Hawk Tuah and Register That Thang

It’s hard to believe that a late-night street interview on the wild streets of Nashville could unleash a bar exam’s worth of trademark issues, but that is precisely what is unfolding with the internet’s latest superstar, “Hawk Tuah Girl.”

The Hawk Tuah Girl is Hailey Welch, who gained internet fame after a humorous and candid response during a man-on-the-street interview with Tim & Dee TV at the CMA Fest in Nashville. See for yourself.

Originally from right down the road from us in Belfast, Tennessee, Ms. Welch has since capitalized on her sudden fame through merchandise sales and has become a notable internet personality with plans to expand her career further.

Amidst the whirlwind of her skyrocketing fame, she decided to hold off on filing a trademark application to register the mark. This has set off a chain reaction of potential issues. 

The U.S. has a “first to use” trademark system

To understand the issues here, you need to understand the U.S. trademark system. The United States operates under a “first-to-use” trademark system rather than a “first-to-file” system. In this system, trademark rights are primarily acquired through actual use of the mark in commerce rather than just by filing an application with the United States Patent and Trademark Office (USPTO). This means that the first party to use a trademark in commerce has priority over others who might file an application for the same or a similar mark later.

You can, however, “reserve” a use date by filing an intent-to-use application. This type of application treats the filing date of the application as the effective use date of the trademark.  

The Hawk Tuah Problem

Ms. Welch did not immediately apply to register HAWK TUAH.  Her application was filed July 2, 2024. By the time she filed, there were already 26 applications for HAWK TUAH or similar trademarks (there are now 29). 

While she was clearly the person to make the phrase famous, the USPTO will typically address these applications in the order they were filed. Therefore, either the USPTO or Ms. Welch will need to invalidate (or otherwise address) all of the previous applications before her application can proceed. This could end up being a time-consuming and expensive process, and raises multiple complex trademark issues such as trademark use and timing of that use, name and likeness rules, and failure to function issues.

What to do if you get internet-famous

So, how does one properly handle the trademark issues that result from an explosion of fame like this? File as early as possible. In fact, this is good advice for any business.

Filing a trademark application early is crucial for several reasons. First, it establishes your priority claim over the trademark, which is vital since trademark rights are generally granted to the first party to file, rather than the first to use the mark. This means that by filing early, you can prevent others from registering a similar mark and potentially infringing on your brand. Additionally, an early application can help you identify and address any potential conflicts or objections from the trademark office or other trademark holders, allowing you to make necessary adjustments before investing heavily in branding and marketing. 

Everything may end up working out just fine for Ms. Welch, as she has credible arguments to support her as the first user of the mark. But, things would have been so much easier and cheaper if she had immediately “registered that thang.”