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Kentucky Mist’s lawsuit against UK is now back in federal court

A series of legal maneuvers has resulted in Kentucky Mist Moonshine Inc.’s trademark lawsuit against the University of Kentucky being returned to federal court only two days after it was dismissed voluntarily by the distillery.

This time, on December 23, the suit was returned to U.S. District Court in Lexington at the request of three attorneys representing the university in its attempt to stop Kentucky Mist from obtaining a federally registered trademark for the logo it uses on shirts, hats and other items of clothing sold at the distillery’s Whitesburg location.

The university’s attorneys — two from private Lexington firms and one on staff at the school’s campus — had the case reinstated in federal court after Kentucky Mist filed a lawsuit in state court December 22 that was nearly identical to the one that U.S. District Judge Danny C. Reeves dismissed the day before. Reeves ordered the original suit set aside “without prejudice,” meaning it could be filed again by Kentucky Mist.

“The Court should have a strong sense of déjà vu. This case is back in the same posture as it was on the morning of Monday, December 21,” UK attorney Bryan H. Beauman writes in a memorandum filed in federal court last week as part of UK’s second attempt to have Kentucky Mist’s lawsuit dismissed.

The school originally filed a motion seeking dismissal of the lawsuit on December 4, but Judge Reeves declared that motion “moot” after Kentucky Mist withdrew the original complaint. Beauman works for the Lexington law firm of Sturgill, Turner, Barker & Maloney. He and UK General Counsel William E. Thro entered the case during the weeks after attorney Michael Hargis of the Lexington firm King & Schickli wrote a letter to Kentucky Mist co-owner Colin Fultz demanding that the distillery drop its attempt to register its logo since it includes the name “Kentucky.”

Neither of the two lawsuits filed by Kentucky Mist seeks any type of monetary damage against UK. Instead, the distillery wants a judge to declare that Kentucky Mist has the right to proceed with the process of trademarking its logo without being subjected to the legal action that UK and Hargis threatened by letter dated October 12, less than two weeks after the distillery opened.

Kentucky Mist’s latest complaint, prepared by attorney James M. Francis of the Lexington firm Fowler Bell and filed in Fayette Circuit Court December 22, says that UK should not be able to claim ownership of the word “Kentucky” because the word “is primarily a well-known geographic reference that lacks distinctiveness.” The complaint also asks that a judge declare “there is no likelihood of confusion” between UK’s trademark and the distillery’s logo, which is based on a photograph of fog-filled valleys taken from atop Pine Mountain.

In its latest memorandum in support of its motion to dismiss Kentucky Mist’s lawsuit, UK’s three attorneys again claim the university is immune from a civil lawsuit because it is “an agency of the commonwealth.” In addition to that claim of “sovereign immunity,” the UK attorneys say the federal court has “lack of jurisdiction” in a trademark case that hasn’t been through the “administrative process” required by the U.S. Patent and Trademark Office.

“The university moves to dismiss on the exact same grounds that it raised in its original motion,” UK’s December 23 memorandum says. “In short, all of the parties are exactly where they started on two days ago. As this (federal) court has consistently recognized, the university is immune from suit in this court for most of the claims arising under federal law. Alleged violations of the Federal Trademark Act are no different. All claims against the university should be dismissed.”

As of Tuesday afternoon, Kentucky Mist had not filed an answer to UK’s latest motion for dismissal. Frances, the distillery’s attorney, could not be reached for comment. Kentucky Mist co-owner Fultz said he has been asked not to comment on the litigation.

A civil attorney who asked not to be identified told The Mountain Eagle that it appears Kentucky Mist filed its suit in Fayette Circuit Court last week because state courts can hear trademark cases just like federal courts, and that there is no sovereign immunity for declaratory judgment actions in state courts.

UK’s latest memorandum for dismissal of the case also repeats a claim that Kentucky Mist “seized upon an opportunity to garner publicity for its new business and released information about the university’s [October 12] letter to it local newspaper.”

Eagle editor Ben Gish again this week said there is no truth to the claims by the UK attorneys that Kentucky Mist contacted The Eagle about the case, which was first reported on by the paper in its October 21 edition.

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