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UK seeks dismissal of Kentucky Mist trademark case, citing sovereign immunity

Karen Faigle of Covington browsed through the gift shop at Kentucky Mist moonshine distillery in Whitesburg, Ky., on Oct. 27, 2015.
Karen Faigle of Covington browsed through the gift shop at Kentucky Mist moonshine distillery in Whitesburg, Ky., on Oct. 27, 2015. Photo by Pablo Alcala | Staff

The University of Kentucky on Friday asked that the trademark case brought against UK by a Whitesburg moonshine operation be dismissed, citing its sovereign immunity as part of Kentucky state government.

Kentucky Mist Moonshine filed suit in November against UK in a federal trademark-registration case that has gained national attention. The suit involves Kentucky Mist Moonshine’s registration in a trademark category that includes hats, hooded sweatshirts, jackets, pants, shirts, shoes and socks.

The category is one in which UK has long been registered and in which it claims use of the word “Kentucky” to identify its athletic uniforms and various articles of clothing sold to fans. UK had wanted Kentucky Mist to bow out of trying to register its products in that category; Kentucky Mist had asked the court to rule that there is no infringementby Kentucky Mist Moonshine’s use of the word “Kentucky.”

In a hefty filing in U.S. District Court in Lexington, UK’s attorneys say that “the University is immune from suit in this court for most claims arising under federal law. Alleged violations of the Federal Trademark Act ... are no different.”

The filing says that UK and other state universities, “are agencies of the Commonwealth.”

UK’s filing says that even if Kentucky Mist’s suit was not barred by sovereign immunity, “the case does not present a justiciable controversy between parties having adverse legal interests of sufficient immediacy and reality, and, therefore, this Court lacks subject matter jurisdiction over these claims.”

Kentucky Mist’s attorney, Jim Francis, called the filing “a desperate move on the part of the university.”

“Clearly they don’t want to have this argument in federal court,” Francis said.

Cheryl Truman: 859-231-3202, @CherylTruman

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