Using a foreign word in the United States as a trademark is a common naming practice. Sometimes, the foreign word possesses a cache that its English counterpart does not. Depending on the word, this practice can have some negative consequences.
In August of 2018, we saw the outrage from Hawaii when a Chicago-based restaurant chain tried to tell a single location Hawaiian restaurant it could not use the word ALOHA as part of its business name. And as 2018 was drawing to a close, we saw the same outrage against Disney manifested in a petition posted on the Change.org website. The petition was started by Shelton Mpala and has 178,813 supporters.
The problem, as Shelton Mpala sees it, is that “Hakuna Matata” is a Swahili phrase that translates to “no trouble” in English. It is a word that has been used by most Kiswahili-speaking countries and Disney’s trademarking the word is stealing a portion of African culture.
Disney has trademarked the phrase HAKUNA MATATA for t-shirts. But Healthy Pride Supplements has trademarked the same phrase for “multi-vitamin preparations; vitamin supplements; dietary and nutritional supplements” and another company has trademarked the phrase for wedding planning.
Trademarking a foreign word does not mean the word cannot be used in any context or any purpose. What it means is that in a commercial context on certain goods and services, prospective purchasers have the right not to be confused between the goods or services being offered in the marketplace. After all, trademark law is a consumer protection law.
In the case of Disney, that does not even mean that HAKUNA MATATA can never be used on a t-shirt by anyone. A purely ornamental as opposed to a trademark use of the phrase HAKUNA MATATA is allowed despite Disney’s trademark rights.
Nevertheless, while the Chicago-based restaurant may have had a better argument regarding the use of ALOHA by another restaurant, companies choosing to adopt foreign words as their trademark in the United States need to consider the non-trademark backlash that may result because of the general misunderstanding of trademark rights.