Chicago Business Litigation Lawyer Blog
Sports teams often make more money from the merchandise and apparel they sell, stamped with the team name and logo, than they do tickets to games. As a result, it makes sense that they have a vested interest in protecting the right to put their name and logo on clothing and merchandise, but a patent on the name of a state seems to many people to be a step too far.
The University of Kentucky, home to the basketball team, the Wildcats, is claiming that it purchased the patent for putting “Kentucky” on any clothing back in 1997. So when Colin Fultz filed for a trademark of his business’s name, “Kentucky Mist Moonshine,” he received a cease and desist letter from the University of Kentucky. The University says it does not object to the name of the whiskey, only to the word “Kentucky” being put on promotional hats, T-shirts, etc.
Fultz’s business is a distillery that makes and sells fruit-infused whiskey and he has had to fight for his business since it was still just a concept. His hometown of Whitesburg was a dry town up until 2007, so when Fultz started taking the first steps to getting his business up and running a few years ago, the City Council needed some convincing that the town was ready, not just for alcohol, but for a distillery. Fultz thought the biggest hurdle was over when the City Council just barely voted to let him have his distillery, but that was just the beginning.
The athletic official for the University of Kentucky, Mr. Schlafer, said they intended for the letter to open up negotiations between Fultz and the University. He insists the local college, which makes about $123 million every year from the athletic department, has a right to protect the Wildcat brand.
Fultz saw it differently. Instead of negotiating with the University, he and his attorney, Jim Francis, took it as “fighting words.” They responded by filing a lawsuit against the University of Kentucky, in which they are seeking a court to force the University to drop its opposition against Fultz’s trademark.
Few legal professionals think the University has a chance of winning this particular legal battle. It’s hard enough for a school to successfully claim all rights to a state’s name, but even if they do manage it, the protection offered by such a trademark could only be very narrow in scope.
Nevertheless, the University is claiming that, because of its connection to the state of Kentucky, it has sovereign immunity, and as a result, cannot be sued in court. Francis anticipates taking that claim all the way up to the Supreme Court, regardless of how the issue of the trademark plays out.
In the meantime, Fultz is so furious over the university’s letter that he has decided to run for state representative. He points out the University has left big companies alone, such as Kentucky Fried Chicken, while picking on small entrepreneurs such as himself. Fultz is campaigning as a Republican and has plenty of competition to face in the Republican primary, which will be held on May 17.
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