Can the name of a state be trademarked so that no one else can use it in a particular line of business? Last week, in connection with the denial of the trademark application filed by the producers of the podcast SERIAL, we wrote about the difficulty of trademarking brands that are descriptive of the product that they promote. What could be more descriptive than the name of a place where the product originates? Yet on Sunday, the NY Times ran a front page story about a legal moonshiner in Kentucky who is being sued by the University of Kentucky for using the name KENTUCKY MIST on shirts and hats to promote his craft moonshine. The University claimed that it owns the trademark for the word “Kentucky” when used on clothing. Can they really do that? Does a media company need to worry about branding a program featuring the name of the geographic location in which they operate?
It depends. Trademark law is, among other things, designed to protect consumers from confusion. When the Trademark Office is analyzing a new federal trademark application, it will look to see whether a mark is “confusingly similar” to any existing registrations or pending applications. As part of this analysis, it will analyze the similarity of the marks, the types of goods and services offered in connection with the marks, and the channels of trade used to sell or promote the goods/services. If a proposed mark is too close on these fronts to a registered mark, the Office may deny the application (or in the case of a lawsuit, a court may find merit to the infringement claim). This can happen even if the mark incorporates a descriptive term, like a geographic area. Does this mean that broadcasters are precluded from incorporating the name of their state in a program title or station tagline if there is an existing registration for that state name? Thankfully, no – but it doesn’t mean that you shouldn’t do your due diligence before adopting your mark. Below are a few tips to help you assess whether your proposed mark is at risk of getting into trademark hot water.
As we explained in our post about SERIAL, descriptive marks – including geographical terms – CAN be protected as a trademark IF that mark has so closely become associated with a particular product that consumers naturally recognize that brand (what is called “secondary meaning”). If a geographical mark has acquired secondary meaning, then it is entitled to trademark protection, which was how the University of Kentucky was able to get a registration in 1997 for the KENTUCKY® mark for hats, t-shirts, jackets and other items of clothing. (The Trademark Office might not be quite so receptive to the application today). So if a broadcaster were to adopt a mark incorporating the term KENTUCKY, the trademark analysis would be the same as for any other mark. The quick questions to ask are: are the marks similar, and are the goods/services similar? If the answer is “yes” to both, then you may have a trademark problem – even if the mark is a geographic term.
Say, for example, you want to run a radio program called “KENTUCKY!” Does this infringe the University’s KENTUCKY® mark? Probably not – even though the marks are largely identical, the services are fairly far apart. But what if you were also using the KENTUCKY! mark on T-shirts and other swag as giveaways to help promote the show? That use would arguably draw a demand letter from the University. Why? Because those are goods that are covered by the University’s trademark registration for KENTUCKY®.
Let’s take our example a step further – what you wanted to name your show KENTUCKY BEAT? That’s a safer bet. Small variations can make a big difference in a trademark analysis if a portion of the mark could be considered descriptive.
But wait – we’re not done yet. What if you wanted to put your KENTUCKY BEAT mark on a shirt using the University’s school colors? Well, that would put you back into those dangerous waters, as it could suggest an association with the school. This is, in fact University’s real gripe with the KENTUCKY MIST mark – although it is opposing the moonshiner’s trademark application, it has said that it only wants the applicant to agree that it will not use the school’s colors, blue and white.
It may seem that the University’s position is a stretch given the differences in the respective marks, but it serves as a useful reminder of our final point. Some colleges have the reputation for being trademark bullies, which simply means that that they aggressively seek to protect their marks, and will sometimes try to stop a third-party use of a mark even if in cases in which some would suggest that they don’t have a strong legal leg to stand on. So unless you’ve got a big budget, a stomach for uncertainty and lots of time to spend on a long legal battle, you may want to take extra care to steer clear of university marks. (Some sports franchises and leagues are also often perceived as trademark bullies, as are a number of specific companies.)
In sum, you can continue to use state and other geographically descriptive terms in your marks even if an existing registration incorporating the state name already exists, but should take the same approach as you should with any mark – conduct a trademark search, assess your risks, and when in doubt, consult your friendly trademark attorney!