DANIELS INDUSTRIES, LLC, an Ohio limited liability company; ANTOINE VERGLAS, INC., a New York corporation,

Third Party Defendants.

No. 23-1675

MOKE AMERICA LLC, a New York limited liability company,

Plaintiff – Appellant, USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 2 of 68

v.

MOKE INTERNATIONAL LIMITED,

Counter Claimant – Appellee,

and

MOKE USA, LLC, a Delaware limited liability company,

Defendant – Appellee,

and

AMERICAN CUSTOM GOLF CARS, INC., a California corporation,

Defendant,

and

BLACK AND WHITE CORPORATIONS I-X; ABC PARTNERSHIPS I-X; JOHN & JANE DOES I-X; DANIELS INDUSTRIES, LLC, an Ohio limited liability company; ANTOINE VERGLAS, INC., a New York corporation,

Third Party Defendants.

No. 23-1720

MOKE AMERICA LLC, a New York limited liability company,

Plaintiff – Appellee,

v.

MOKE USA, LLC, a Delaware limited liability company,

Defendant – Appellant,

and

2 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 3 of 68

AMERICAN CUSTOM GOLF CARS, INC., a California corporation,

Defendant,

MOKE INTERNATIONAL LIMITED,

Counter Claimant,

and

BLACK AND WHITE CORPORATIONS I-X; ABC PARTNERSHIPS I-X; JOHN & JANE DOES I-X; DANIELS INDUSTRIES, LLC, an Ohio limited liability company; ANTOINE VERGLAS, INC., a New York corporation,

Third Party Defendants.

Appeals from the United States District Court for the Eastern District of Virginia, at Richmond. David J. Novak, District Judge. (3:20-cv-00400-DJN-EWH)

Argued: May 8, 2024 Decided: January 15, 2025

Before KING and RICHARDSON, Circuit Judges, and Gina M. GROH, United States District Judge for the Northern District of West Virginia, sitting by designation.

Vacated and remanded by published opinion. Judge King wrote the majority opinion, in which Judge Groh joined. Judge Richardson wrote a dissenting opinion.

ARGUED: Craig S. Mende, FROSS ZELNICK LEHRMAN & ZISSU, P.C., New York, New York, for Appellant/Cross-Appellee. Ryan C. Williams, AKERMAN LLP, Chicago, Illinois, for Appellee/Cross-Appellant. ON BRIEF: Andrew Nietes, FROSS ZELNICK LEHRMAN & ZISSU, P.C., New York, New York; Maya M. Eckstein, Trevor S. Cox, HUNTON ANDREWS KURTH LLP, Richmond, Virginia, for Appellant/Cross-Appellee. David S. Brafman, J. Andre Cortes, Mark D. Passler, AKERMAN LLP, West Palm Beach, Florida, for Appellee/Cross-Appellant.

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KING, Circuit Judge:

The parties to these cross-appeals from the Eastern District of Virginia — on one

side, Moke America LLC, and on the other, related entities Moke International Limited

and Moke USA, LLC — are competing for the United States trademark rights to the

“MOKE” mark adorning the similar low-speed, open-air vehicles that they each sell. 1

Below, for example, is an image of one of their vehicles provided by Moke International

and Moke USA to the district court.

Although the parties are adversaries, their cross-appeals equally contest the district

court’s primary finding: that MOKE is a generic term for the parties’ vehicles, meaning

that it cannot be a trademark and cannot be owned by either party or anyone else. The

court rendered the genericness finding in its Memorandum Opinion of May 3, 2023, setting

forth findings of fact and conclusions of law following a truncated bench trial and multiple

1 Like the district court, we sometimes allude to there being two parties. When we do so, we are referring to one party being Moke America and the other being Moke International and Moke USA. There were, however, additional parties to the district court proceedings, including another party aligned with Moke International and Moke USA by the name of American Custom Golf Cars, Inc.

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rounds of post-trial briefing. See Moke Am. LLC v. Am. Custom Golf Cars, Inc.,

(E.D. Va. 2023) (the “Opinion”). Upon consideration of the genericness

finding, we are unable to either affirm or outright reverse it. Simply put, because the issue

of genericness emerged only after the trial’s conclusion — and because neither party took

the position that MOKE is a generic term or seriously endeavored to prove otherwise —

there is a dearth of relevant evidence in the record. Accordingly, we vacate and remand

for further proceedings.

I.

A.

We begin, as the district court did in its Opinion of May 2023, by outlining the

pertinent principles of trademark law. See Moke, 671 F. Supp. 3d at 677-79. It is helpful

to do so because the “procedural background of this case is best digested with an

understanding of the legal context in which the case arises.” Id. at 677.

1.

Of utmost significance here, to qualify as a valid and protectable trademark, a

designation “must be used to identify the source of the goods to potential customers.” See

George & Co. v. Imagination Ent. Ltd.,

(4th Cir. 2009) (citing

MicroStrategy Inc. v. Motorola, Inc.,

(4th Cir. 2001)). That is, the

“designation must perform the job of identification: to identify one source and distinguish

it from other sources.” See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair

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Competition § 3:4 (5th ed. May 2024 Update); see also MicroStrategy,

(same).

Unless a designation is “distinctive” within the meaning of trademark law, it does

not perform the job of identification and thus cannot be “a legally protectable ‘mark.’” See

1 McCarthy, supra, § 4:13. In simple terms, “No distinctiveness — no validity — no

mark.” Id.

As we have recognized, there are three types of marks that “are considered

inherently distinctive and therefore valid without the holder having to make any other

showing.” See OBX-Stock, Inc. v. Bicast, Inc.,

(4th Cir. 2009). Those

three types are “arbitrary,” “fanciful,” and “suggestive.”

In that order, “‘arbitrary’

marks are based on existing words used in ways unconnected with their common meaning,

such as APPLE computer or SHELL gasoline.”

“‘Fanciful’ marks are made-up words

that are invented to describe the product or source, such as KODAK or EXXON.”

And

“suggestive” marks are those that “connote, without describing, some quality, ingredient,

or characteristic of the product, such as L’EGGS pantyhose and GLASS DOCTOR window

repair.”

(internal quotation marks omitted).

Another type of mark is “descriptive.” See OBX-Stock,

.

“‘Descriptive’ marks merely describe a function, use, characteristic, size, or intended

purpose of the product, such as YELLOW PAGES telephone directories and 5 MINUTE

glue.”

(internal quotation marks omitted). Although a descriptive mark is not

inherently distinctive, it is eligible for protection if it has “acquired a ‘secondary

meaning.’” See Sara Lee Corp. v. Kayser-Roth Corp.,

(4th Cir. 1996).

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A descriptive mark has secondary meaning “if in the minds of the public, the primary

significance of [the mark] is to identify the source of the product rather than the product

itself.”

(internal quotation marks omitted).

Finally, there are “generic” terms — often the common name of the product itself

— which always lack distinctiveness and therefore “can never be trademarks.” See Sara

Lee,

; see also Ashley Furniture Indus., Inc. v. SanGiacomo N.A. Ltd.,

(4th Cir. 1999) (“A generic mark refers to the genus or class of which a

particular product is a member and can never be protected.”). “Examples of brand names

held to be ‘generic’ terms are CONVENIENT STORE retail stores, DRY ICE solid carbon

dioxide, and LIGHT BEER ale-type beverages.” See Sara Lee,

(cleaned

up). Importantly, by withholding validity and protectability from generic terms, the law of

trademarks “protects for public use those commonly used words and phrases that the public

has adopted, denying to any one competitor a right to corner those words and phrases by

expropriating them from the public ‘linguistic commons.’” See Am. Online, Inc. v. AT&T

Corp.,

(4th Cir. 2001).

It is also important that, through a process sometimes called “genericide,” marks

that begin as inherently distinctive may become generic as a result of the public’s pervasive

use of them. See Am. Online,

. Specifically, “[w]hen a trademark ceases

to identify in the public’s mind the particular source of a product or service but rather

identifies a class of product or service, regardless of source, that mark has become generic

and is lost as an enforceable trademark.” See Glover v. Ampak, Inc.,

(4th

Cir. 1996). Prominent examples of marks that have undergone genericide include

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THERMOS, ASPIRIN, CELLOPHANE, and ESCALATOR. See Am. Online,

.

2.

As for trademark ownership, such ownership is acquired at common law “by actual

use of the mark in a given market.” See Emergency One, Inc. v. Am. Fire Eagle Engine

Co.,

(4th Cir. 2003). Under the basic rules of trademark priority,

ownership is premised on priority of use, such that “the party claiming ownership must

have been the first to actually use the mark in the sale of goods or services.”

(internal

quotation marks omitted). “The party claiming ownership must also use the mark as a

trademark,” i.e., “the mark must be used to identify the source of the goods to potential

customers.” See George & Co.,

. “Thus, so long as a person is the first to

use a particular mark to identify his goods in a given market, and so long as that owner

continues to make use of the mark, he is entitled to prevent others from using the mark to

describe their own goods in that market.”

(internal quotation marks omitted).

Notably, “a party can become a senior user of a mark by acquiring from a previous

owner an assignment of rights.” See RXD Media, LLC v. IP Application Dev. LLC,

(4th Cir. 2021). Moreover, “[t]he priority to use a mark . . . can be lost

through abandonment.” See Emergency One,

. “Once abandoned, a mark

may be seized immediately and the person doing so may establish priority of use and

ownership under the basic rules of trademark priority.”

(alteration and internal

quotation marks omitted).

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3.

Pursuant to the Lanham Act, the United States Patent and Trademark Office (the

“PTO”) administers a federal registration system for trademarks. See Iancu v. Brunetti,

(2019) (citing

). Although such registration

“is not mandatory,” it “gives trademark owners valuable benefits.” Id. at 391. For

example, registration constitutes “prima facie evidence of the validity of the registered

mark and of the registration of the mark, [and] of the registrant’s ownership of the mark.”

See

(a). But see Emergency One,

(cautioning that “[t]o

acquire ownership of a trademark it is not enough to have invented the mark first or even

to have registered it first” (internal quotation marks omitted)).

Registration decisions are made by PTO examining attorneys, subject to review by

the agency’s Trademark Trial and Appeal Board (the “TTAB”). See Iancu,

. In a registration proceeding, if there is a question as to whether the proposed mark is

a generic term, “the PTO always bears the burden of proving genericness.” See In re

Cordua Rests., Inc.,

(Fed. Cir. 2016). “When the PTO believes that an

applicant’s mark is entitled to registration, it publishes the mark” and thereby “gives other

interested parties the opportunity to oppose registration.” See Xactware Sols., Inc. v.

Buildxact Software Ltd.,

(4th Cir. 2024).

If another party opposes registration, the “[o]pposition is referred to the [TTAB] ‘to

determine and decide the respective rights of registration.’” See Xactware Sols.,

(quoting

(a)); see also Rosenruist-Gestao E Servicos LDA v. Virgin

Enters. Ltd.,

, 443 n.4 (4th Cir. 2007) (explaining that an opposition

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“proceeding before the TTAB is an adversarial action between parties regarding the

registrability of a proposed trademark”). In an opposition proceeding, “[t]he party

opposing registration bears the burden of proof.” See B&B Hardware, Inc. v. Hargis

Indus., Inc.,

, 144 (2015).

Instead of being an opposition proceeding, an adversarial action before the TTAB

regarding a mark’s registrability may be a cancellation proceeding, wherein a party seeks

to cancel its adversary’s existing registration of a mark. See

(a);

Rosenruist-Gestao,

n.4. In a cancellation proceeding, the party seeking to

cancel a mark’s registration bears the burden of proof and must overcome the presumptions

of the mark’s validity, the registration’s validity, and the registrant’s ownership of the

mark. See Cold War Museum, Inc. v. Cold War Air Museum, Inc.,

(Fed. Cir. 2009).

4.

Under

(b), “[a] party who is dissatisfied with [a TTAB] decision

may ‘have a remedy by a civil action’ by filing a suit in district court.” See Xactware Sols.,

(quoting

(b)(1)); see also Swatch AG v. Beehive

Wholesale, LLC,

(4th Cir. 2014) (explaining that a § 1071(b) action is

an alternative to a § 1071(a) appeal of the TTAB decision to the U.S. Court of Appeals for

the Federal Circuit). Rather than being an appeal, a § 1071(b) action “is a wholly separate

suit, where new evidence is allowed and (in cases where new evidence is introduced) a de

novo standard governs.” See Xactware Sols.,

. In a § 1071(b) action,

“[t]he district court has authority independent of the PTO to grant or cancel registrations

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and to decide any related matters such as infringement . . . claims.” See Swatch,

.

An infringement claim may concern either a registered trademark, see

(1), or an unregistered trademark, see

§ 1125(a). And infringement claims —

along with claims involving registrability and ownership issues — may be pursued in

district court actions under Lanham Act provisions other than § 1071(b). See, e.g., Glover,

(in non-§ 1071(b) district court action following registration of

trademarks, plaintiff registrant sued defendant for trademark infringement and defendant

counterclaimed for cancellation of plaintiff’s registrations).

Insofar as a party to a § 1071(b) or other district court action is opposing a new

registration or seeking to cancel an existing registration, that party generally bears the

burden of proof. See Interprofession du Gruyere v. U.S. Dairy Exp. Council,

(4th Cir. 2023); Glover,

. In the district court, a party opposing a new

registration or seeking to cancel an existing registration on genericness grounds bears the

burden of proving genericness by a preponderance of the evidence.

Where a district court action concerns the registrability or ownership of a registered

trademark, the registrant enjoys the rebuttable presumptions of the mark’s validity, the

registration’s validity, and the registrant’s ownership of the mark. See Emergency One,

; Glover,

. But where a district court action concerns

ownership of an unregistered trademark, any party claiming ownership bears the burden of

proving that it owns a valid and protectable mark. See Emergency One,

.

A claim that an unregistered trademark has been infringed requires the plaintiff to show

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that it owns a valid and protectable mark, plus that the alleged infringer’s use of the mark

creates a likelihood of consumer confusion. See Variety Stores, Inc. v. Wal-Mart Stores,

Inc.,

(4th Cir. 2018). Those showings must be made by a preponderance

of the evidence. See Ga. Pac. Consumer Prods., LP v. von Drehle Corp.,

(4th Cir. 2010).

Of course, a showing of ownership of a valid and protectable mark requires proof

of both priority of use and the mark’s distinctiveness. See TBL Licensing, LLC v. Vidal,

(4th Cir. 2024) (summarizing that “[t]he first to use the distinctive mark

acquires rights to that mark, including the right to prevent others from using it”). With

respect to non-genericness, this Court has recognized that a party claiming trademark

infringement bears the burden of proving non-genericness when the alleged infringer

claims genericness as a defense. See Ale House Mgmt., Inc. v. Raleigh Ale House, Inc.,

, 140 (4th Cir. 2000). But we have not specified who, if anyone, bears the

burden of proving non-genericness when two parties vie for ownership of an unregistered

trademark and thus neither takes the position that the proposed mark is actually a generic

term.

B.

Having outlined the foregoing legal principles, we turn to the procedural

background of this case, up to the district court’s Opinion of May 2023. We limit this

account to the details germane to our decision to vacate and remand. A fuller history is

provided in the Opinion. See especially Moke, 671 F. Supp. 3d at 679-86, 699-700. Even

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that account, however, is somewhat circumscribed, as the procedural background of this

case is sizable and complex.

1.

To start, in August 2015, another entity related to Moke International and Moke

USA asserted ownership of the MOKE mark and applied for its registration with the PTO. 2

The PTO published the MOKE mark in late 2016, prompting Moke America to file a notice

of opposition to the proposed registration. Therein, Moke America claimed that it is the

owner of the MOKE mark based on priority of use. Several years of proceedings before

the TTAB ensued, culminating in the TTAB’s dismissal of Moke America’s opposition by

a decision of April 2020. Notably, no question of genericness was raised in the PTO

proceedings by the PTO examining attorney. Moreover, the TTAB decision left pending

the registration application benefiting Moke International and Moke USA, such that the

MOKE mark has remained unregistered.

Moke America turned to the district court for relief from the TTAB decision,

initiating this civil action in June 2020 pursuant to

(b). Relevant here, in

addition to requesting reversal of the TTAB decision, Moke America has sought a

declaration of its trademark ownership and asserted a trademark infringement claim against

Moke International and Moke USA. By their counterclaims, Moke International and Moke

2 The entity that applied for registration of the MOKE mark in August 2015 is American Custom Golf Cars, see supra note 1, which assigned its interests in the MOKE mark to Moke USA in June 2019. In turn, Moke USA assigned the same interests to Moke International in April 2021.

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USA have advocated affirmance of the TTAB decision, sought a declaration of their

trademark ownership, and alleged that Moke America has engaged in trademark

infringement. In other words, beyond their dispute over whether the TTAB decision should

be affirmed or reversed, the parties have advanced in the district court competing trademark

ownership and trademark infringement claims, obliging each of them to prove its

ownership of a valid and protectable mark. As such, each party must prove not only priority

of use, but also the MOKE mark’s distinctiveness. Additionally, the trademark

infringement claims necessitate a showing by each party that the other party’s use of the

MOKE mark creates a likelihood of consumer confusion.

As authorized in a § 1071(b) action, the district court accepted new evidence from

the parties and conducted a de novo review of their dispute. Prior to the court’s bench trial,

the parties agreed that the sole issue as to their competing trademark ownership and

trademark infringement claims is priority of use, i.e., which of them first used MOKE as a

trademark in the sale of goods. The parties ignored the question of the MOKE mark’s

distinctiveness, and they agreed that the use of MOKE by whichever of them is not the

mark’s owner creates a likelihood of consumer confusion.

The bench trial proceeded accordingly and began in late January 2023. On the trial’s

first day, at the close of Moke America’s case-in-chief, Moke International and Moke USA

moved for judgment on partial findings under Federal Rule of Civil Procedure 52(c) based

on Moke America’s failure to demonstrate its priority of use by a preponderance of the

evidence. See Fed. R. Civ. P. 52(c) (providing, inter alia, that “[i]f a party has been fully

heard on an issue during a nonjury trial and the court finds against the party on that issue,

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the court may enter judgment against the party on a claim or defense that, under the

controlling law, can be maintained or defeated only with a favorable finding on that issue”).

Having determined that Moke America indeed failed to prove its priority of use, and relying

on Moke America’s “pretrial representations that a finding against it regarding priority of

use would resolve all claims and counterclaims,” the court resolved to rule against Moke

America on all three of its claims and to rule in favor of Moke International and Moke

USA on two of their three counterclaims — all but their counterclaim for trademark

infringement. See Moke, 671 F. Supp. 3d at 683-84.

As further explained below, the district court “reserved judgment” as to the

trademark infringement counterclaim because of a “last-minute argument” made by Moke

America in opposition to its adversaries’ Rule 52(c) motion. See Moke, 671 F. Supp. 3d at

684. That argument called into question the MOKE mark’s distinctiveness.

Later that same day, the district court entered a written order granting Moke

International and Moke USA’s Rule 52(c) motion based on Moke America’s failure to

prove its priority of use; directing post-trial briefing on the proper resolution of the

trademark infringement counterclaim; and announcing the court’s rulings on the five other

claims and counterclaims. In the circumstances, however, the court delayed issuing its

findings of fact and conclusions of law as to those five claims and counterclaims. See Fed.

R. Civ. P. 52(c) (specifying that “[a] judgment on partial findings must be supported by

findings of fact and conclusions of law as required by Rule 52(a) [generally requiring

findings of fact and conclusions of law in bench trials]”).

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2.

Again, prior to the January 2023 bench trial, the parties had ignored the question of

the MOKE mark’s distinctiveness. That is, they had never “mentioned the category of

mark — fanciful, arbitrary, suggestive, descriptive or generic — into which the MOKE

mark falls.” See Moke, 671 F. Supp. 3d at 680. But in its Rule 52(c) argument at trial,

Moke America asserted that the district court’s adverse priority-of-use determination was

premised on an implicit finding that — rather than being fanciful, arbitrary, or suggestive

and thus inherently distinctive and presumptively valid and protectable — the MOKE mark

is descriptive and therefore eligible for trademark protection only with proof of secondary

meaning. Under Moke America’s theory, the court could not rule in favor of Moke

International and Moke USA on their trademark infringement counterclaim unless and until

they demonstrated secondary meaning, i.e., that in the minds of the public, the primary

significance of the MOKE mark is to identify Moke International and Moke USA as the

source of the MOKE-adorned vehicles. 3

3 In brief, to prove priority of use at trial, Moke America relied on evidence that it had acquired ownership in the MOKE mark from a nonparty entity named Mini Mania, Inc., which had allegedly used MOKE as a trademark in the sale of goods — vehicle replacement parts — since at least the late 1980s. As part of its adverse priority-of-use determination, however, the district court found that Mini Mania’s use of the MOKE mark did not qualify as trademark use. Specifically, the court “found as a matter of fact that Mini Mania had used the MOKE mark to describe the nature of its products, not to identify their provenance.” See Moke, 671 F. Supp. 3d at 683. From there, Moke America asserted in its Rule 52(c) argument that the court “had found not only that Mini Mania used the MOKE mark descriptively, but further, that the MOKE mark was itself a descriptive trademark.” Id. at 684. And thus, according to Moke America, its adversaries were obliged to demonstrate secondary meaning and “could not prevail on their trademark infringement (Continued) 16 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 17 of 68

Thereafter, the post-trial brief of Moke America reiterated the position it had

advanced at trial, while Moke International and Moke USA’s post-trial briefs “largely

sidestepped the issue of the MOKE mark’s distinctiveness.” See Moke, 671 F. Supp. 3d at

684. Upon consideration of those briefs, the district court raised the question of

genericness and whether the MOKE mark wholly lacks distinctiveness and therefore is

invalid and unprotectable, advising the parties during a status conference in late February

2023 “that there existed a ‘pretty compelling argument’ that the MOKE mark is generic.”

Id. at 685 (citation omitted).

The district court nonetheless went on to agree with Moke America that implicit in

the court’s priority-of-use determination under Rule 52(c) “was its finding that the MOKE

mark is descriptive.” See Moke, 671 F. Supp. 3d at 685. The court thus ordered that the

bench trial would resume so that Moke International and Moke USA could present

evidence as to secondary meaning. The court further ordered, however, that there would

first be a second round of post-trial briefing, in which Moke International and Moke USA

“were to make their position as to the MOKE mark’s typology — whether descriptive or

otherwise — explicit.” Id.

In their second-round post-trial brief, Moke International and Moke USA disputed

the proposition that the district court’s priority-of-use determination was premised on an

implicit finding that the MOKE mark is descriptive. Moke International and Moke USA

counterclaim without first demonstrating that consumers associated the MOKE mark with [the adversaries’] vehicles.” Id.

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therefore argued that they were not required to show secondary meaning in order to prevail

on their trademark infringement counterclaim, and they informed the court “that they

intended to present no further evidence as to secondary meaning or the MOKE mark’s

distinctiveness more broadly.” See Moke, 671 F. Supp. 3d at 685. Moke International and

Moke USA also insisted that the court “needed no further evidence concerning

distinctiveness, because the MOKE mark is arbitrary, i.e., inherently distinctive, and thus

presumptively valid and protectable.” Id. 4

Because of Moke International and Moke USA’s disinclination to present further

evidence, the district court decided in mid-March 2023 not to resume the bench trial after

all. Around the same time, the court ordered third and fourth rounds of post-trial briefing.

For the third round, the court directed the parties to address the question of genericness and

the import of this Court’s decision of early March 2023 in Interprofession du Gruyere v.

U.S. Dairy Export Council. See Gruyere,

(concluding that the term

GRUYERE is generic and thus cannot be registered with the PTO as a geographic

certification mark under the Lanham Act, see

, for cheese produced in the

Gruyère region of Switzerland and France). The fourth and final round of briefing related

to Moke America’s filing of a cross-motion for judgment on partial findings pursuant to

Rule 52(c).

4 The crux of Moke International and Moke USA’s theory was “that an inherently distinctive mark like MOKE may nonetheless be used descriptively, which is exactly what Mini Mania did when employing the MOKE mark.” See Moke, 671 F. Supp. 2d at 685; see also supra note 3.

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By their third- and fourth-round briefs, the parties expressly agreed that the MOKE

mark is not generic and that, as illustrated by the Gruyere decision, there was insufficient

evidence in the record to support a genericness finding. See Gruyere,

(explaining that evidence of genericness “may come from purchaser testimony, consumer

surveys, listings and dictionaries, trade journals, newspapers, and other publications”

(quoting Glover,

)). Neither party advocated further development of the

evidence as to genericness specifically or distinctiveness more generally.

Rather, Moke America contended that it is apparent that the MOKE mark is fanciful

and thus inherently distinctive and presumptively valid and protectable. Moke America

also argued that — if the district court disagreed and adhered to its previous implicit finding

that the MOKE mark is descriptive — the court should rule against Moke International and

Moke USA under Rule 52(c) on their unresolved trademark infringement counterclaim as

a result of their failure to demonstrate secondary meaning. Additionally, Moke America

maintained that the lack of proof of secondary meaning should cause the court to reverse

its prior Rule 52(c) ruling in favor of Moke International and Moke USA on their

counterclaim for a declaration of trademark ownership.

For their part, Moke International and Moke USA agreed with Moke America that

the MOKE mark is inherently distinctive and presumptively valid and protectable. But

rather than characterizing the MOKE mark as fanciful (as Moke America did), Moke

International and Moke USA described the mark as arbitrary (as they had previously done

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in their second-round brief). 5 Otherwise, Moke International and Moke USA continued to

dispute that there had been an implicit finding that the MOKE mark is descriptive and that

they therefore were required to demonstrate secondary meaning.

During a hearing in late April 2023, the district court conducted oral argument on

Moke America’s Rule 52(c) cross-motion. At that point, it was clear to the court that “the

MOKE mark’s distinctiveness, or lack thereof, now stands as the central and dispositive

issue in the case.” See Moke, 671 F. Supp. 3d at 686. As the court saw it, the case’s posture

was as follows: if the MOKE mark is fanciful, arbitrary, or suggestive and thus inherently

distinctive, then the “analysis of all six claims and counterclaims must restart”; if the

MOKE mark is descriptive, then the court “must assess whether [Moke International and

Moke USA] have established secondary meaning” and thereby proved their trademark

ownership and trademark infringement counterclaims; but if MOKE is a generic term, then

“neither party can claim common law rights to the mark.” Id. The court recognized that

each possibility would necessitate at least some revisions to its rulings on the five

previously resolved claims and counterclaims. The court also observed that the parties’

“mutual failure to address the mark’s validity before trial explains a great deal of the post-

trial procedural morass.” Id. at 686 n.11.

5 In describing the MOKE mark as arbitrary, Moke International and Moke USA contended that “moke” is an existing word — “moke” being British slang for a donkey — used in a way unconnected with its common meaning. Meanwhile, Moke America characterized the MOKE mark as fanciful on the premise that U.S. consumers are not familiar with “moke” as a word referring to a donkey and thus understand “moke” to be a term created out of whole cloth.

20 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 21 of 68

C.

That brings us to the Opinion of May 2023, in which the district court found —

contrary to the unanimous position of the parties — that MOKE is a generic term for the

parties’ vehicles and therefore cannot be a trademark. In rendering its genericness finding,

the court deemed it unnecessary to further develop the evidentiary record and instead relied

on the following: the existing trial evidence, which focused on Moke America’s alleged

priority of use; the records proffered by the parties of the PTO proceedings; stipulations

that had been made by the parties; and the parties’ publicly available websites, of which

the court took judicial notice.

1.

As indicated by the district court, the premise of its genericness finding is that

MOKE was once an inherently distinctive mark but, through the process of “genericide,”

it became a generic term before the parties first sold a vehicle bearing the MOKE mark.

See Moke, 671 F. Supp. 3d at 679 (explaining that “[g]enericide occurs when the public

appropriates a trademark and uses it as a generic name for particular types of goods or

services irrespective of its source” (quoting Elliott v. Google, Inc.,

(9th Cir. 2017))); see also Am. Online,

(similarly describing

genericide). In indicating that the MOKE mark underwent genericide, the district court

observed that “[a]t first blush,” the MOKE mark appears to be inherently distinctive.

21 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 22 of 68

at 691. 6 The court found, however, that MOKE is now a generic term for the general style

of vehicles sold by the parties in the United States. The genericness finding stemmed from

these other findings of fact:

● “In the early 1960s, the now-defunct British Motor Corporation (‘BMC’) introduced a vehicle known as the ‘Mini Moke’ into the British car market”;

● “The BMC Mini Moke — colloquially, the ‘Moke’ — is an open-air, lightweight vehicle that sits low to the ground,” that was “initially designed for military purposes,” and that was marketed to the public by BMC “as a low-cost utility vehicle”;

● “From the Moke’s introduction in the 1960s until 1993, BMC and several other manufacturers produced Mokes in at least three countries — the United Kingdom, Australia, and Portugal”;

● “Mokes changed in name and style over time, with variations on the original known as the ‘Austin Mini Moke,’ the ‘Morris Mini Moke,’ the ‘Leyland Moke,’ and the ‘Moke Californian’”;

● “Irrespective of their style, name, manufacturer or country of origin, however, all variations were and are referred to colloquially as ‘Mokes’”;

● “BMC and its apparent progeny produced approximately 50,000 Mokes before production ceased in 1993”;

● “Notwithstanding their limited production, Mokes garnered a small but devoted following for use as a beach buggy in the United States, the Caribbean and Australia”; and

6 The district court acknowledged that there is “a plausible argument” that MOKE falls into each of the three types of inherently distinctive marks: fanciful because “moke” lacks a defined meaning in American English; arbitrary because “moke” is British slang for a donkey; and suggestive because of the connotation that, like a donkey, “a MOKE vehicle carries people and things at a leisurely pace, perhaps with a little attitude.” See Moke, 671 F. Supp. 3d at 691-92; see also supra note 5.

22 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 23 of 68

● “A meaningful secondary market for Mokes developed in the United States at least as early as 1988.”

Id. at 687-88.

The district court also found that Moke International and Moke USA’s first sale in

the United States of a vehicle bearing the MOKE mark was in August 2015, and that Moke

America thereafter began U.S. sales of vehicles bearing the MOKE mark in 2016.

According to the court, the parties’ “vehicles appear largely indistinguishable from the

twentieth-century Mokes that BMC and its apparent corporate successors sold.” See Moke,

671 F. Supp. 3d at 690 (specifically describing Moke America’s vehicles); id. at 691

(similarly describing Moke International and Moke USA’s vehicles). Moreover, the

parties’ respective websites provide “recapitulation[s] of the Moke’s twentieth-century

history” and describe their vehicles as being reengineered and redesigned versions of the

predecessor Mokes. Id. at 690-91.

As the district court explained, it was led to its ultimate genericness finding by the

foregoing findings of “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.” See Moke, 671 F. Supp. 3d at 692-93. In

the court’s view of the parties’ marketing efforts,

the parties implicitly disclaim that the MOKE mark identifies their products and their products alone. Rather, to hear the parties tell it, the twentieth- century Mokes, many of which are still in circulation in the United States, are so iconic that MOKE has become synonymous with a style of vehicle — a style mimicking the “Mokes” produced by BMC and its [apparent] corporate successors. For [the parties], then, their products are merely a species within the MOKE genus, a song within the MOKE genre. The

23 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 24 of 68

MOKE mark thus serves not as an indication of source, but as a talisman of a particular style.

Id. at 694 (citation omitted). “This,” the court concluded, “is quintessential genericism.”

Id. 7

2.

Additionally, the district court concluded that neither of the dual purposes of

trademark law — which the court described as “(1) protecting consumers against fakes and

counterfeiters and (2) safeguarding markholders’ investments of time and money in

building the goodwill associated with their mark” — would be served by “reserving the

MOKE mark for one of the parties and excluding all others, including third parties, from

employing the mark in connection with motor vehicles.” See Moke, 671 F. Supp. 3d at 695

(citing George & Co.,

). Starting with the second purpose, the court

observed that the evidence before it of “consumer goodwill associated with the MOKE

mark largely suggest[s] that consumers direct such goodwill towards the Moke vehicles

7 Similarly, the district court found that Mini Mania — the entity that purportedly had conveyed its rights in the MOKE mark to Moke America — only ever used MOKE “as a generic term, synonymous with a style of vehicle produced by different companies.” See Moke, 671 F. Supp. 3d at 693. Consequently, the court adhered to its prior finding that Mini Mania did not use MOKE as a trademark — the finding previously tied to what the court had characterized as Mini Mania’s “descriptive” use of the MOKE mark. See supra note 3. The court cited evidence that, beginning by the late 1980s, Mini Mania sold replacement parts in the United States for the Moke vehicles produced by BMC and other foreign manufacturers, and that Mini Mania had used the MOKE mark in advertising “not to indicate the source or origin of Mini Mania’s products, but to reference the Mokes that its target customers already owned.” See Moke, 671 F. Supp. 3d at 693.

24 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 25 of 68

manufactured in the twentieth century by BMC and others, not the vehicles produced by

either [Moke America or Moke International and Moke USA].” Id.

The district court’s discussion of “goodwill” emphasized that neither party “put

forth any evidence that consumers associate MOKE with their particular products,” leaving

the record with “no consumer surveys, no customer testimonials, and no news stories or

trade journals evidencing an association between the MOKE mark and [the parties’

respective] vehicles.” See Moke, 671 F. Supp. 3d at 695. “On the other side of the ledger,”

however, was the evidence “that Moke ‘enthusiasts’ existed long before any party to this

suit” and that the parties had a “shared understanding that by employing the MOKE mark

in connection with their vehicles,” they could “capitaliz[e] on consumer goodwill that

already exists, not goodwill that they themselves have built.” Id. As such, the court

reasoned that neither party “can plausibly maintain that it is their investments of time and

money that imbue MOKE with a ‘cult’ following and thus warrant the exclusionary

benefits accompanying trademark status.” Id.

Turning to the first purpose of trademark law, the district court concluded that that

purpose — “protecting consumers against fakes and counterfeiters” — “would be equally

disserved by reserving the MOKE mark for one party over the other.” See Moke, 671 F.

Supp. 3d at 695. Relevant to that conclusion, the court highlighted that the record “contains

no allegation or intimation that either party is a corporate relative of [BMC]” and thus

neither party “can maintain that they manufacture the ‘One True MOKE.’” Id. The court

elaborated:

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And while the vehicles that the parties produce are, for all intents and purposes, indistinguishable, this is by design, as both explicitly note that their vehicles mimic the design of the “iconic” MOKE of yesteryear. To state that one party is producing a fake or counterfeit MOKE would be equally damning to the other, as both [parties] clearly market their Mokes as imitations of a pre-existing product sharing the same name. If anything, granting trademark protection to either [party] would itself give rise to customer confusion, as it would incorrectly signal to consumers that the trademark holder serves as the exclusive source of Mokes, despite that party’s acknowledgement that bona fide Mokes manufactured by other companies — British, Australian, Portuguese, or otherwise — remain in the marketplace.

Id. at 695-96. “In sum,” the court determined “that bestowing trademark status on the

MOKE mark would disserve the policy rationales undergirding trademark protections,

irrespective of which party ultimately won the mark.” Id. at 696.

With regard to policy considerations, the district court also thought it important to

“consider the effect that granting trademark protection to either side would have on” third-

party Moke manufacturers and the public, especially the other Moke manufacturers’ loss

of “the ability to describe their products with the most accurate and precise term available”

and the public’s loss of a word “from the ‘linguistic commons.’” See Moke, 671 F. Supp.

3d at 696 n.17 (quoting Am. Online,

). That is, the court acknowledged and

addressed the adverse consequences that would result from extending trademark protection

to a generic term. “Here,” the court underscored, “the parties fail to show that their right

to use the MOKE mark should prevail over that of third parties and at the expense of the

public vocabulary.”

26 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 27 of 68

3.

Next, the district court confronted the parties’ contention that, as illustrated by this

Court’s Gruyere decision, the evidentiary record is too thin to support any finding of

genericness. As the district court recognized, that contention implicates not only our

Gruyere decision, but also our earlier Glover decision, wherein we explained that evidence

of genericness “may come from purchaser testimony, consumer surveys, listings and

dictionaries, trade journals, newspapers, and other publications.” See Gruyere,

-26 (quoting Glover,

). Along with the adequacy of the evidence, the

parties’ contention caused the district court to focus on the burden of proof.

a.

With respect to the burden of proof, the district court distinguished Gruyere and

Glover on the ground that those cases involved parties who claimed genericness in

situations that placed the burden on them to prove it. In Gruyere, they were parties who

claimed genericness in opposing the application for registration of GRUYERE as a

geographic certification mark. See Gruyere,

. And in Glover, it was a party

who claimed genericness in order to cancel the previously approved registrations of certain

pocket- and hunting-knife-related trademarks. See Glover,

.

As the district court emphasized, this case — unlike Gruyere and Glover — has no

party asserting that MOKE is a generic term and thus no party bearing the burden to prove

it. Instead, each party is seeking to prove its ownership and the other party’s infringement

of the unregistered MOKE mark. Hence, the court pronounced, “the burden rests with the

parties . . . to prove that the mark is protectable” — meaning that the burden rests with the

27 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 28 of 68

parties to prove that MOKE is not a generic term. See Moke, 671 F. Supp. 3d at 697-98.

For support of its burden-of-proof ruling, the court cited a Second Circuit decision

explaining that the burden to prove the validity and protectability of an unregistered mark

“necessarily implies that [the party claiming ownership] must bear the burden of proving

that [the proposed] mark is not generic.” See Reese Publ’g Co. v. Hampton Int’l

Commc’ns, Inc.,

(2d Cir. 1980).

b.

Addressing the adequacy of the evidence, the district court observed that the parties

invoked Gruyere and Glover “for the proposition that purchaser testimony and consumer

surveys are de rigueur in cases denying trademark protection on genericness grounds.” See

Moke, 671 F. Supp. 3d at 696; see also Gruyere,

n.8 (suggesting that

“consumer surveys may be a preferred method of proving genericness” (internal quotation

marks omitted)). “Without such evidence,” the parties insisted, there can be no finding of

genericness in this case because there can be no finding “that the ‘primary significance’ of

the MOKE mark in the minds of relevant consumers is its indication of type or style, rather

than source.” See Moke, 671 F. Supp. 3d at 696.

The district court recognized, however, that our Gruyere and Glover decisions do

not require purchaser testimony and consumer surveys to prove genericness in every case.

See, e.g., Gruyere,

n.8 (confirming that consumer surveys are not always

needed). Indeed, in Gruyere, the parties claiming genericness did not present a single

customer survey but prevailed on their genericness claim anyway based on other evidence

that “strongly indicates that to the American purchaser, GRUYERE primarily signifies a

28 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 29 of 68

type of cheese (much like brie, swiss, parmesan or mozzarella) regardless of regional

origin.”

(alteration and internal quotation marks omitted). And in Glover, the

party claiming genericness was unsuccessful because of a “fail[ure] to present any evidence

that [any of the] marks has become synonymous with ‘pocket knife’ or ‘hunting knife’ to

purchasers in the relevant public.” See Glover,

(emphasis added).

To the extent that the district court ascertained the evidentiary record to be too thin,

the court’s determination was that there was a dearth of evidence demonstrating that the

MOKE mark is distinctive and thus valid and protectable. See Moke, 671 F. Supp. 3d at

698 (concluding “that the parties’ characterizations of the record evidence concerning the

MOKE mark’s distinctiveness prove wanting”). The court rejected the proposition that

there was inadequate evidence of genericness, stating:

Both [parties] repeatedly assert that the record stands devoid of any facts suggesting that the MOKE mark is generic, and specifically, devoid of any evidence that prospective purchasers understand MOKE as synonymous with a type or style of vehicle. While the Court agrees to a limited extent, in that the record contains no consumer survey evidence of genericness, the Court disagrees to the extent that the parties suggest or imply that [the trial] testimony [of a Moke America fact witness] sheds no light whatsoever on how the MOKE mark is perceived in the marketplace.

Id. 8 The court specified that the Moke America witness’s “testimony could easily be

interpreted as reflecting his understanding of MOKE as a generic term,” pointing to, inter

alia, the witness’s repeated references “to vehicles manufactured by disparate, unrelated

8 The Moke America fact witness invoked by the district court — the only witness called during the single day of the bench trial — is “Don Racine, former owner and CEO of [Moke America’s] purported predecessor-in-interest, Mini Mania.” See Moke, 671 F. Supp. 3d at 698; see also supra note 3.

29 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 30 of 68

companies as ‘Mokes.’” Id. (detailing that the witness used “Moke” to refer to vehicles

produced by BMC and “an unnamed Chinese company,” as well as vehicles produced in

Australia and Portugal by entities that may or may not have been “bona fide corporate

successors to BMC”).

The district court acknowledged that the Moke America witness “was not qualified

as an expert witness on either the etymology or consumer perception of the word ‘Moke,’”

but concluded that it was enough that the witness “no doubt fancies himself a prolific

consumer of all things MOKE” and that “his testimony constitutes the evidence on which

the parties chose to proceed.” See Moke, 671 F. Supp. 3d at 698. The court also reiterated

that “[f]or the parties to suggest that the record contains no evidence of consumers’

perception of the mark simply ignores how [the witness’s] testimony conveys his

understanding of the MOKE mark in the American marketplace.” Id. at 698-99. 9

9 At the close of its discussion of the burden of proof and the adequacy of the evidence, the district court deemed it irrelevant that no question of genericness was raised in the PTO proceedings by the PTO examining attorney. In so doing, the court cited its possession of “a factual record that was not before the [PTO examining attorney] when he reviewed the [MOKE] mark.” See Moke, 671 F. Supp. 3d at 699. The court explained that the PTO examining attorney’s “failure to raise a genericness objection thus tells the Court little in the current context, where . . . the Court ‘must evaluate the evidence in the present record to determine whether’ the mark proves valid and protectable.” Id. (quoting Cordua Rests.,

). Moreover, the court noted that “comparisons to registration proceedings before [PTO examining attorneys] prove inapt to the extent that the burden in such proceedings lies not with the applicant, but with the examiner.”

(citing Cordua Rests.,

, for the proposition that “in registration proceedings the PTO always bears the burden of proving genericness”).

30 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 31 of 68

4.

Lastly, the district court addressed its “evolution” from the initial implicit finding

that MOKE is a descriptive mark to the ultimate finding that MOKE is a generic term,

again criticizing the parties for their “shared failure to address the mark’s distinctiveness

in a straightforward fashion” and to take advantage of the opportunities the court afforded

them to present relevant evidence. See Moke, 671 F. Supp. 3d at 699-700 (repeating key

points of this case’s procedural history). The court then summarized its decision as

follows:

The salient takeaway from all of the above — the cornerstone on which the Court’s decision rests — proves simple: this case turns on the burden of proof. [Moke America] and [Moke International and Moke USA] alike shoulder a burden to prove, by a preponderance of the evidence, that they possess common law trademark rights in the MOKE mark. Such a showing entails proving (1) priority of use of (2) a valid, protectable trademark. Without proving both elements, neither party can prevail on their respective trademark infringement claims or their respective actions for a declaration of trademark ownership rights. The parties chose to present very little evidence on the second half of the ownership equation, all but assuming that the Court would find the MOKE mark inherently distinctive. While the Court . . . acknowledges that sorting trademarks into the appropriate distinctiveness bucket is no easy task, the Court cannot find, on the record before it, that either party has demonstrated that the relevant consuming public associates the MOKE mark with their products. The limited record before the Court, to the extent probative, in fact suggests the opposite — that consumers see the mark as synonymous with a style of vehicle produced by one or more non-party entities a century ago. Based on the record evidence, the Court thus concludes that the MOKE mark, as used in connection with the parties’ vehicles, is generic. The mark therefore falls beyond the ambit of trademark protection.

Id. at 700-01 (citations omitted).

31 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 32 of 68

D.

Upon issuance of its Opinion in early May 2023, the district court made conforming

revisions to its rulings on the five previously resolved claims and counterclaims. As a

result, the court entered judgment against Moke America on its trademark ownership and

trademark infringement claims, and against Moke International and Moke USA on their

trademark ownership and trademark infringement counterclaims. The court also entered

judgment against Moke International and Moke USA on their counterclaim for affirmance

of the TTAB decision. The court entered judgment for Moke America on its claim for

reversal of the TTAB decision, but rather than ordering the TTAB to rule in favor of Moke

America, the court directed the TTAB to deny Moke International and Moke USA’s

pending application for registration of the MOKE mark on the ground that MOKE is a

generic term and therefore cannot be a trademark.

In late May 2023, Moke America filed a motion pursuant to Federal Rule of Civil

Procedure 59(e) to alter or amend the judgment. See Mayfield v. Nat’l Ass’n for Stock Car

Auto Racing, Inc.,

(4th Cir. 2012) (recognizing that Rule 59(e) relief

may be granted only in limited circumstances, including “to correct a clear error of law or

prevent manifest injustice,” and that “[i]t is an extraordinary remedy that should be applied

sparingly” (internal quotation marks omitted)). Moke America argued, inter alia, that the

district court erred by placing the burden on the parties to prove non-genericness and by

finding genericness in the absence of adequate evidence to do so.

Additionally, Moke America highlighted the concept of trademark abandonment

and contended that — rather than supporting the district court’s genericness finding — the

32 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 33 of 68

evidence before the court establishes that MOKE is an abandoned, inherently distinctive

mark. See Emergency One,

(explaining that “[t]he priority to use a mark

. . . can be lost through abandonment” and that “[o]nce abandoned, a mark may be seized

immediately and the person doing so may establish priority of use and ownership under the

basic rules of trademark priority” (alteration and internal quotation marks omitted)).

Pursuant to Moke America’s abandonment theory, the MOKE mark both began as and

remains an inherently distinctive mark; the MOKE mark was originally owned but later

abandoned by BMC, the British company that introduced Moke vehicles in the early 1960s

and then ceased production in 1993; and BMC’s abandonment of the MOKE mark left the

mark available to a new owner based on priority of use. Moke America also asserted

victory in the race to become the MOKE mark’s new owner.

The district court denied Moke America’s Rule 59(e) motion in early June 2023 for

failure to satisfy the stringent requirements for relief. Meanwhile, the parties timely noted

these cross-appeals, invoking our jurisdiction under

.

II.

In contesting the district court’s finding in its Opinion of May 2023 that MOKE is

a generic term for the parties’ vehicles and therefore cannot be a trademark, both parties

now maintain on appeal that the court erred by placing the burden on the parties to prove

non-genericness and by finding genericness in the absence of adequate evidence to do so.

Both parties also promote the abandonment theory, i.e., that the existing evidence

establishes that MOKE began as and remains an inherently distinctive mark, which was

33 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 34 of 68

abandoned by its original owner and thereby left up for grabs to a new owner based on

priority of use. Where the parties diverge is on their competing assertions of priority of

use of the previously abandoned MOKE mark. Each party would have us proclaim it the

MOKE mark’s new owner, with directions to the district court to revise its final rulings on

the parties’ various claims and counterclaims accordingly.

We conclude that the district court properly placed the burden on the parties to prove

that MOKE is not a generic term for their vehicles. As stated at the outset of this decision,

however, we are vacating and remanding for further proceedings because there is not

enough evidence to either affirm or outright reverse the court’s genericness finding. That

is, we conclude that the evidence is inadequate to resolve not only whether MOKE is a

generic term (as the district court found), but also whether MOKE is instead an abandoned,

inherently distinctive mark (as the parties now argue). We further address those issues

below.

A.

We begin with the burden of proof, which is a legal issue that we review de novo.

See Swatch AG v. Beehive Wholesale, LLC,

(4th Cir. 2014). Again,

the district court reasoned that — because the parties’ competing trademark ownership and

trademark infringement claims require each of them to prove that it owns a valid and

protectable mark — each party bears the burden of proving that MOKE is a distinctive

mark. And thus, each party bears the burden of proving that MOKE is not a generic term

for its vehicles.

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The parties contend, however, that because neither of them has asserted that MOKE

is a generic term, neither of them bears any burden to prove genericness — or, for that

matter, non-genericness. Rather, as the parties would have it, the district court must accept

what is essentially the parties’ stipulation that MOKE began as and remains an inherently

distinctive mark.

1.

We agree with the district court’s sound conclusion that the competing trademark

ownership and trademark infringement claims require each party to prove non-genericness.

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. See Emergency One, Inc.

v. Am. Fire Eagle Engine Co.,

(4th Cir. 2003). And to show that the

mark is valid and protectable, the party claiming ownership must show that the mark is

distinctive. See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition

§ 4:13 (5th ed. May 2024 Update) (explaining that unless a designation is “distinctive”

within the meaning of trademark law, it does not identify the source of the goods and cannot

be “a legally protectable ‘mark’”).

Therefore, as the district court concluded, the party claiming ownership is obliged

to prove that the proposed mark is not actually a generic term lacking any distinctiveness

at all. In the words of the Second Circuit’s Reese Publishing decision invoked by the

district court, the burden to prove the validity and protectability of an unregistered mark

“necessarily implies that [the party claiming ownership] must bear the burden of proving

that [the proposed] mark is not generic.” See Reese Publ’g Co. v. Hampton Int’l

35 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 36 of 68

Commc’ns, Inc.,

(2d Cir. 1980); accord Nat’l Conf. of Bar Exam’rs v.

Multistate Legal Studies, Inc.,

, 488 (7th Cir. 1982) (“Because the alleged

trademark in this case is unregistered, the plaintiff had the burden of proving that its mark

was not an unprotectable generic mark.” (cleaned up) (citing Reese Publ’g,

)).

Oftentimes, when a party claiming ownership has demonstrated that a mark is either

“arbitrary,” “fanciful,” or “suggestive” — and thus inherently distinctive — the party will

have satisfied its burden of showing non-genericness. See OBX-Stock, Inc. v. Bicast, Inc.,

(4th Cir. 2009) (relating that inherently distinctive marks are generally

“valid without the holder having to make any other showing”). But it is not so simple

where, as here, there is reason to question whether the mark began as inherently distinctive

but is now generic as a result of “genericide.” See Am. Online, Inc. v. AT&T Corp.,

(4th Cir. 2001) (explaining that an inherently distinctive mark may

undergo genericide by way of the public’s pervasive use of the mark as a generic term). In

such circumstances, it is necessary for the party to prove non-genericness by showing that

genericide has not in fact occurred.

2.

According to the parties, however, controlling and persuasive authorities connote

that no party can be required to prove genericness or non-genericness unless some party

has affirmatively raised a genericness claim. For example, Moke International and Moke

USA point to decisions requiring a party claiming genericness to prove it, including our

Gruyere and Glover decisions. See Interprofession du Gruyere v. U.S. Dairy Exp. Council,

36 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 37 of 68

(4th Cir. 2023) (party opposing new registration of mark on genericness

grounds); Glover v. Ampak, Inc.,

(4th Cir. 1996) (party claiming genericness

in order to cancel existing registration). They and Moke America also highlight decisions,

such as our Ale House decision, requiring a trademark infringement plaintiff to prove the

non-genericness of an unregistered mark where the alleged infringer has claimed

genericness as a defense. See Ale House Mgmt., Inc. v. Raleigh Ale House, Inc.,

, 140 (4th Cir. 2000).

Alternatively, the parties posit that — even if a party claiming ownership of an

unregistered mark may sometimes be obliged to prove non-genericness in the absence of

another party’s genericness claim — the purported owner is required to do so only if there

is reason to believe that the mark has always been a generic term, and not if there is

suspected genericide. In other words, the parties assert that genericide never need be

disproven by a party claiming ownership of an unregistered mark.

The parties’ alternative theory relies on the Second Circuit’s decision in Murphy

Door Bed Co. v. Interior Sleep Systems, Inc.,

(2d Cir. 1989), shifting

the burden to the alleged infringer of an unregistered mark to prove its defense that the

mark has undergone genericide. The Murphy Bed court distinguished the Second Circuit

precedent of Reese Publishing,

, in which the court had recognized that the

party claiming ownership of an unregistered mark bears the burden of proving that the

proposed mark is not generic. Specifically, the Murphy Bed court distinguished Reese

Publishing on the ground that the mark at issue therein, VIDEO BUYER’S GUIDE,

apparently began as and remained generic, whereas in Murphy Bed, the disputed MURPHY

37 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 38 of 68

BED mark began as an inherently distinctive mark and then allegedly became generic by

way of genericide. See Murphy Bed,

. The Murphy Bed court deemed “this

distinction important” and held that where an alleged infringer claims that a once

distinctive mark has undergone genericide, the trademark infringement plaintiff enjoys a

“presumption of non-genericness” that “is justified by the commercial protection a

developer of innovations deserves.”

.

To be sure, none of the foregoing decisions squarely supports either of the parties’

theories. And we do not find ourselves persuaded by any of the cited decisions to embrace

the theory that no party can be required to prove genericness or non-genericness absent

some party’s genericness claim. Nor are we swayed to adopt the alternative theory that

genericide never need be disproven by a party claiming ownership of an unregistered

mark. 10

In effect, the parties contend that competitors for ownership of an unregistered mark

can jointly and self-servingly stipulate to the mark’s distinctiveness — whether it be by an

explicit stipulation or by an implicit stipulation engendered by the parties’ mutual failure

to assert any question of genericness. Crucial to their contention, the parties further suggest

10 We leave for another day the question — answered by the Second Circuit in its Murphy Bed decision — of which party bears the burden to prove genericness or non- genericness when an alleged infringer of an unregistered mark claims a genericide defense. See Murphy Bed,

(requiring the alleged infringer to prove genericide and thereby overcome a “presumption of non-genericness” enjoyed by the trademark infringement plaintiff). That issue is not implicated herein and arguably was not resolved by our Ale House decision, which addressed the defense that the allegedly infringed ALE HOUSE mark had always been generic. See Ale House, 205 F.3d at 140 (obliging the trademark infringement plaintiff to prove non-genericness).

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that the district court must accept the stipulation of distinctiveness no matter how obvious

or at least plausible it is that the proposed mark has always been a generic term or has

become so by genericide.

We reject the parties’ contention as contrary to the general rule that, in “its role as

the evidentiary gatekeeper, a district court need not accept stipulations between parties.”

See Wharton v. Superintendent Graterford SCI,

(3d Cir. 2024); see also

83 C.J.S. Stipulations § 18 (May 2024 Update) (“The court has the discretion to determine

a stipulation’s accuracy or its validity and reasonableness, and the court must reject

stipulations that contain demonstrable falsehoods or inconsistencies.” (citations omitted)).

Moreover, we reject the parties’ contention for being incongruous with the court’s role in

protecting third-party interests and preventing generic terms from being expropriated

“from the public ‘linguistic commons.’” See Am. Online,

; see also Baz v.

Patterson,

(7th Cir. 2024) (recognizing that stipulations between the

parties should not be allowed “to bind third parties or to dictate the district court’s factual

determinations”).

Rather, as heretofore expressed, we agree with the district court that the parties’

competing trademark ownership and trademark infringement claims require each of them

to prove non-genericness. That is, each party bears the burden of proving that the MOKE

mark has not undergone genericide.

B.

We next address the adequacy of the evidence to resolve whether MOKE is a generic

term or an abandoned, inherently distinctive mark. The genericness or distinctiveness of a

39 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 40 of 68

mark is a question of fact that we generally review for clear error. See Swatch,

.

1.

a.

To recap, the district court deemed the existing evidentiary record to be insufficient

to satisfy the parties’ burden of proving that MOKE is not a generic term for their vehicles.

The court also determined there to be ample evidence that MOKE is such a term.

Specifically, the court identified and credited evidence that MOKE was once an inherently

distinctive mark but became a generic term by way of genericide well before the parties

first sold a MOKE-adorned vehicle, in 2015 (Moke International and Moke USA) and 2016

(Moke America).

In thus rendering its genericness finding, the district court made a series of

underlying findings of fact. Those included that the original Moke vehicles were produced

in the early 1960s by British manufacturer BMC; that Moke vehicles were thereafter

produced by additional foreign manufacturers, including BMC’s “apparent” corporate

successors in Australia and Portugal; that BMC and the manufacturers in Australia and

Portugal ceased production of Moke vehicles in 1993; and that by then, vehicles of the

same general style produced by BMC and others had come to be known colloquially as

“Mokes” and had garnered a small but devoted following and a meaningful secondary

market in the United States.

Based on the publicly available websites of Moke America and of Moke

International and Moke USA, the district court found that the parties’ vehicles are largely

40 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 41 of 68

indistinguishable from the Moke vehicles previously produced by BMC and others, and

that the parties have highlighted those similarities and the history of the predecessor Moke

vehicles in marketing their own. Furthermore, the court interpreted the parties’ marketing

efforts as espousing the notion that MOKE has become synonymous with the style of their

vehicles, and not with any particular source.

The district court similarly construed the trial testimony of Moke America’s fact

witness to reflect an understanding that MOKE is a generic term for the parties’ vehicles,

in that the witness repeatedly used the term “Moke” to refer to vehicles produced not only

by BMC and its apparent corporate successors in Australia and Portugal, but also by at

least one other, unnamed manufacturer in China. Although the court acknowledged that

the witness was called by Moke America for the sole purpose of establishing its priority of

use and was not qualified as an expert witness on the etymology or consumer perception

of the MOKE mark, the court was satisfied with the witness’s status as “a prolific consumer

of all things MOKE.”

Indeed, the district court deemed the existing record to be sufficient to render its

genericness finding even without some types of evidence — particularly consumer surveys

and conventional purchaser testimony — that is often used to establish genericness. The

court observed both that such evidence is not required to demonstrate genericness in every

case, and that the lack of such evidence in this case was the choice and the fault of the

parties.

The district court also emphasized policy considerations, specifying that reserving

the MOKE mark to one party or the other would not serve the dual purposes of trademark

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law. That is, the court concluded that because both parties are basically copying the Moke

vehicles popularized by BMC and others — and because there is no evidence that

consumers associate the MOKE mark with the parties’ particular vehicles or that either

party is a corporate successor to BMC — reserving the MOKE mark to one of the parties

would neither (1) protect consumers against fakes and counterfeiters nor (2) safeguard

some investment of time or money by the prevailing party in building the goodwill

associated with the mark. Additionally, the court addressed the adverse consequences that

would result from extending trademark protection to a generic term, citing the inability of

third-party Moke manufacturers to describe their products as “Mokes” and the loss of

“Moke” from the public vocabulary.

b.

For their part, the parties maintain that the existing evidentiary record belies the

district court’s genericness finding and instead establishes that MOKE is and always has

been an inherently distinctive mark. Under the parties’ view of the evidence, beginning in

the early 1960s, the MOKE mark identified BMC as the source of Moke vehicles and

continued to do so even after the other vehicle manufacturers in Australia and Portugal

began using the MOKE mark. The parties say that is because those other manufacturers

were — or were at least believed to be — corporate successors of BMC. The parties assert

that BMC and its apparent corporate successors thereafter abandoned the MOKE mark by

ceasing production of Moke vehicles in 1993, leaving the MOKE mark available to a new

owner based on priority of use. Further, the parties assert that the evidence fails to show

that, either before or after the abandonment, the MOKE mark underwent genericide and

42 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 43 of 68

became a generic term for vehicles of the same general style as BMC’s Moke vehicles.

That is, the parties insist there is scant evidence that all such vehicles have ever come to be

known colloquially known as “Mokes,” as the district court found.

In particular, Moke International and Moke USA criticize the district court’s

interpretation of certain snippets of the trial testimony of Moke America’s fact witness “to

suggest many unrelated users of the historical MOKE mark existed.” See Br. of Appellants

34-35. Moke International and Moke USA contend — based on different snippets of the

Moke America witness’s testimony — that the testimony actually reflects that there was

“only a single chain of ownership of MOKE vehicle makers before manufacturing stopped

in the 1990s.” Id. at 35 (pointing to the Moke America witness’s testimony that he

understood the manufacturers in Australia and Portugal to be related to BMC). Moreover,

Moke International and Moke USA argue that even evidence that the MOKE mark was

used by “more than one historical line of manufacturers” would not necessarily establish

genericness. Id.

Moke International and Moke USA also criticize the district court’s emphasis on

policy considerations, asserting that it led the court to erroneously “conflate appropriation

of an abandoned mark with genericness.” See Br. of Appellants 36. For example, Moke

International and Moke USA assert that, by giving attention to their lack of investment of

time or money in building the goodwill associated with the MOKE mark, the court

improperly disregarded “the fact that BMC, the party that originally invested in building

the goodwill in the MOKE mark, abandoned the mark long ago, has not used the MOKE

mark in decades, has not re-introduced MOKE vehicles itself, and has taken no action to

43 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 44 of 68

prevent [Moke International and Moke USA] from using and registering the MOKE mark

for their new vehicles.” Id. at 40 (internal quotation marks omitted). Moke International

and Moke USA further complain that the court sought to protect the ability of third-party

manufacturers and the public to use the term “Moke,” despite evidence that only Moke

America has raised a competing claim to the MOKE mark and that there are sellers of

similar vehicles who do not refer to their products as “Mokes.” Id. at 41-42 (invoking

evidence indicating, inter alia, that one seller of similar vehicles uses E-MERGE and

BEACHCOMBER, rather than MOKE).

2.

We conclude that — although there is some evidence that MOKE began as an

inherently distinctive mark but has since undergone genericide, as well as some evidence

that MOKE is and always has been an inherently distinctive mark — there is not enough

evidence on which the district court could make any proper finding of genericness or

distinctiveness at all. Consequently, we are constrained to ascertain clear error in the

court’s genericness finding and remand for further proceedings. Cf., e.g., Wall v. Rasnick,

(4th Cir. 2022) (recognizing that another circumstance in which clear

error may be ascertained is when “there is evidence to support [the trial court’s finding],”

but “the reviewing court on the entire evidence is left with the definite and firm conviction

that a mistake has been committed” (internal quotation marks omitted)).

Even accepting that the existing evidentiary record sufficiently establishes that

MOKE began as an inherently distinctive mark and that it was originally owned but later

abandoned by BMC, the record leaves too many other questions unanswerable by a

44 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 45 of 68

preponderance of the evidence. On that score, we recognize that an inherently distinctive

mark does not necessarily convert to a generic term upon abandonment. See Emergency

One,

(explaining, to the contrary, that “[o]nce abandoned, a mark may be

seized immediately and the person doing so may establish priority of use and ownership

under the basic rules of trademark priority” (alteration and internal quotation marks

omitted)). Nevertheless, we further recognize that abandonment of a once inherently

distinctive mark does not foreclose the possibility that the mark has at some point become

generic by way of genericide.

So, there are questions that may or may not ultimately be significant, including the

questions of whether BMC’s “apparent” corporate successors in Australia and Portugal

were actually its corporate successors, and of who else used the MOKE mark, when, and

in what circumstances. Of clear importance, however, are questions concerning how

potential customers perceive the MOKE mark. Has MOKE been adopted by the public as

a generic term for the general style of vehicles once produced by BMC? Or can MOKE

yet be used to identify a particular source of such vehicles? See Glover,

(explaining that “[t]o become generic, the primary significance of the mark must be its

indication of the nature or class of the product or service, rather than an indication of

source”). Those are questions that cannot properly be answered without additional

evidence — evidence that may, but is not required to, include “purchaser testimony,

consumer surveys, listings and dictionaries, trade journals, newspapers, and other

publications.” See Gruyere,

-26 (quoting Glover,

)).

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In ruling as we do, we mean no criticism of the district court, which was left in a

difficult position by the parties’ mutual insistence that MOKE is an inherently distinctive

mark and their mutual failure to proffer ample relevant evidence. Indeed, we commend

the court for heeding the indicators that MOKE may be a generic term and demanding

proof of non-genericness, rather than simply accepting the parties’ implicit stipulation of

distinctiveness. As the court rightly recognized and we once again reiterate, this trademark

dispute implicates not just the rights of Moke America and of Moke International and Moke

USA, but potentially also the rights of third parties and especially of the public to preserve

a word in its “linguistic commons.” See Am. Online,

.

We also appreciate that a finding of genericness carries significant consequences,

in that it precludes any and all claims of ownership of the proposed mark. See Sara Lee

Corp. v. Kayser-Roth Corp.,

(4th Cir. 1996) (recognizing that generic

terms “can never be trademarks”). Put succinctly, for the sake of Moke America, Moke

International and Moke USA, other sources of similar vehicles, and the public at large, it

is crucial that the district court have enough evidence before it to get any finding of

genericness or distinctiveness right.

Because the existing evidentiary record is inadequate to that task, we vacate and

remand for further proceedings in which the parties will continue to bear the burden of

proving that the MOKE mark is not generic. In light of the absence of any party claiming

genericness, we note that it might be helpful to the district court to, e.g., appoint a

disinterested expert witness. See Fed. R. Evid. 706. We further note that, if on remand the

parties yet again fail to prove non-genericness by a preponderance of the evidence, the

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court should consider whether it is appropriate to adhere to its finding that MOKE is a

generic term, or to stop short of such a finding and thus leave genericness an open

question. 11

III.

Pursuant to the foregoing, we vacate the judgment of the district court and remand

for such other and further proceedings as may be appropriate.

VACATED AND REMANDED

11 With respect to the question of the proper disposition of this dispute, Moke International and Moke USA suggest on appeal that — even if the district court correctly ruled that the parties failed to satisfy a burden of proving non-genericness for purposes of their competing trademark ownership and trademark infringement claims — the court should not have directed the TTAB to deny Moke International and Moke USA’s application for registration of the MOKE mark on the ground that MOKE is a generic term. Rather, because they bore no burden to prove genericness or non-genericness in the PTO registration and opposition proceedings, Moke International and Moke USA contend that the court should have affirmed the TTAB decision dismissing Moke America’s opposition and leaving Moke International and Moke USA’s application pending. See Br. of Appellants 19 (citing B&B Hardware, Inc. v. Hargis Indus., Inc.,

, 144 (2015), for the proposition that “[t]he party opposing registration bears the burden of proof, and if that burden cannot be met, the opposed mark must be registered” (citations omitted)). We do not unnecessarily reach and resolve that contention or several additional appellate arguments raised by the parties herein.

As a final matter, in August 2023, after these cross-appeals had been noted, Moke International and Moke USA filed a motion in the district court to supplement the record under Federal Rule of Appellate Procedure 10(e). Specifically, they sought to add all records of the PTO proceedings, along with various records of prior PTO trademark application examinations related to the MOKE mark. The district court, however, promptly denied that motion. Moke International and Moke USA then made a similar request in this Court, which we now deny as moot.

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RICHARDSON, Circuit Judge, dissenting:

I agree with much of the majority’s opinion. The majority correctly holds that each

party asserting trademark infringement bears the burden to show that the mark is

distinctive. When a mark’s distinctiveness is uncertain, this may require proffering

empirical evidence that consumers do not perceive the mark as generic. And

distinctiveness can be uncertain regardless of whether a party pleads genericness as a

defense—for instance, when the putative mark owner’s own evidence is dubious or

contradictory. So the majority was also right to reject the assertion that parties to a

trademark infringement suit can always stipulate a mark’s distinctiveness.

But while we agree on the overarching framework governing each party’s burden, I

part ways with its application to the case before us. This is not a case where the mark’s

distinctiveness is uncertain. And when distinctiveness is clear and uncontroverted, a party

need not produce any more evidence to carry its burden.

The district court’s erroneous conclusion that “Moke” was a generic term followed

directly from two mistakes. First, it misconstrued evidence of the parties’ attempt to

capture residual goodwill in the abandoned “Moke” mark as evidence of the mark’s

genericness. Residual goodwill often results from trademark abandonment but is irrelevant

when addressing trademark distinctiveness. Second, the district court misunderstood Don

Racine’s testimony, taking him to suggest that multiple unrelated companies manufactured

“Mokes,” and that consumers use “Moke” to refer to a style of vehicle, not a particular

model. But even if Racine’s testimony could serve as evidence of the relevant public’s

perception of “Moke” as generic—and it couldn’t—Racine suggested no such things.

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Without these two evidentiary mistakes, the record is clear and uncontroverted: “Moke”

is a distinctive mark.

The majority fails to fully correct these missteps when it determines that the record

is insufficient to decide the question and remands for a do-over. A proper view of the

evidence, shorn of conceptual confusion, shows no support for the notion that “Moke” is

generic. So I would hold that “Moke” is an inherently distinctive term protectable under

the trademark laws and reverse the district court’s finding on this issue. I respectfully

dissent.

I. BACKGROUND

The original Moke—a brand of low-speed, open-air vehicle produced by British

Motor Company (“BMC”) starting in the 1960s—garnered a small but dedicated following

in the United States as the car became loved as an eye-catching beach buggy. Then BMC

stopped producing the Moke in 1993, and the brand fell into commercial disuse in this

country. But the domestic love for the vehicle survived thanks to a small group of

dedicated Moke fanatics. As the nostalgia market boomed, the parties here sought to

capitalize on it by bringing the Moke brand back to life with newly produced open-air

vehicles under the old name. This suit arises out of their fight over who was the first to re-

use the trademark; the parties each sought to claim the Moke trademark and sued each other

for trademark infringement.

Yet for all the quarrels between them, this suit comes before us because of an issue

on which both parties are united. Both parties agreed before the district court, and continue

to agree here, that “Moke” is protectable under the trademark laws as an inherently

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distinctive trademark—that is, by the word’s “intrinsic nature” it “serves to identify a

particular source of a product.” Two Pesos, Inc., 505 U.S. at 768. This contrasts with a

term that is generic, and thus unprotectable, because it “names a ‘class’ of goods or

services, rather than any particular feature or exemplification of the class.” USPTO v.

Booking.com B.V.,

(2020).

Despite the parties’ agreement, the district court—after the long, winding journey

laid out in the majority opinion—found that “Moke” was generic. 1 Moke America, 671 F.

Supp. 3d at 691. Key to this determination was its conclusion that both parties

“employed the MOKE mark in a manner that explicitly acknowledged and commercially

exploited consumers’ association of the MOKE mark with . . . BMC and its ostensible

corporate successors,” rather than with themselves. Id. at 693 (emphasis in original). This

1 The district court first found that the trademark was descriptive—one category shy of generic. Moke Am. LLC v. Am. Custom Golf Cars, Inc.,

, 685 (E.D. Va. 2024). Descriptive trademarks “describe a function, use, characteristic, size, or intended purpose of the product” such as “After Tan post-tanning lotion” and “5 Minute glue.” Sara Lee Corp. v. Kayser-Roth Corp.,

(4th Cir. 1996). The district court’s ultimate genericness finding is not affected by its intermediate determination, but it’s worth pointing out that this intermediate determination of descriptiveness also rested on a conceptual error. At a hearing, evidence arose that Mini Mania, Moke America’s predecessor, used the “Moke” brand to signal the compatibility of various aftermarket car parts that Mini Mania sold. J.A. 592. The district court understood this to be evidence that “Moke” was a descriptive trademark. Moke America, 671 F. Supp. 3d at 685. That was a mistake. A phone accessory company might specify that its phone cases are designed for Apple iPhones, a shoe store might advise that its shoelaces fit best on Converse shoes, and an autobody repair shop might warn that only some of the motor oil it sells is optimal for Ford engines. These uses do not turn Apple, Converse, or Ford into descriptive marks; such marks are still inherently distinctive, even though they are colloquially used to describe another product. In any case, this conclusion says nothing about the separate question of whether Mini Mania’s use of “Moke” when selling parts established priority rights in the mark—a fact-intensive matter that should be left for the district court to address on remand. 50 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 51 of 68

exploitation of residual goodwill around BMC’s vehicles, the district court found, ran

contrary to trademark law’s public policy goals. Id. at 695–96. The district court also

thought the testimony of Don Racine—the CEO of Moke America’s predecessor in

interest, Mini Mania, and the only witness called by either party during the bench trial—

indicated that multiple unrelated companies produced “Mokes,” and that “Moke” was used

as a term for a “style of vehicle.” Id. at 688, 698–99. Between the parties’ exploitative use

of “Moke” and Racine’s testimony, the district court believed MOKE functioned “not as

an indication of source, but as a talisman of a particular style,” making it “quintessential

genericism.” Id. at 694.

II. DISCUSSION

This case is a dispute over the ownership of the “Moke” mark. Each party—Moke

America on the one hand and Moke International on the other—seeks to claim “Moke” as

their own and hold the other liable for trademark infringement. To ultimately prevail, each

party must show two things: (1) that the “Moke” mark was distinctive, not generic; and

(2) that they were the first to use it in commerce. See B & B Hardware, Inc. v. Hargis

Indus., Inc.,

, 142 (2015). Set aside the second, temporal-priority requirement;

the district court should decide that on remand. Our only question is whether the parties

produced evidence that “Moke” satisfied the first requirement.

On the record before us, the parties have proven the “Moke” mark’s distinctiveness.

A mark is distinctive—as opposed to generic—when it can “distinguish [a party’s] goods,

including a unique product, from those manufactured or sold by others” and “indicate the

source of the goods, even if that source is unknown.”

. One can satisfy

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this element by showing that the mark is inherently distinctive, which comes in three

flavors: “suggestive,” which means the mark “connotes a characteristic of a product”;

“arbitrary,” which means the mark is “unrelated to the product” but “well-known in a

different context”; and “fanciful,” which means the mark is “newly invented” and means

nothing. Ashley Furniture Indus., Inc. v. SanGiacomo N.A., Ltd.,

(4th

Cir. 1999). Showing that a mark is inherently distinctive ordinarily requires little

evidence—all it requires is some reason to think the term is distinctive by its “intrinsic

nature.” Two Pesos, Inc. 505 U.S. at 768. And the parties had a good reason. As they

explained in their post-trial briefs, “the word MOKE has no meaning in the context of

automotive products,” making it either arbitrary or fanciful. 2 J.A. 913; see also J.A. 887,

892. By itself, that evidence is enough to show inherent distinctiveness. Because the term

doesn’t mean anything, it is naturally understood to “distinguish a particular artisan’s goods

from those of others.” B & B Hardware, 575 U.S. at 142.

This conclusion tracks common sense. Without referencing anything but the word

itself, it should be obvious that “Moke” is distinctive and therefore capable of

“distinguish[ing]” and “indicat[ing] the source of goods. § 1127. Indeed, that is precisely

why it falls into the inherently distinctive category—the distinctiveness is inherent in the

2 “Moke” is a slang term in British English for a donkey. See Moke America, 671 F. Supp. 3d at 692. But since “trademark law is territorial,” Abitron Austria GmbH v. Hetronic Int’l, Inc.,

, 426 (2023), the meaning of a slang term from outside the country likely should not bear on the analysis unless there is some reason to think that domestic consumers understand the slang’s meaning. So although the exact flavor of inherent distinctiveness doesn’t matter here, I take Moke America to be correct in its assertion that the “Moke” mark means nothing and is thereby fanciful, not arbitrary or suggestive. 52 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 53 of 68

word. Because, in America, “Moke” is a nonsensical word, it “almost automatically tell[s]

a customer [it] refer[s] to a brand.” See Qualitex Co. v. Jacobson Prods. Co.,

(1995).

That should have been the ballgame. As this Court has recognized—and as the

majority reiterates above—inherently distinctive marks are valid and protectable “without

the holder having to make any other showing.” See OBX-Stock, Inc. v. Bicast, Inc.,

(4th Cir. 2009); see also Majority Op. at 6. So by submitting the word and

explaining its meaninglessness, the parties did all they needed to do to demonstrate

distinctiveness.

Yet rather than accept that the parties had met their burden, the district court

erroneously requested more evidence that “Moke” was not a generic mark. On appeal, the

parties jointly contend that the district court erred in placing upon them the burden of

proving non-genericness when neither party raised the genericness of “Moke” as a defense

to infringement. The parties are wrong about their burden, and the majority is right to

reject their argument. All agree that a party claiming ownership in an infringement suit

bears the burden of submitting the evidence that shows the mark’s distinctiveness. See,

e.g., Emergency One, Inc. v. Am. Fire Eagle Engine Co.,

(4th Cir. 2003)

(Emergency One II). But since all marks that are not generic are distinctive, evidence of

non-genericness is evidence of distinctiveness. See Booking.com,

; see also

Reese Publ’g Co. v. Hampton Int’l Commc’ns, Inc.,

(2d Cir. 1980). The

two are flip sides of the same coin. Thus, the burden of showing non-genericness—i.e.,

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distinctiveness—always rests with the party claiming ownership, no matter what the other

party does in defense.

The parties’ insistence to the contrary fails to understand that the additional

evidence required to satisfy a burden of persuasion depends on the state of the evidence

already in the record. This is just what it means to show something by a preponderance:

The party must prove its claim is more likely true than false given the evidence before the

court. True, additional evidence of distinctiveness will usually only be required when the

alleged infringer raises the asserted mark’s genericness as a defense. See, e.g., Ale House

Mgmt., Inc. v. Raleigh Ale House, Inc.,

, 140 (4th Cir. 2000). In such cases,

the genericness defense stands as an obstacle that must be surmounted through additional

evidence produced by the party asserting ownership. But a genericness defense is not the

only obstacle that might warrant more evidence of distinctiveness. The question before a

factfinder is simply whether the evidence tilts one way or the other. So if the

distinctiveness evidence proffered by the party asserting ownership were itself insufficient,

dubious, or contradictory, the record would fail to satisfy the burden, even in the absence

of any defense. In such cases, a factfinder would be well within its rights to ask for more.

As a trivial example, imagine a party that seeks to prove the word “truck” is fanciful—but

then offers as the only evidence a dictionary that contains “truck” as a common entry. It

would defy common sense to think the factfinder is bound to find “truck” distinctive simply

because the other party failed to plead genericness as a defense.

The problem here is that the district court mistakenly believed the evidence

submitted by the parties was contradictory and thus required additional evidence.

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Specifically, it thought the record contained two pieces of evidence “on the other side of

the ledger” that outweighed the facially apparent inherent distinctiveness of “Moke”: (1)

the parties’ own usage of the “Moke” mark, which directed consumers “towards the Moke

vehicles manufactured in the twentieth century by BMC and others, not the vehicles

produced by either Plaintiff or Defendants”; and (2) Don Racine’s testimony, which the

district court thought contained references to multiple unrelated companies’ products as

“Mokes” and “indicate[d] that consumers in the American market understood and continue

to understand MOKE as a style.” Moke America, 671 F. Supp. 3d at 693–95, 698–99.

But neither of these pieces of evidence, properly understood, weighs against finding

“Moke” distinctive. As to the first, the parties’ use of “Moke” is precisely what we would

expect from their fully lawful efforts to take up an abandoned mark with residual goodwill.

As to the second, Racine’s testimony did not support the idea that consumers use “Moke”

as a generic term, both because Racine is not a member of the relevant consuming public,

and because Racine’s testimony consistently used “Moke” as a specific brand. And

without evidence to the contrary, the inherent distinctiveness of “Moke” should have

carried the day. See Interprofession du Gruyere v. U.S. Dairy Export Council,

, 426 n.8 (4th Cir. 2023); Glover v. Ampak, Inc.,

(4th Cir. 1996). I turn

now to explaining these two mistakes in more detail.

A. Trademark Law Permits Exploiting an Abandoned Mark

The district court mistakenly thought the parties’ own usage of “Moke” cut against

them because it mistook the permissible effects of trademark abandonment with the

55 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 56 of 68

symptoms of trademark genericness. To understand, we must back up and start from the

foundations of trademark law.

Trademark law exists to support two aims: First, it “protects the goodwill

represented by particular marks”; and second, it “allows ‘consumers readily to recognize

products and their source,’ preventing ‘consumer confusion.’” George & Co. LLC v.

Imagination Ent. Ltd.,

, 392–93 (4th Cir. 2009) (quoting OBX-Stock, Inc.,

558 F.3d at339); see also Robert G. Bone, Hunting Goodwill: A History of the Concept of

Goodwill in Trademark Law,

, 549 (2005) (laying out trademark law’s

twin aims and describing the tension between them). Seeing these aims, one might

intuitively believe that the law does not grant trademark protection to a party seeking to

capitalize on another’s effort in cultivating goodwill (which would contravene the first aim)

by intentionally getting customers to recall the previous source of a product (which would

contravene the second aim).

For the mine run of lawsuits—where an undisputed trademark holder sues an

alleged infringer—this intuition is correct. A party who uses a mark that “is likely to cause

confusion . . . as to the origin, sponsorship, or approval of his or her goods, services, or

commercial activities by another person” is liable to that other person. § 1125(a)(1)(A). 3

The alleged infringer’s intent is material to this likelihood-of-confusion analysis, as courts

presume that an intentional attempt to confuse consumers will succeed. See Sara Lee

3 This is the trademark infringement statute for unregistered trademarks. There is a separate but substantially similar trademark infringement statute for registered trademarks. See

. 56 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 57 of 68

Corp.,

(citing Osem Food Indus. Ltd. v. Sherwood Foods, Inc.,

, 165 (4th Cir. 1990)). So courts will find that businesses cannot intentionally draw on

unearned goodwill by trying to use a mark substantially similar to another business’s active

trademark. See id.

But the intuition that the trademark laws prohibit capitalizing on another’s goodwill

falls apart when the original trademark holder is no longer in the picture, such as when the

original holder abandons the trademark. After a trademark is created and used, it does not

belong to its owner for all time. By statute, a mark is “abandoned” if “its use [in the

ordinary course of trade] has been discontinued with intent not to resume such use.”

. 4 Nothing else is required. And once a trademark is abandoned, it “returns

to the public domain” and can “be appropriated for use by others in the marketplace in

accordance with the basic rules of trademark priority.” George & Co.,

(citation omitted); see also Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 17:2 (5th ed. 2024). Those basic rules tell us that the first to re-use the

abandoned mark gains priority trademark rights, along with any residual goodwill the mark

retains. George & Co.,

. The law thus freely permits the commercial

4 One statutory quirk to note: The Lanham Act defines genericide as a second type of abandonment. “A mark shall be deemed to be ‘abandoned’ if . . . any course of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used.” § 1127. Using “abandonment” to refer to two distinct concepts, however, engenders confusion. So I follow the general convention of using “abandonment” to refer only to a cessation of use without intent to reuse and reserve “genericide” for when a previously distinctive mark becomes generic over time. See Am. Online, Inc. v. AT&T Corp.,

(4th Cir. 2001) (using “genericide”). 57 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 58 of 68

exploitation of an abandoned trademark’s residual goodwill from its prior association with

the original holder. 5

So, in cases where a valuable mark is abandoned, there is often a scramble among

businesses seeking to be the first to grab the equivalent of a $20 bill dropped on the

sidewalk. The Second Circuit encountered this situation in Manhattan Industries, Inc. v.

Sweater Bee by Banff, Ltd.,

(2d Cir. 1980). In that case, General Mills

formally abandoned—apparently for tax purposes—its rights in the “Kimberly” trademark

for high-quality women’s clothing on May 7, 1979.

. Immediately, a “free-for-

all ensued.”

The plaintiff in the case began shipping women’s clothing with a

“Kimberly” mark on May 9, just two days after General Mills’ abandonment; the defendant

was one day behind, starting its “Kimberly” branded sales on May 10.

Crucially,

nothing in the case suggests that anyone—plaintiff, defendant, or Second Circuit—thought

it was illicit for either party to intentionally exploit the goodwill built by General Mills in

the “Kimberly” brand. Nor does anything in the case suggest that a lingering association

between “Kimberly” and General Mills stripped the mark of its distinctiveness as a source

identifier. Instead, the Second Circuit correctly reiterated that “[w]hen General Mills

abandoned its mark, [the plaintiff] and [the defendant] ‘were equally free to attempt to

5 In cases materially distinct from ours where abandonment is contested, some courts look at the existence of residual goodwill not as a standalone inquiry, but as evidence supporting the original owner’s intent to resume use. See, e.g., Defiance Button Mach. Co. v. C & C Metal Prods. Corp.,

(2d Cir. 1985). The reasoning is that a trademark owner is less likely to intentionally discontinue using a trademark with substantial residual goodwill. While perhaps sensible, such reasoning is irrelevant to this case since BMC claims no such intent. 58 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 59 of 68

capture the mark to their own use.’”

at 630 (quoting Sutton Cosmetics (P.R.) v. Lander

Co.,

(2d Cir. 1972)).

To be sure, trademark abandonment sits uneasily alongside trademark law’s twin

aims. An abandoned trademark’s value comes both from the efforts of the original owner

and the possibility that the public still attributes marked products to the original source. So

exploiting that value looks very much like stealing goodwill and intentionally inducing

source confusion—behavior that we might expect trademark law to prohibit. For this exact

reason, many scholars have argued that trademark law should account for residual goodwill

and potential source confusion when assessing whether a mark has been abandoned. See,

e.g., Michael S. Denniston, Residual Good Will in Unused Marks—The Case Against

Abandonment,

(2000); David S. Ruder, New Strategies for Owners

of Discontinued Brands, 3 Nw. J. Tech. & Intell. Prop. 61, 63–64 (2004); Jerome Gilson

& Anne Gilson LaLonde, The Zombie Trademark: A Windfall and a Pitfall,

, 1300 (2008); Jake Linford, Valuing Residual Goodwill After Trademark

Forfeiture,

, 816–17 (2018).

Law review articles, however, do not bind us. Rather, the chorus of academic voices

proposing a change in the law only confirms what the existing law is: Once a trademark is

abandoned through the discontinuation of use and lack of intent to resume use, any value

in the abandoned trademark from residual goodwill or attribution to the original source is

up for grabs—a fully legal boon for the first party to re-use the mark. Trademark

abandonment is like a starter gun; as soon as it goes off, anyone can immediately move to

pick up the mark. As with the “Kimberly” mark in Manhattan Industries, “a mark may be

59 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 60 of 68

seized immediately and the person doing so may establish priority of use and ownership

under the basic rules of trademark priority.” Emergency One II,

(cleaned

up). The upshot is that a party seeking to claim ownership in an abandoned mark and sue

another for infringement must show the same two things as any trademark claimant:

distinctiveness and temporal priority. If he shows them, then the re-user of the mark stands

in the same position as the first user of the mark. 6

The district court missed this. Rather than treat the parties as if they were seeking

to claim a novel trademark, the district court thought that because “Moke” had previously

been used, it needed to consider “commercial context”—namely, that “Moke” was an

abandoned mark, and that the parties intentionally sought to capitalize on its residual

goodwill created by BMC. Moke America, 671 F. Supp. 3d at 693; see also id. at 694

(“[T]he parties draw on an association between the mark and another company’s products,

seeking to exploit that association to sell their own vehicles. In that effort, the parties

implicitly disclaim that the MOKE mark identifies their products and their products

alone.”). The district court then held the parties’ attempt to exploit this residual goodwill

against them. Because it thought it would contravene trademark law’s twin aims to permit

the parties to benefit from the efforts of another, the district court required each party to

produce “evidence that consumers associate “Moke” with their particular products.” Id.

6 There is one narrow caveat. At times, a court may use its equitable powers to require an abandon mark’s re-user to avoid deceptive misrepresentations that attempt by falsehoods to “pass off” the source of the new product as the original trademark owner. See Restatement (Third) of Unfair Competition § 30 cmt. a. But even in that small subset, subsequent users own the trademark and are otherwise “free to use the abandoned designation.” Id. 60 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 61 of 68

at 695 (emphasis added); see also id. at 695–96 (“In sum, the Court finds that bestowing

trademark status on the MOKE mark would disserve the policy rationales undergirding

trademark protections, irrespective of which party ultimately won the mark.”).

But the district court’s understandable intuition that the parties should be prohibited

from reaping the benefits created by BMC cannot support a conclusion that Moke is

generic. By statute, trademark law allows the parties in this case to use the “Moke” mark

and capitalize on BMC’s residual goodwill. Thus, the fact that “Moke” was previously

trademarked and then abandoned changes nothing about the burden placed upon each party

to show distinctiveness. Whether or not this is prudent policy, it is the law that Congress

has chosen and that this court has consistently recognized. See § 1127; George & Co., 585

F.3d at 400-01; Emergency One, Inc. v. Am. FireEagle, Ltd.,

(4th Cir.

2000) (Emergency One I).

Nor does it matter that some consumers may indeed erroneously associate the

parties’ products with BMC, a company that no longer makes Mokes. This just reflects

the value remaining in the trademark. As explained, a protectable mark need only indicate

a product’s source. And indicating the source is not the same thing as indicating a

particular, known source. So long as consumers would think “Moke” was a source

identifier, the mark is distinctive, even if they have never heard of such a brand before—

or, crucially, even if they associate the brand with the wrong company. 7 The trademark

7 If a trademark’s association with the wrong company was evidence of the trademark’s genericness, an infringer could get away with its infringement by simply being very successful and inducing lots of source confusion. But it should be clear why that sort of bootstrapping shouldn’t work. 61 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 62 of 68

statute makes this explicit by defining a trademark as “any word, name, symbol, or device,

or any combination thereof . . . used by a person . . . to indicate the source of the goods,

even if that source is unknown.” § 1127 (emphasis added). In other words, consumers

need only understand that a “Moke” label plastered on a cardboard box indicates who the

box came from, not what the box contains. See Rudolph Int’l., Inc. v. Realys, Inc.,

(9th Cir. 2007) (explaining the “who-are-you/what-are-you” test).

“Moke” must be able to inform consumers that a box emblazoned with “Moke” comes

from the same place as every other box bearing the same “Moke” label—nothing more. 8

Here, the parties did not need to proffer empirical evidence that consumers associate

“Moke” with either Moke America or Moke International, or any particular business at all.

They just needed evidence that consumers would see “Moke” as a brand.

B. Racine’s Testimony Was Not Evidence of Genericness

Beyond this, the district court had only one other piece of evidence it thought

weighed against finding “Moke” distinctive: Don Racine’s testimony, which the district

court took to be evidence that “the MOKE mark is perceived in the marketplace” as a

generic term for a class of car. Moke America, 671 F. Supp. 3d at 698. But the district

court, possibly influenced by the background policy intuitions already discussed, erred in

8 Not counting intentional mark duplication, in which case products bearing identical marks would come from different sources due to active infringement. We don’t consider such misuse of the mark when defining what it means to have a legally protectable mark in the first place. 62 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 63 of 68

multiple ways when interpreting Racine’s testimony. Racine’s testimony does not support

genericness, leaving the record devoid of evidence that “Moke” is anything but distinctive.

For starters, it’s unlikely that Racine’s testimony is the sort of evidence that can

even support a genericness finding. “[A] generic term is one that members of the relevant

public understand as identifying the type, rather than the source, of a product.” Gruyere,

(emphasis added). “For ordinary consumer goods”—including cars like

Mokes that are sold to the public—“it is a term’s meaning to consumers, not to

professionals in the trade, that is the test of genericness.” 1 McCarthy, supra, § 12:4. That

is, we care only about what the car-buying public thinks. As the founder of a business that

distributed Moke parts for decades, Racine is not a member of the car-buying public; rather,

his understanding of the term “Moke” is likely akin to a professional’s. That Racine was

also a “prolific consumer of all things MOKE,” Moke America, 671 F. Supp. 3d at 698,

does not change the fact that his view is colored by his professional industry knowledge.

So his understanding of “Moke” should not be taken as reflecting the relevant car-buying

public’s perception of “Moke,” which is the only perception that matters. See Glover, 74

F.3d at 59–60 (finding the testimony of various knife distributors, knife experts, and knife-

making company employees to be completely irrelevant in determining the meaning of

“White Tail,” a pocketknife brand, to the relevant public of actual or potential purchasers

of pocketknives).

Even were we to accept Racine’s testimony as evidence of the relevant public’s

understanding of “Moke,” the content of Racine’s testimony does not suggest “Moke” is

generic. The district court thought Racine referred to vehicles produced by “an unnamed

63 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 64 of 68

Chinese company” as “Mokes,” suggesting that a Moke was not a particular brand, but a

type of vehicle. Moke America, 671 F. Supp. 3d at 698. But Racine did no such thing. In

response to a question about car kits that Racine sold, kits that were used to modify Mini

Coopers to look like Mokes, Racine answered that “the Moke only came from China”—

but then immediately reworded and clarified that “[t]he kit was only from China.” J.A.

541–42 (emphasis added). In context, Racine was, at most, calling the car kit from China

a “Moke car kit.” But a third-party kit used to graft Moke aesthetics onto another car can

be labelled a “Moke car kit” without implying that “Moke” is generic in the same way

thatan electronics store selling an “Apple iPhone 12 port to USB-C converter” phone

accessory does not imply that “Apple iPhone 12” is generic.

The same logic applies to Racine’s discussion of Mokes made in Australia and

Portugal. The district court stated that Racine “could not definitively testify as to whether

the Mokes produced by Australia and Portugal were in fact manufactured by bona fide

corporate successors to BMC,” yet referred to them all as “Mokes” anyway. Moke

America, 671 F. Supp. 3d at 698. This again misconstrues the testimony. Racine was clear

that Mokes manufactured in Australia and Portugal were BMC-made Mokes, and that

“Moke” referred solely to BMC’s line of vehicles. When asked whether any company

“before 2015 manufactured Mokes,” Racine responded that “BMC, whatever that parent

company really is [named], 9 nobody other than them made them.” J.A. 520. Racine then

9 The reason for Racine’s hesitation after naming BMC is that the name of the parent company that owned Moke changed repeatedly. As Racine later explained, “[t]he English were not good at maintaining businesses and [BMC] went through a number of hands (Continued) 64 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 65 of 68

clarified that “the Australian Moke . . . was a continuation of the exact same product,

simply made in Australia rather than made in the UK,” and that “a version of BMC in

Portugal made Mokes.” J.A. 521–22.

In fact, far from being unclear, Racine was unequivocal in reserving the term

“Moke” for either BMC’s vehicles or for his own company’s cars that were meant to mimic

BMC’s Mokes, and his one statement that could be interpreted to support genericness was

induced by the district court’s own confusion. 10 After Racine stated that “Moke was just

another vehicle within [BMC’s] umbrella of the various cars they were making,” the

district court interjected and asked, “It’s a style of vehicle; is that right?” J.A. 537–58.

Racine politely replied, “You could say that, sure.” J.A. 538. The district court latched

onto this “style” concession and used it repeatedly to support its conclusion that “Moke”

is generic. See Moke America, 671 F. Supp. 3d at 688, 691, 693, 694, 701.

The district court’s conclusion that Racine was using “Moke” as a generic “style”

reflects a misunderstanding of how car naming conventions work. A car maker’s name

can be a trademark, and a car model’s name can itself also be a trademark. 11 Stating that

. . . BMC was one of the names . . . and then they became Jaguar Rover Triumph . . . [a]nd then it became Leyland.” J.A. 537. The hesitation was not out of any uncertainty as to whether Mokes were made by another manufacturer. 10 For reasons given in Footnote 1, Racine’s description of third-party aftermarket parts compatible with Moke vehicles as “Moke parts” should not be interpreted as using “Moke” in a non-distinct manner. 11 This isn’t limited to cars. The phrase “Apple iPhone” consists of two trademarks: the maker, Apple, and the product line, iPhone. The phrase “McDonald’s Big Mac” consists of two trademarks: the maker, McDonald’s, and the product line, Big Mac. And so on. 65 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 66 of 68

Moke was a vehicle within BMC’s umbrella was merely saying that Moke was a model of

BMC. Moke America’s counsel spotted the district court’s confusion immediately and

tried to clarify by drawing a comparison. After giving the example that “Cadillac has a car

that is called the Escalade,” counsel asked Racine “Is the Escalade a style or a brand of a

type of car?” J.A. 539. Racine replied, “I guess it’s a brand.” J.A. 539. Counsel then

asked whether “Moke” was a style or a brand of a type of car, and Racine again stated it

was a brand, adding for clarity that “Moke is indeed unique to itself.” J.A. 539. It is thus

abundantly clear that Racine used “Moke” to refer to the brand of cars made by BMC, not

to gesture at a generic style of car, like a sedan. So the district court erred in thinking

Racine’s testimony weighed against finding distinctiveness. And without Racine’s

testimony, there is nothing left to suggest that “Moke” was generic.

C. The Majority

Now that we’ve retraced the district court’s missteps, we can see how the majority

opinion improperly leaves open the possibility for the same errors to be made on remand.

The majority recognizes that a party usually satisfies its burden of showing non-

genericness simply by demonstrating that a mark is inherently distinctive. But then the

majority adds that the possibility a mark has become generic over time through usage—so-

called “genericide”—might raise the parties’ burden to show evidence of non-genericness

in a way that the possibility of genericness ab initio for a new mark does not. See Majority

Op. at 36. The majority thus suggests that the district court might, on remand, require

additional evidence to show distinctiveness.

66 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 67 of 68

But a party’s burden to show distinctiveness in the present does not change based

on whether the mark was distinctive in the past. Cf. Lucky Brand Dungarees, Inc. v. Marcel

Fashions Grp., Inc.,

(2020) (“[I]n the trademark context,[] the

enforceability of a mark and likelihood of confusion between marks often turns on extrinsic

facts that change over time.”). A party seeking trademark protection today must answer

the same questions, regardless of if the mark he seeks to protect is new or abandoned: Is

the mark, today, distinctive because it is able to “indicate the source of goods”?

. Or instead, is the mark, today, generic because it merely “names a ‘class’ of goods

or services”? Booking.com,

. So long as the evidence submitted can answer

these questions, nothing else is needed. In other words, when checking whether a term is

generic, we don’t care how it is or became generic. We just care whether it is now.

Genericide or genericness ab initio, it makes no difference. To wit, “escalator” used to be

trademarked, but “coffee” never was. But nothing in trademark law distinguishes these

words. See Am. Online, Inc., 243 F.3d at 820–21. That only the former was once a

protected trademark is a fun trivia fact, but legally inconsequential.

The majority’s concerns about genericide’s relevance might stem from the same

understandable intuition that tripped up the district court: The evidence required to claim

a mark’s ownership feels like it should be different when the mark has been previously

used and then abandoned. Without rejecting this mistaken intuition, the majority remands

this case to the district court for more factfinding because it believes that the record is

insufficient to decide one way or the other. But the evidence needed to show

distinctiveness doesn’t change based on whether the mark had a prior owner. And when

67 USCA4 Appeal: 23-1675 Doc: 66 Filed: 01/15/2025 Pg: 68 of 68

the record in this case is viewed properly, the evidence to support distinctiveness is

sufficient. The parties proffered evidence that “Moke” is an inherently distinctive word.

That is enough.

* * *

Stripped of Racine’s misunderstood testimony and of all legally inconsequential

concerns about exploiting an abandoned mark’s residual goodwill, it becomes apparent that

the evidentiary ledger here is one-sided. The evidence shows that “Moke” is inherently

distinctive, and no evidence suggests it’s generic. The district court’s conclusion to the

contrary depends on a misunderstanding of trademark abandonment law and an erroneous

interpretation of Racine’s testimony. And although the majority does not affirm the district

court, its decision to order a do-over suggests that the district court could make the same

missteps again. That is unfortunate. I would instead follow established trademark law,

reverse the district court, and hold that “Moke” is a distinctive trademark, remanding only

for proceedings downstream of the distinctiveness determination. I therefore respectfully

dissent. 12

While common sense isn’t binding precedent, I would ask readers, who are likely 12

members of the relevant class of consumers, to ask themselves: Before reading these opinions, had you ever heard of a Moke? Did “Moke” strike you as a common word akin to “minivan” or “aspirin” when you first read it? Would you fully understand a sign that said, “No SUVs and trucks on the path, only compacts and Mokes allowed”? If you answered “no” to all three questions—as I suspect you did—query whether the majority’s decision not to reverse makes sense. 68