The Hakuna Matata Trademark #trademark #ip

Blog posts cannot substitute for legal advice. If the topics discussed in this post are relevant to a real case you have, please consult an attorney.

A brief discussion at work led to a Google search, which in turn let to this New York Times article from December, 2018:

Discussion TL;DR: A restaurant called the Hakuna Matata Grill recently opened in Wheaton, MD.

Article TL;DR: People were up and arms for Disney filing for a trademark in the phrase “Hakuna Matata.” One part of the argument was that it represented cultural appropriation. I’m not going to touch that one. The other part of the argument was that trademarking the phrase would remove the phrase from the English language. As the article points out, this represents a misunderstanding of trademark law. Specifically, it’s confusing the rights of trademark with those of copyright (though even copyright wouldn’t actually prevent the public from using the phrase).

In 1994, Disney filed for the trademark, “Hakuna Matata,” for use with clothing or footwear. That means that no one else can use that phrase as a brand name for clothing or footwear. It doesn’t prevent people from walking around saying, “Hakuna Matata,” it doesn’t prevent me from writing this post, and it doesn’t even prevent other people or companies from registering that trademark as a brand name for something other than clothing and footwear. Don’t believe me? Run an online search. As of this writing, there are four active trademarks in the US for Hakuna Matata being used used by four different companies. There’s also an active registration filed by a company in China, but Disney filed an opposition to that one on 7/31/2019, so it’s not yet registered. The reason for the opposition is that the Chinese company wants to use the mark in association with clothing.

Also interesting is that Disney opened the Hakuna Matata restaurant in their Paris theme park, but because that restaurant doesn’t exist in at least two US jurisdictions, Disney couldn’t get a federal trademark for the restaurant industry. The Wheaton restaurant is under no threat of a trademark infringement lawsuit from Disney.

This is much ado about nothing. Not only is the phrase still publicly usable by everyone, but you can even mention Disney’s trademark as long as there’s no reasonable chance of the typical person assuming Disney is endorsing that person’s own goods or services. I have several posts covering trademarks. Just go to the menu above and select “Intellectual Property,” and then “Trademark Law.”

Follow me on Twitter @PropertyAtty

Rob Bodine is a Virginia attorney focusing his practice on real estate and intellectual property law. He’s currently Virginia counsel with First Class Title, Inc., a Maryland title insurance and settlement company. Rob is also a licensed title insurance agent in Maryland and Virginia.