Monday, October 26, 2015

Rural distillery in legal battle with university, which claims it owns the rights to word 'Kentucky'

A rural distillery in Eastern Kentucky has found itself in a legal battle with the University of Kentucky, which claims it owns the rights to the word "Kentucky" and wants Kentucky Mist Distillery to stop using the word on shirts promoting its business, Linda Blackford reports for the Lexington Herald-Leader. Kentucky Mist co-owner Colin Fultz said he received a letter from UK attorneys saying the university has trademarked 'Kentucky' since 1997. The Mountain Eagle in Whitesburg first reported the story. The newspaper is behind a paywall. (UK lawyers claim this shirt could confuse people into thinking it was related to the university)

The UK letter states: "It is our present position that Kentucky Mist Moonshine Inc.'s use of the mark KENTUCKY MIST MOONSHINE to identify articles of clothing is likely to cause deception, confusion and mistake as to Kentucky Mist Moonshine Inc.'s affiliation, connection or association with the university." The letter goes on to state that UK will "consider further action as it deems necessary," Blackford writes.

Fultz told Blackford, "What they're saying is crazy; all I'm using is the name Kentucky. The only thing that we trademark was Kentucky Mist Moonshine . . . we just wanted to sell our own shirts."

Jason Schlafer, UK's director of trademark licensing, "said the problem is that Kentucky Mist Moonshine is trying to register with the Federal Trademark Registry in the same category, Class 25, in which UK is registered. This category includes shirts and sweatshirts." Schlafer told Blackford, "It is the obligation of a trademark owner to monitor the registry and ensure that marks that could dilute your registered mark don't register."

The Eagle reports that Kentucky Mist has acquired a Lexington-based attorney, James M. Francis. Francis said in a statement:
"Kentucky Mist Moonshine, Inc. is disappointed by the tactics employed by the University of Kentucky to claim the exclusive right to the word KENTUCKY. This represents a shameful overreach by the University and an assault on the rights of business owners across the Commonwealth of Kentucky. The action by the University is an attempt to exploit a trademark that should never have been registered by the US Patent and Trademark Office and is likely unenforceable or invalid. It is blatantly disingenuous to claim that there is a likelihood that consumers would be confused between the University of Kentucky and a small eastern Kentucky distillery and gift shop. While we hope to be able to resolve this amicably, Kentucky Mist Moonshine, Inc. is and remains a proud supporter of the University of Kentucky, it is prepared to vigorously defend its rights and the rights of all businesses, large and small, to use the name Kentucky to identify themselves, their products, their geographic location and their heritage."

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