More Troubles for Lorillard/Blu as It Now Must Fight University of Kentucky for Right to use “Blu Nation”

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UPDATE: This dispute appears resolved. Blu will be allowed to use its Blu Nation trademark.

Back in May, it appears that Lorillard filed for a trademark of “Blu Nation” which it planned to use for its Blu electronic cigarette customer loyalty program. Now it seems the University of Kentucky is fighting the application as it claims the trademark will infringe on their “Big Blue Nation” trademark — which they’ve had since 2004.

The fight could be a tough one for both sides.

While UK’s trade mark has existed for longer, it is often very difficult to defend descriptive word trademarks. Big Blue Nation could apply to any large national group that uses blue as its signifying color. It’s be like owning a store called the Large Hat Store and then suing anyone that creates a Hat Store.

At the same time, Blu Nation is, one might argue, reasonably different in both spelling and use. They also apply to completely different campaigns — a primarily sports based fan phrase versus as fairly confined consumer loyalty program. Trademarks are allowed to overlap if they apply to different areas. So there can be a Bob’s Retail Outlet and a Bob’s Hair and Nail Salon at the same time. Want a real life example? How about Njoy — which is used by both an electronic cigarette brand and an adult toy company.

But the UK is focusing on the argument that the new trademark will dilute the value Big Blue Nation and possibly even tarnish it by associating the two together. This could be a successful argument if the arbitrators accept that relating electronic cigarette use to something does in fact “tarnish” its value. Thus far, there’s no evidence e-cigs deserve this kind of treatment — though Lorillard as a primarily tobacco cigarette company probably does.

Meanwhile, Lorillard may have a difficult fight as well. Often trademark fights are simply determined by who got there first. And no matter how neutral the arbiters might suggest they’re being, it may be difficult for them to side with a tobacco company over a university in any dispute without angering a great many educational and anti-smoking advocacy groups and citizens. Even a compromise might be spun as a win for Big Tobacco.

You can read more about the fight right here.