Viral videos and the HAWK TUAH trademark bonanza

Following the internet sensation, the “Hawk tuah” video, which was posted on 11 June 2024 on YouTube and Instagram, trademark offices have been flooded with trademark applications for HAWK TUAH. The question is, can anybody claim exclusive ownership of such a phrase that goes viral? What are the trademark issues regarding viral catchphrases?

The many applications around the world

In the three weeks following the first posting of the video, it has received millions of views, and many newspaper articles, even in major news organisations like The New York Times, The Guardian, Mashable, and many others. Also, HAWK TUAH merchandise is already selling like hotcakes on different e-commerce platforms.

Trademark offices around the world have received a large number of HAWK TUAH applications for a variety of goods. The USPTO has received 18 applications, the German trademark office 7, the UK office 6, the Australian office 3, and the EU office (EUIPO) 2. There are also applications pending in Norway and New Zealand.

The most sought-after class is 25, which covers clothing and apparel. In the US there are 9 applications filed in class 25.

Other common classes are 5 and 10. For example, in the EU there are two applications for these classes, filed on 25 June and 28 June. The earlier applications cover products such as sexual lubricants in class 5, and condoms in class 10.

Many applications also cover class 3, which contains cosmetics and hygiene products.

The full list of applications is at the end of the text.

Specific trademark issues with viral catchphrases

There is nothing, in particular, that prevents the registration of viral phrases, as long as they fulfill the same criteria as other trademarks. Also, if a random person, like the “Hawk Tuah girl” in this case, utters a phrase that goes viral, she does not have any better claim for the ownership of that phrase than anybody else. In other words, it’s free game until somebody registers it as a trademark.

Trademark rights are given to whoever first applies for the mark. In this case, many of the applications share the same filing date. When that’s the case, each applicant gets equal co-existing rights, at least in most countries. In other words, if two companies file for the same trademark on the same day, they both get rights in the mark. The actual time of filing is not relevant. They get exclusive rights against everybody else except the other same-day applicant.

In most cases, the main issue is whether the phrase is distinctive. A phrase is not distinctive if it describes the goods or services, or if it is a commonly used laudatory phrase, like “Good job” or “Well done”. In this case, neither seems to be the case. A trademark could be refused if it describes the sound that a product marks. For example, the EUIPO has refused the sounds of an opening can for beverages, stating that it is purely technical and functional. In the case of HAWK TUAH, it is a verbal expression of a sound, but it is not so directly linked with any particular product or service that it would likely be considered descriptive.

Secondly, a trademark could be refused if it was against public policy or accepted principles of morality. After the Charlie Hebdo massacre in Paris in 2015 that left 12 people dead, there were dozens of trademark applications for “Je Suis Charlie” (“I am Charlie”) in France. In response, both the French and EU trademark offices issued statements saying that they would not accept “Je Suis Charlie” trademark applications because they were contrary to public policy.

Also, the EUIPO has refused trademarks that contain explicit sexual references as being against moral principles. An example of this is a refused application for “W GIRLS DOING WHATEVER THE F ____ THEY WANT”. In the present case, the sexual reference does not appear to be too direct and immediately understandable to make the trademark to be against principles of morality.

In fact, the EUIPO has already examined the word mark application for HAWK TUAH, and considered it registrable. In other words, the mark is distinctive and not against public policy or morality.

The second application in the EU contains a suggestive image, so it is not impossible that the application could be refused. Also, the application contains a Texan flag, which is another possible ground for rejection of the application. You can see the application here.

The final issue with viral phrases is that they come and go. Trademark applications take a long time to be processed, so when the registration is granted, the world is already talking about the next viral video.

Even if the EUIPO has examined the first application already, there is now a three-month opposition period before the mark is registered. In the US, the examination will take months, and in Canada, it could be years.

Donald Trump’s misspelled tweet “Covfefe” inspired almost 100 trademark applications around the world. With the benefit of hindsight, they don’t now seem like such brilliant investments.

Conclusion

Viral catchphrases can be registered as trademarks if they are distinctive and not too offensive. This is the case also with HAWK TUAH. However, by the time the registration is granted, the world will have moved on making the trademark next to worthless. If you plan to capitalise on viral trends, your best bet is to focus on lighting fast execution (for a short period of time) and forget about obtaining trademark protection.

Read more
Immoral and offensive trademarks at EUIPO
“I can’t breathe”. Trademarks and social movements
Using nation brands as trademarks

You can see an up-to-date list here