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Appeals court says not so fast on chocolate nut pie name lawsuit

Posted On: Jan. 12, 2021 2:01 PM CST

derby pie

The owner of DERBY-PIE — which holds a federal trademark for a “well-known chocolate nut pie” — finished out of the money in his lawsuit against a Louisville, Kentucky, newspaper that published a recipe for the popular race-day dessert, a federal appeals court ruled Monday in dismissing the suit.

DERBY-PIE owner Alan Rupp sent a letter to the Louisville Courier-Journal contending that an article published in 2017 and featuring a “Derby pie” recipe “constituted a knowing infringement on its trademark.” A few weeks later the newspaper published an article on a local baker who makes macaroons with the flavor “Derby Pie,” thus prompting Mr. Rupp to file his suit in a federal court in Kentucky.

The lower court dismissed all claims, writing in part that Mr. Rupp did “not plausibly establish that there is a risk of consumer confusion” between the trademarked DERBY-PIE and the home-made pie.

A federal appeals court agreed, writing that “the Courier-Journal has used the phrase ‘Derby pie’ in a ‘wholly descriptive manner,’” and that “we can assuredly say that the Courier-Journal did not use ‘Derby pie’ in a trademark way.”

Mr. Rupp’s lawsuit also lacked a key ingredient: similarity, the court wrote, adding that it was the man’s “own evidence” that revealed that “no reader could possibly think that a so-called ‘Derby pie’ containing bourbon and no vanilla came from the company or companies associated with DERBY-PIE.”