Judge tosses Kentucky Mist moonshine trademark case against UK

Caps were for sale at the Kentucky Mist moonshine distillery in Whitesburg last year. Photo by Pablo Alcala | Staff
Caps were for sale at the Kentucky Mist moonshine distillery in Whitesburg last year. Photo by Pablo Alcala | Staff

A U.S. district court judge delivered a victory Thursday to the University of Kentucky in its legal battle with a Whitesburg moonshine company over trademarks.

Kentucky Mist Moonshine filed suit in November against UK in a federal trademark-registration case involving 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 articles of clothing sold to fans.

UK had wanted Kentucky Mist to stop trying to register its products in that category; Kentucky Mist had sought a court ruling that there is no infringement by Kentucky Mist Moonshine’s use of the word “Kentucky.”

The court ruling by U.S. District Judge Danny Reeves said that that case “was not ripe ... and is still not ripe” in that there was no “actual controversy.”

“The plaintiff here misstated UK’s intentions early on, attempting to create a controversy,” the ruling said.

UK spokesman Jay Blanton said the university is “pleased that the court dismissed the lawsuit in a strongly worded opinion which recognizes the University’s sovereign immunity and its interest in protecting its trademark interests.

“We are also pleased the court recognized the University tried in good faith to reach an agreement that would allow Kentucky Mist to sell its merchandise while fully respecting the University’s trademarks.”

Attorney Jim Francis, who represents Kentucky Mist, described the ruling as “a setback.”

“The case isn’t over,” Francis said. “It’s a very narrow ruling by the judge in this case.”

He said three options remain for the plaintiffs: appeal the decision based on the misinterpretation of Kentucky law; file a separate lawsuit alleging that UK, without due process, has taken a property right away from Kentucky Mist; or continue to pursue the case as it is still pending before the U.S. Trademark Trial and Appeal Board, where UK does not have sovereign immunity.

Cheryl Truman: 859-231-3202, @CherylTruman