Can you trademark a word with a cultural meaning? Be cautious.

On Behalf of | Mar 16, 2020 | Trademark Law |

If you’re opening a Mexican restaurant, you don’t call it “Jenny’s.” You choose a name that carries cultural cachet and implies what you’re selling.

When a Phoenix-area restaurant opened selling Asian-Mexican fusion cuisine, it hoped to capture both cultures with its name. It chose “Panda Libre.” Panda referring to the bear, of course, and “libre,” the Spanish word for “free.”

The name didn’t go over well with Panda Express, which claims to have trademarked the word “Panda” when used in connection with restaurants and food products.

Last month, Panda Express sued Panda Libre for trademark infringement. It is asking to have Panda Libre be forced to destroy its signage, menus — even social media posts that bear the name. It’s also seeking all of Panda Libre’s profits.

Can Panda Express actually claim exclusive trademark rights to the word “panda”? That remains to be seen. But businesses that choose names with cultural cachet should be wary of potential backlash.

Cultural words can be treasured, appropriated

Consider the case of the Kogi Korean taco truck in Los Angeles. The word “kogi” is a mashup of “gogi,” the Korean word for meat, and the letter ‘K,’ which stands for Korean barbeque.

That seems unique enough to pass muster, but in 2009 the Tex-Mex chain Baja Fresh applied to trademark the word “kogi” for a line of Korean-inspired tacos and merchandise.

Loyalists for the Kogi Korean taco truck were outraged that the larger company seemingly sought to steal the made-up word. There were immediate online protests and, within a day, Baja Fresh apologized. It will use the word “gogi” instead and has dropped its effort to trademark the word “kogi.”

Or consider the use of the word “poke,” which refers to a style of Hawaiian marinated raw fish. In 2018, a Chicago-based restaurant called the “Aloha Poke Co.” trademarked its name and began sending case-and-desist letters to others using the word “aloha” or the phrase “aloha poke” — even though some users predated the Aloha Poke Co.

Social media erupted with rage over what felt like a mainland company trying to keep native Hawaiians from using their own language to describe their own food.

One Hawaiian shop, the “Aloha Poke Shop,” was advised by the Aloha Poke Co. that it would be permitted to use the trademarked phrase because it was located in Hawaii.

“Hawaiian poke has been around for hundreds of hundreds of years. It’s like a cheeseburger. You can’t trademark cheeseburger,” argues the owner of the Aloha Poke Shop.

Does your business name include cultural shorthand? It could be one more thing to be cautious about. Beyond trademark concerns with competitors, you may risk raising the ire of potential customers.