State of Kentucky and University of Kentucky clash over Trademark Similarity

Happy Thursday, this is IP News by the IP Society, bringing you all the most interesting Intellectual Property related news we can find time to blog about!

Today’s gem: a fun story that doubles as an interesting look at how Trademark applications work.

The state of Kentucky and the University of Kentucky recently made the news by squabbling over the state’s attempt to trademark the Mark “Team Kentucky”, which has been a slogan in the state’s Covid-related public health messaging, for emblazoning on clothing such as face masks, t-shirts, sweats, hats, and more.

The University of Kentucky already owns the registered trademark “Kentucky” for putting on clothing, such as those t-shirts, hats, and so forth everyone gets at their college bookstore, and has for a long time (registered in 1997). When “Team Kentucky” was published for opposition — which is when the USPTO publishes a routine announcement of all applied-for Trademarks that are about to register, so that anyone with a legit reason to object to one of them has a chance to speak up before it’s final — the University of Kentucky did exactly that, and argued that the state’s “Team Kentucky” Marks were too similar to the University’s “Kentucky” Mark. Note that excessive similarity to somebody else’s Mark in the same commercial niche (such as clothing) is one of the main reasons Trademark Applications get rejected; shoppers’ being able to reliably know who they’re buying from and not get confused by unfairly-similar-looking brands protects both consumers and businesses, and is a key reason for the existence of Trademark protection.

We first found this news story mentioned in the August 27 issue of The Week (listed under “Only in America”), and there is also an Associated Press article about this same dispute. Trademarks, including these, are publicly available for lookup in the Trademark Database on the USPTO website; so we also looked it up ourselves.

The opposition proceeding is ongoing.