Who Owns Hawk Tuah? | Dallas Trademark Attorney Explains Who Has Rights!

Hawk Tuah Trademark Applications

Hot on the heels of the viral Hawk Tuah video, have come these opportunistic trademark applications!
Does the original “Hawk Tuah” girl have trademark rights? Nope, sorry!

You don’t acquire trademark rights by merely uttering a phrase, you acquire trademark rights by using the trademark in commerce to offer goods and services in the marketplace. You must actually use the trademark before the trademark registration can be granted, even if you applied for the trademark before you were actually using the trademark on the goods and services.

A video recently went viral using the phrase “hawk tuah” and now several people have applied to register the trademark for things such as stickers, body lubricants, clothing, and (my favorite!) sauces. Who will have the best rights to the trademark? In this case, where competing applications were filed, whoever either 1) used the mark first in commerce, or 2) applied first on the basis of their intent to use the mark in commerce, will have the trademark rights.

When you apply based on an intent to use the mark in commerce, the first applicant has the better trademark rights, assuming that they actually file a statement of use proving use of the mark. If they don’t file that statement of use, then they can’t get a trademark registration. The bad news for the other competing applicants is that the first registrant has up to 3 years after the date of the trademark office’s approval of the trademark application — called a Notice of Allowance — to show their use of the trademark. This means that everyone else who applied afterward is in a sort of limbo, waiting for the first applicant to show use of the trademark.

So if someone else applied after the first applicant, they may be stuck waiting at least 3 years to see if they can get trademark rights if the goods and services for which they applied are related to or similar to the goods and services of the first applicant.

For example, we have here two applicants for clothing items. The first applicant has the best rights so long as they can later prove their use. The second applicant has to wait — their application will be suspended pending the outcome of the first application. Each of these people applied on the same day, so how do we know who came first? The applicant with the lower serial number came first, so they have the best rights to the HAWK TUAH trademark for clothing. They will eventually get a trademark registration if they can show use of the mark.

Until then, they may have some “common law” trademark rights as against other users, but for a phrase like this, that is not really seen as a source identifier, that’s going to be a little hard to enforce. So they might have limited enforcement rights even if they are actually using the trademark on clothing, because they don’t yet have a trademark registration to put some teeth behind their claim of ownership. If they do eventually get a trademark registration, then they can go after their infringers, but that won’t happen for at least another 10 months — the time it takes for the trademark office to respond to a new trademark applicant — and by that time, the whole “hawk tuah” trend will have likely gone by the wayside.

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