Kentucky, Basketball, Moonshine and Trademarks

April 13, 2016

By David Posteraro

trademark dispute

A front page article in the Sunday April 10, 2016 print edition of The New York Times reported on a trademark dispute between the grandson of a bootlegger and the University of Kentucky.

At issue is who owns the rights to the name “Kentucky”.

Colin Futz, whose family had a tradition of bootlegging, began a craft distillery business in Whitesburg, Kentucky making peach and blackberry infused whiskey. He called his business and product “Kentucky Mist Moonshine”. In addition to the whiskey, Mr. Futz sold T-shirts, hats, and other apparel in the distillery’s gift shop. That didn’t sit well with the University of Kentucky. In a series of letters the University demanded that Mr. Futz cease to use the “Kentucky Mist Moonshine” trademark for clothing claiming for itself the exclusive rights to the word “Kentucky” for clothing based upon its 1997 trademark registration for the mark KENTUCKY for athletic jerseys, hats, T-shirts, sweatshirts and jackets. When Mr. Fitz’s application for registration of his mark KENTUCKY MIST MOONSHINE was published for opposition, the University filed its opposition.

Mr. Futz countered by filing suit in federal court in Lexington, seeking to force the university to drop its opposition to the trademark. The university has sought to have the case dismissed claiming that as an arm of the state, it has sovereign immunity and cannot be sued. No decision has been issued.

Geographically descriptive trademarks are generally refused registration unless the owner can show that the mark has acquired distinctiveness. Potential trademark users should be leery of using geographic names particularly if their use conflicts with prior registrations.

Why was this front page news?

College sports are big business and the licensing rights to University names are the source of significant revenue for universities and their athletic departments. The retail marketplace for college-licensed merchandise in 2013 was estimated at $4.59 billion most of which was generated by the sale of clothing apparel.