The University of Kentucky (UK) is trying to stop the makers of “Kentucky Mist Moonshine” from using the word “Kentucky” in their product because the University claims to own the trademark on the word “Kentucky.”

If that sounds ridiculous to you, you’re not alone. Pretty much every lawyer who’s taken a look at it thinks the same thing. Except, one supposes, the ones working for the University of Kentucky (UK).

There’s BIG money in university sports programs. According to USA Today, UK had $116 million in sports-related revenue during the 2014-2015 school year. So it’s no surprise that they are eager to protect their “brand.”

“University of Kentucky” — and sports related variations including team names, such as “UK Wildcats” — are certainly protectable as a trademark. But just the word “Kentucky?”

A quick search of the US Patent and Trademark Office’s (USPTO) database shows 442 instances of the word “Kentucky” appearing in a trademark or trademark application. Marks that have already been granted by the USPTO include the “Kentucky Oil and Gas Association” and “Kentucky Moonshine,” not to be confused with “Kentucky Mist Moonshine.” In fact, if anyone should be giving Kentucky Mist Moonshine a hard time about their trademark application, it should be “Kentucky Moonshine,” not UK.

Trademark for Names of Places?

The USPTO’s guide for trademarks explicitly says:

USPTO will also refuse registration of a proposed mark for many other reasons, including but not limited to the mark being: a surname; geographically descriptive of the origin of the goods/services...

As described in the manual for trademark registration, a generic term, such as “Camembert” cannot be trademarked, and combining it with a place name, such as “Normandy Camembert” still can’t merit trademark protection because all it does is describe where the cheese comes from.

Incorporating a place name in a trademark — as in “Kentucky Oil and Gas Association” — is fine.

But for the University of Kentucky to claim they have a trademark on any use of the word “Kentucky” in any item of clothing is more than a stretch.

The UK Case

According to the NYTimes, back in 1997 the University of Kentucky somehow managed to get a trademark on the word “Kentucky” for clothing. Even if such a generic trademark would survive a court challenge — and it’s not at all clear that it would — “Kentucky” is clearly not the same as “Kentucky Mist Moonshine.” There’s virtually no chance that someone would confuse “Kentucky Mist Moonshine” on a t-shirt with anything associated with the University of Kentucky. And that’s the main concern the USPTO has (other than general eligibility) in deciding whether or not to grant a trademark: is there a possibility of confusion with an existing mark?

Eastern Kentucky, where Kentucky Mist Moonshine is based, is famously the home of the Hatfields and McCoys — two families that had a 30-year long feud in the 1800s that killed dozens of people. Jim Francis, lawyer for Kentucky Mist Moonshine owner Colin Fultz, said, “The last thing you do is fire off a threatening letter in Eastern Kentucky. That only results in one thing: You’ve got a fight on your hands.”

Even though most legal experts think Fultz is going to win his fight, the fact that he has to fight at all, and against a better-funded opponent, highlights one of the challenges new businesses may face in establishing their brands.

(Photo Credit: "UK Cheerleaders carrying the letters of Kentucky" by Chris Breeze is licensed under CC BY-SA 2.0.)