UofK not cheering for Kentucky name share
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Can a state's name be trademarked? That at least is the contention of the Lexington-based University of Kentucky which has sent a “cease and desist” order to a distiller, Whitesburg, Kentucky-based Kentucky Mist Moonshine Inc. for applying for a trademark registration under its company name that includes the name “Kentucky”.
According to an amended complaint filed in U.S. District Court in Lexington in January, the university contends its own trademark application for the Kentucky mark was granted by the U.S. patent office in 1997 although, as Kentucky Mist points out, the name Kentucky has been in use since at least 1792.
The university said in its cease and desist letter that it is worried Kentucky Mist's plans to use the trademark on clothing will cause “confusion” as to the distiller's affiliation with the university.
But as John C. Greiner, a partner with Graydon Head & Ritchey L.L.P. in Cincinnati, who revealed the litigation in an article last week, says this confusion is unlikely. “One is an alcoholic drink, and the other is place where people go to play hoops for a year prior to the NBA. It's an easy distinction.”
Mr. Greiner points out also it is puzzling why the university has chosen now to battle on behalf of its Kentucky trademark. “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,” Mr. Greiner said.
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