What does the operation of a small craft distillery in Whitesburg have to do with the University of Kentucky? Nothing the eye can see, but don’t try telling that to a law firm representing the university.
While the owners of the Kentucky Mist distillery were busy labeling their first bottles of flavored spirits last Friday they received a certified letter from a Lexington law firm ordering them to abandon their effort to trademark the distillery’s name “Kentucky Mist Moonshine” and logo design.
“I don’t know what they’re trying to do,” Kentucky Mist co-owner Colin Fultz said of the demand on behalf of UK from King & Schickli, a Lexington firm whose nine lawyers bill themselves as “Kentucky intellectual property attorneys.”
Since neither Kentucky Mist’s labels, logo, T-shirts nor any other items sold at its new Main Street location bear any resemblance to any logo used by UK, the university is apparently upset because the distillery is attempting to register the word “Kentucky” as part of its trademark.
“As you may be aware,” King & Schickli attorney Michael S. Hargis writes in a twopage letter addressed to Fultz, “the University is the owner of several registrations for its marks including the mark ‘KENTUCKY’ to identify inter alia T-shirts and sweatshirts.” [Inter alia is Latin for “among other things.”]
According to King & Schickli, the University of Kentucky has owned the word “Kentucky” since it became a federal registered trademark in 1997. “By virtue of this continuous use and the longstanding registration of the mark, the registration has become incontestable,” attorney Hargis writes to Fultz.
So how did a new craft distillery located in the far southeastern corner of Kentucky draw the attention of the state’s biggest university? Apparently, a keen-eyed attorney or researcher at King & Schickli spotted the application Kentucky Mist filed with the U.S. Patent and Trademark Office via the popular website LegalZoom.com.
“First, the University is requesting that Kentucky Mist Moonshine expressly abandon its effort to register the mark Kentucky Mist Moonshine in Class 25” [the trademark class for clothing], attorney Hargis writes. “Second, the University is requesting that you continue to take care to avoid using the mark in combination with the University’s source-identifying color schemes and/or other indicia associated with the University in connection with clothing or any other goods or services.” [Indicia is the Latin word for signs.]
And why does King & Schickli not want Kentucky Mist to use the word “Kentucky” on any T-shirts or other articles of clothing it sells?
“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,” writes Hargis. “… If Kentucky Mist Moonshine is willing to honor our request, we will consider the matter closed.”
And what if Kentucky Mist continues to use the word “Kentucky” in the logo it prints on its T-shirts?
“In the event our requests are not met, the University is prepared to file a notice of opposition against Kentucky Mist Moonshine Inc.’s application to register the mark in Class 25 [clothing] if and when the mark is published and will consider further action as it deems necessary,” Hargis concludes in his letter to Fultz. He adds that the University and King & Schickli “wish you well in your new endeavor and look forward to receiving written confirmation … preferably by the end of October” that Kentucky Mist will agree not to attempt to register and use its logo for any clothing items.
As ridiculous as the demands of the University of Kentucky might appear, the matter will likely cost Kentucky Mist a hefty legal fee, said Fultz.
“Our attorney said we have to respond to it,” Fultz said.
Asked if he thought anyone could confuse anything sold at Kentucky Mist with the University of Kentucky or its athletic teams, Fultz said, “No, I don’t think so” before adding the distillery does offer a dark blue-colored Koozie drink cooler.
Kentucky Mist is located in the historic old KYVA Motor Company building, which Fultz and company remodeled at considerable expense. The distillery officially opened in late September but is still nowhere near full capacity.