University Of Kentucky Battles Kentucky Mist Moonshine Maker Over Hats And T-Shirts

from the kentuck-you dept

We've already established that the University of Kentucky is sort of insane when it comes to overly restrictive trademark practices. We've also established that many other educational institutions are equally asshat-ish when it comes to trademark issues, in particular, for some reason, on any matter that in any way has to do with alcohol brands. The beer and liquor industries are dealing with their own trademark issues resulting from the explosion in craft brewing, but this is the story of how the University of Kentucky has managed to convince itself and, apparently, the USPTO that it has sole ownership of the very name of the state in which it is located for use on apparel.

This all started when Kentucky Mist Moonshine opened its doors recently and, along with ostensibly selling moonshine (mmm!), the company also created apparel to sell at the distillery. You know, hats and T-shirts and whatnot, all of which had "Kentucky Mist Moonshine" branded on them. That's when the University of Kentucky stuck its nose into the distillery's business for reasons I can't even begin to understand.

UK threatened legal action against Kentucky Mist Moonshine for its pursuit of a federal trademark registration for the Kentucky Mist Moonshine mark for hats, hooded sweatshirts, jackets, pants, shirts, shoes and socks in international trademark Class 25 based on its registration of the Kentucky Mist mark.
As a result of the threat letters, Kentucky Mist has filed suit against the university, requesting either that the school's trademarks be declared invalid or, the more likely outcome, reform the registration to limit the protection of the marks to apparel that clearly attempts to trade off of an implied endorsement or association with the school. This only makes sense in terms of the purpose of trademark law, of course, which centers around customer confusion and the ability of a brand to identify itself as the source to the consumer. Kentucky Mist apparel, on the other hand, does nothing to even remotely associate itself with the school. This is all about the control of the word "Kentucky," which is the name of a location and is so generic as to never deserve trademark protection to begin with.

The school's response amounts to stating that it registered the mark and that's the end of the story.
In an email message provided to the Herald-Leader on Oct. 29, UK spokesman Jay Blanton said the university has used the word Kentucky as a trademark to identify its athletic uniforms and various articles of clothing sold to fans since at least 1940. Blanton's letter said the university registered in 1997 with the U.S. Patent and Trademark offices for the word Kentucky for clothing, educational services and collegiate athletic services.
But that's not really true. Established trademarks are reviewed all the time, particularly in the cases of glaringly generic marks such as the name of a state or other geographical location. The message went on to note just how much money the university generates by licensing the use of the word "Kentucky" for clothing, claiming that their tradedmark is "incontestable." We'll find out shortly just how true that is, given that Kentucky Mist intends to contest it via this suit, but the larger point is that a government that permits so much restriction in the name of trademark needs to do a better job of not approving such general trademarks to begin with.

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Filed Under: apparel, moonshine, trademark
Companies: kentucky mist moonshine, university of kentucky


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  • icon
    That One Guy (profile), 5 Nov 2015 @ 11:40pm

    I can see it

    I mean, when you think 'Kentucky' and 'University', the first thing that comes to mind is massive amounts of booze, right? As such, it only makes sense for them to defend their trademark, as there is a very real possibility for confusion.

    Of course I suppose the university could argue that 'booze' is not the first thing that comes to mind upon seeing those two words together, but in that case their objection to the trademark application would seem to rest on nothing more than boneheaded possessiveness over the name of the state that both university and brewery are located in, and wouldn't that just be silly?

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 6 Nov 2015 @ 1:23am

    I just got a trademark on the word "The". This should be fun. :)

    reply to this | link to this | view in chronology ]

  • icon
    Jeff Green (profile), 6 Nov 2015 @ 1:51am

    UK?

    reply to this | link to this | view in chronology ]

  • icon
    Jeff Green (profile), 6 Nov 2015 @ 1:53am

    UK?

    I think we've got the b*gg*rs there. Lets sue the pants off them for abusing the term UK. That's been the shortened version of the name of the country FKA England for over 300 years!

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 6 Nov 2015 @ 5:10am

      Re: UK?

      Too bad England didn't trademark it 300 years ago, now they're going to have to give it up! (or maybe they could license it back)

      reply to this | link to this | view in chronology ]

  • icon
    skye (profile), 6 Nov 2015 @ 2:55am

    can't copyright a common word

    You can't copyright a common word. It follows that you should not be able to trademark one either. Also, the Kentucky University's logic would imply that the State of Kentucky is also infringing their "trademark" as well as the Federal Government and anyone else using the word Kentucky in any documentation whatsoever. Ridiculous.

    reply to this | link to this | view in chronology ]

    • icon
      Bergman (profile), 6 Nov 2015 @ 9:51am

      Re: can't copyright a common word

      Yup, that's exactly right. If the state of Kentucky or the US government produced any item of clothing that contains or is stamped with the word Kentucky, the University would have standing to sue.

      Like, say, a t-shirt with the state seal on it, for example.

      reply to this | link to this | view in chronology ]

  • identicon
    David, 6 Nov 2015 @ 4:13am

    They bit off more than they can swallow

    I can't wait to see them get countersued by Colonel Sanders' estate.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 6 Nov 2015 @ 5:52am

    I am surprised they didn't think to trademark the name America. Think how much more revenue that would mean for them.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 6 Nov 2015 @ 6:11am

    I just got a trademark on the word "The". This should be fun. :)

    yeh, they told me the was taken, so i picked up the rights to of.

    the university of kentucky? you and i ought to do all right.

    reply to this | link to this | view in chronology ]

  • icon
    Oblate (profile), 6 Nov 2015 @ 8:02am

    Time to spin up the lawyers again...

    Seems ironic that this story is hosted on Kentucy.com.

    Prepare to be sued to smithereens, Lexington Herald-Leader!

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 6 Nov 2015 @ 8:27am

    Just how in the hell was anybody able to copyright or trademark the name of a state? It doesn't matter what you're intending to use the name of a state for, you cannot copyright or trademark or even license out the name of a state for anything. It's a generic word, and if I'm not mistaken, associated with government.

    The University of Kentucky needs to drop this silly ass bullshit before they end up with egg on their face. The courts are going to see for exactly that and that the courts are going to declare the university's trademarks as invalid. The USPTO is also going to end up getting with some of the crap on their face for allowing the University of Kentucky to trademark the word "Kentucky". It's like trying to trademark "Michigan" or "California". The words are generic and describe a geographical location.

    I also imagine that everyone who licensed the word "Kentucky" is going to be coming down on the University of Kentucky very hard. The University of Kentucky opened up a shitstorm that minute they went legal on Kentucky Mist Moonshine. They should have left well enough alone.

    Morons.

    reply to this | link to this | view in chronology ]

  • identicon
    Ex College Drinker, 6 Nov 2015 @ 8:59am

    Thinking they're drinking

    What? Were they drunk? Some day they are going to need a good stiff drink..

    reply to this | link to this | view in chronology ]

  • icon
    Derek Kerton (profile), 6 Nov 2015 @ 9:47am

    Grammatical Question

    Hi, long time listener, first time caller here.

    I am a huge fan of your use of the compound term "asshat-ish", even though I'm not sure if that's the correct use of the dash.

    reply to this | link to this | view in chronology ]

    • icon
      Oblate (profile), 6 Nov 2015 @ 11:20am

      Re: Grammatical Question

      He's right, a dash is not appropriate there. Any compound term containing the word 'ass' should use a colon.

      reply to this | link to this | view in chronology ]

    • icon
      Dark Helmet (profile), 6 Nov 2015 @ 2:52pm

      Re: Grammatical Question

      I find that any time you introduce a dash, it increases comedic value for whatever reason. Examples include, but are not limited to:

      1. man-sausage
      2. hate-sandwich
      3. anger-bomb

      Now, if you would kindly stop questioning the ideas I get from my head-brain, that would be lovely, okaybyethanks.....

      reply to this | link to this | view in chronology ]

      • icon
        Derek Kerton (profile), 10 Nov 2015 @ 1:18pm

        Re: Re: Grammatical Question

        I see. Thanks.

        I accept that language changes over time, and IMHO, the changes most worthy of migrating to Merriam-Webster are those of comedic value.

        I shall begin to employ "asshat-ish" asap. I was looking for a replacement for "douchebaggy" anyways.

        reply to this | link to this | view in chronology ]


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