There is litigation underway in a federal court in Kentucky to determine whether the University of Kentucky can enforce a trademark prohibiting a moonshine maker from the using the word “Kentucky” as part of its brand. I am not making any of this up.
A Kentucky company that makes “Kentucky Mist Moonshine” sought federal trademark registration for that mark to be placed on hats, hoodies and other apparel. And to be clear, this is legal moonshine. So, that’s not the problem.
The problem is the University of Kentucky (aka “Big Blue Nation”; “One and Done U.”; “The Evil Empire” – I have lots of these, they knocked Notre Dame out of the Elite 8 last year after all) objected to the registration request, contending that it owned the trademark to the term “Kentucky.” Not “University of Kentucky” or “UK.” Just “Kentucky.” UK acquired a trademark on the term in 1997. But it wasn’t the only one. According to the lawsuit, the word “Kentucky” appears in 45 federally registered trademarks unrelated to UK. Eleven of those were registered before UK’s registration.
In March, 2015 Kentucky Mist Moonshine applied for a trademark for the product name – Kentucky Mist Moonshine. That drew a “cease and desist” letter from the University. In response, Kentucky Mist Moonshine filed the federal action seeking “a partial cancellation or reformation of the KENTUCKY mark in international trademark class 25 as well as a declaration by the Court that there is no likelihood of confusion between the marks, [and] there is no trademark dilution caused by either the registration of the KENTUCKY MIST MOONSHINE mark or the commercial use of the mark . . . .”
The case is pending, awaiting resolution. Kentucky Mist Moonshine makes several arguments. First, it contends the term “Kentucky” “is primarily a well-known geographic reference that lacks distinctiveness and does not serve as a source identifier for the Defendant.” That is, standing alone, the term “Kentucky” does not immediately conjure up images of UK any more than it does racehorses, mint julips or bourbon. In addition, Kentucky Mist points to the “widespread use” of the term by others prior to the time it registered the mark. Finally, Kentucky Mist notes the term “Kentucky Mist Moonshine” is unlikely to cause confusion with the term “University of Kentucky.” One is an alcoholic drink and the other is a place where people go to play hoops for a year prior to the NBA. It’s an easy distinction.
And if another entity’s use of the term “Kentucky” is so problematic for UK, it begs the question why it hasn’t tried to stop the use of the term by the Kentucky Fried Chicken chain, or the Kentucky Derby. The lack of consistency doesn’t help its case.
I understand that any institution has a vested interest in protecting its trademarks and defending its brand. But there are limits. And attempting to shut out the use of a state name seems a little over the top.