University of Kentucky and Kentucky Mist Moonshine Dispute Trademark on "Kentucky"

Colin Fultz, the grandson of a bootlegger, runs a small distillery in Kentucky that produces his signature Kentucky Mist Moonshine, and he sells T-shirts, hats, and other memorabilia bearing the name in his distillery’s gift shop. The University of Kentucky took note; although it doesn’t take issue with the mist or the moonshine, it sought to put a stop to apparel bearing the word “Kentucky,” asserting that it owns a defensible trademark to the state’s name. The university registered “Kentucky” with the United States Trademark and Patent Office in 1997 and threatened legal action if Fultz did not stop his memorabilia sales. In return, Fultz sued the university in federal court, requesting either that the school's trademarks be declared invalid or that the registration’s protection be further limited in scope.

Perhaps surprised by Fultz’s reaction, the University of Kentucky said the threat of legal action was merely a “pro forma entry to negotiations” to keep Fultz from using the university’s signature blue and white color scheme on products. Fultz, however, did not see it that way.

“We had always hoped we could have a conversation,” said Jason Schlafer, the university’s executive associate athletic director.

Geographically descriptive terms are not typically trademark-able. Legal commentators have already pointed out that while the university’s trademark may remain valid in some form, its request in this matter seems like a bit of an overreach.

But the letter perhaps should not come as any surprise given how aggressively the University of Kentucky has protected its intellectual property rights in the past. In April 2015, its basketball team held a perfect 38-0 record, two wins away from a national championship and the NCAA’s first 40-0 season. The university threatened legal action against a man who had been using his “40-0” trademark in Kentucky since 2013. Within a week, the basketball team suffered its first loss of the season.

Sources: http://www.nytimes.com/2016/04/10/us/-legal-moonshiner-and-university-battle-over-rights-to-kentucky.html?smid=tw-nytimes&smtyp=cur http://www.kentucky.com/news/business/bourbon-industry/article42658074.html https://www.techdirt.com/articles/20151105/05371132724/university-kentucky-battles-kentucky-mist-moonshine-maker-over-hats-t-shirts.shtml https://www.techdirt.com/articles/20150402/10000130521/university-kentucky-disputes-40-0-trademark-owned-someone-else-2-wins-away-achieving-that-record.shtml

For more information on this topic, please visit our Trademark Management service page, which is part of our Trademarks practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the trademark law firm and its trademark attorneys may be found at www.klemchuk.com.

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