'As silly as trademark cases get': UK tries to stop commonwealth's Team Kentucky trademark

The University of Kentucky is trying to stop the Commonwealth of Kentucky from trademarking the phrase "Team Kentucky" due to its preexisting "Kentucky" trademark. 

Yes, you read that correctly.

The state's flagship university filed a notice of opposition Friday with a board in the United States Patent and Trademark Office to stop the commonwealth from trademarking the phrase, arguing that it would "likely ... cause confusion" with the university's "Kentucky" athletic clothing trademark, registered in 1997.

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Thus, the University of Kentucky is arguing that consumers looking at any sort of clothing with the "Team Kentucky" trademark — which the commonwealth applied for on March 26, 2020 — will mistakenly think it is sold by the university instead of state government, thereby hurting the former's sales.

The commonwealth's "TEAM KENTUCKY & Design mark is highly similar to (the university's) KENTUCKY mark such that it is likely to cause deception in violation of Section 2(a) of the Trademark Act and materially alter purchasers' decisions to acquire (the commonwealth's) goods," the notice of opposition reads.

"Team Kentucky" has been a phrase used by Kentucky Gov. Andy Beshear since the then-state Attorney General campaigned to dethrone Republican Gov. Matt Bevin in 2019.

And the phrase has been a common refrain for Beshear since the early days of the coronavirus pandemic in March 2020, as he set up a "Team Kentucky" fund to help Kentucky residents who had been hit hard during the pandemic.

Even in the present day, Beshear gives a weekly "Team Kentucky" update to tout the commonwealth's economic accomplishments, or, more recently, to discuss the COVID-19 delta variant and its impact on the Bluegrass State.

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The commonwealth must file a response to the University of Kentucky's notice of opposition by Sept. 22, according to documents filed with the Patent and Trademark Office's Trademark Trial and Appeal Board.

The commonwealth's lawyer and spokespeople did not respond to requests seeking comment.

University of Kentucky spokesman Jay Blanton said in a statement Monday that the university "supports and applauds the governor’s use of the phrase 'Team Kentucky,'" as "it’s a phrase that reflects our shared value of protecting each other amid the COVID-19 pandemic."

"Under federal trademark law, UK is required to assert its ownership of trademarked words and images," Blanton worte. "The university acted in accordance with that federal regulation by filing this information with the U.S. Patent and Trademark Office. UK has been working alongside the governor’s office throughout this process."

He added that Beshear's office was "aware and understanding of UK’s need to meet legal deadlines to file this information permitting the parties to continue working together to get federal protection" for the trademark and that the university continues "to support efforts to keep our communities safe," including encouraging COVID-19 vaccinations.

If you're scratching your head reading about this case, you're not alone.

Josh Gerben, a trademark attorney, wrote on Twitter Monday morning that "this is about as silly as trademark cases get."

Though the university's federal trademark registration of "Kentucky" grants it the '"presumption of national ownership around the word' as it relates to clothing," Gerben wrote, the university's case is "likely to fail given that the Commonwealth of Kentucky's mark is for "TEAM KENTUCKY" (as opposed to just the word KENTUCKY) and there are many other KENTUCKY-formative marks in the clothing space."

"It is a head scratcher as to why the case even got this far," Gerben wrote. "The parties presumably were in settlement talks before a formal legal action was filed. Grab your popcorn!"

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Contact Ben Tobin at bjtobin@gannett.com and 502-377-5675 or follow on Twitter @Ben__Tobin.