A Fight Between Booze and Basketball

As I sit in the local Panera writing this, I noticed the word “Panera” on the coffee cup is has the letter “R” in a small circle next to the name.  This means that Panera is a registered trademark name for this chain of restaurants and that protects this name and logo from unauthorized use by any other legal entity without permission from Panera. A trademark is defined as a recognizable sign, design or unique expression that serves to differentiate a product, service or even a person from other things that are similar.

The name and logo of Panera and millions of other businesses are registered with the U.S. Patent and Trademark Office and federal law affords businesses protection from unauthorized use of their names and logos if registered trademarks are displayed one their products, services, advertising and the like.

A few days ago, I read a news story that got me interested in who can use a certain name and in what context.  In this story, the owner of a small business is pitted against a major state university over the use of the name of the state they both share.

Kentucky Mist Moonshine

Last fall, Colin Fultz opened a distillery in Whitesburg, KY and began selling his own blends of fruit-flavored whisky by the glass in a tasting room that occupies a former auto dealership. He called his business “Kentucky Mist Moonshine” and also sells hats, t-shirts and other souvenirs displaying the business name.

Fultz, the grandson of a former “moonshiner”, had a difficult time opening the business because of lots of community opposition. Historically, most of eastern Kentucky had been dry for decades and Whitesburg finally allowed the sale of alcoholic beverages in 2007. When Fultz tried to get approval from the city council to open his business, the mayor who supported his project, had to cast a tie-breaking vote for the project to go forward.

Big Blue Nation or Big Blue Meanie 

When the plan was approved, Fultz applied for a trademark for the business name and opened his business last fall. But, just a month after opening he received a letter from an official at the University of Kentucky demanding that he cease selling any hats, shirts and other apparel that displayed the name “Kentucky.” The University of Kentucky registered trademark protection for selling hats, shirts and other items of apparel displaying the name “Kentucky” in 1997.

Photo courtesy: Kentucky Mist Moonshine

Before going on, a matter of disclosure. I am a University of Kentucky alum (M.A. 1774) and a fan of the Wildcats. Although my current drink of choice is Irish whiskey, I also occasionally enjoy a glass of Kentucky bourbon.

The University of Kentucky official stated that the letter was sent to Fultz to initiate negotiations about the use of the name on apparel. He added that the school really wanted Fultz to avoid using the school colors blue and white on his products.

Fultz, who has deep family roots in Appalachia, thought if UK wants a fight, he’ll give them one. He has filed a lawsuit in federal court in Lexington to give his business the right to use its name on any product it produces. Fultz has also gathered signatures on a petition and his name is on the ballot for the May 17 Republican Primary election for a seat in the Kentucky House of Representatives.

Last year, Kentucky’s athletics department generated more than $120 in revenue from ticket sales, media rights, advertising and, of course, the sale of licensed apparel.

Photo courtesy: Kentucky Mist Moonshine

A number of other state universities have sought trademark protection for the state name or other unique attributes. The University of Arkansas has even trademarked a cheer: “Woooo. Sooie! Pig!”

In 1998, Ohio University in Athens, Ohio, sought to trademark the word “Ohio” for use on apparel and sports uniforms. As you might expect, “The” Ohio State University objected and filed suit against OU. After nearly a year and a half of contra-temps, court filings and a nasty spat that delighted the state’s media outlets, the two universities settled and both schools now use “Ohio” on their merchandise.

OSU and other schools are continually vigilant to protect their trademarks. In 2014, Ohio State officials sent out 100 letters threatening legal action against businesses using one of their trademarks without permission.  Those warned included a suburban Columbus woman who sold block “O” cookies during football season and another play-zone business for young kids that used the moniker “The Buckeye Bounce House.”

Who Owns a State's Name?

But, the question is: should an institution be allowed to trademark the name of a state on any product or service? That’s an interesting question and I’m not going to try to answer it here—the courts can take care of that.

But, I think a state’s name should be pretty much in the public domain.  If the type font, colors and other things are too similar an already trademarked product, then some kind of judicial action may be appropriate. But, looking at the hat and t-shirt pictured above, this is a fight I think UK ought to walk away from.