Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA721366
`ESTTA Tracking number:
`01/19/2016
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91225884
`Defendant
`Kentucky Mist Moonshine Inc.
`James M. Francis
`Fowler Bell PLLC
`Ste 600 300 W Vine St
`Lexington, KY 40507
`
`jfrancis@fowlerlaw.com
`Motion to Suspend for Civil Action
`James M. Francis
`jfrancis@fowlerlaw.com, jim@francis-law.com, rlinde@fowlerlaw.com
`/James M. Francis/
`01/19/2016
`TTAB Motion to Suspend Proceedings.pdf(118745 bytes )
`Exhibit 1.pdf(67544 bytes )
`Exhibit 2.pdf(135324 bytes )
`Exhibit 3.pdf(454869 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`
`
`UNIVERSITY OF KENTUCKY
`
`
`Opposer,
`
`- against -
`
`KENTUCKY MIST MOONSHINE INC.
`
`Applicant.
`
`
`
`Opposition No.: 91225884
`Serial No.: 86577855
`
`
`MOTION FOR SUSPENSION OF PROCEEDINGS
`
`Applicant, Kentucky Mist Moonshine Inc. (“Kentucky Mist Moonshine”), hereby moves,
`
`pursuant to Trademark Rule 2.117(a), for suspension of all proceedings, subject to the final
`
`decision of case 5:15-CV-00385-DCR, Kentucky Mist Moonshine, Inc. v. University of Kentucky,
`
`filed in the United States District Court for the Eastern District of Kentucky.
`
`Applicant and Opposer are both parties to the above-referenced action. Attached is a
`
`copy of the PACER case summary (Exhibit 1), civil cover sheet (Exhibit 2), and complaint
`
`(Exhibit 3) regarding this action. Applicant believes that there are issues in common in the
`
`matter before the Court and the matter before the Board which may have a bearing on, or prove
`
`dispositive of this opposition proceeding; therefore, Applicant respectfully requests a suspension
`
`of all proceedings.
`
`Dated: January 19, 2016.
`
`
`
`

`
`Respectfully submitted,
`
`/ James M. Francis /
`James M. Francis
`FOWLER BELL PLLC
`300 W. Vine St., Ste. 600
`Lexington, KY 40507
`Phone: (859) 252-6700
`Fax: (859) 255-3735
`jfrancis@fowlerlaw.com
`COUNSEL FOR THE PLAINTIFF
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`A true and accurate copy of the foregoing was placed in U.S. Mail, first class, on this 19th
`
`day of January 2016 to the following counsel of record.
`
`/James M. Francis/
`COUNSEL FOR THE APPLICANT
`
`Michael Hargis
`Trevor Graves
`King & Schickli PLLC
`247 N Broadway
`Lexington, KY 40507
`Michael@iplaw1.net
`trevor@iplaw1.net
`COUNSEL FOR THE OPPOSER
`
`
`
`4833-5243-7036, v. 1
`
`2
`
`

`
`Exhibit 1
`Exhibit 1
`
`

`
`CM/ECF U.S. Eastern District of Kentucky Version 6.1-Query Summary
`
`Page 1 of 1
`
`5:15-cv-00385-DCR Kentucky Mist Moonshine Inc. v. University of Kentucky
`Danny C. Reeves, presiding
`Date filed: 1212312015
`Date of last filing: 0111912016
`
`Case Summary
`
`X'iled: 1212312015
`Demand:
`Cause: 28:1 441 Petition for Removal-
`Injunctive/Declarato
`
`Disposition:
`
`Terminated:
`Reopened:
`None
`5: 15-cv-00328-DCR
`
`Office: Lexington
`Jury Demand: Plaintiff
`Nature of Suit: 840
`Jurisdiction: Federal
`Question
`County: Fayette
`Origin: 2
`Lead Case:
`Related Case:
`
`Defendant Custody Status :
`Flags: AO120,DCR
`
`Other Court Case:
`None
`
`Plaintiff: Kentucky represented James M. Francis
`Mist Moonshine Inc. by
`(Designation Retained)
`
`Defendant: University represented Bryan Howard Beauman
`of Kentucky
`by
`(Designation Retained)
`
`Defendant: University represented Michael S. Hargis
`of Kentucky
`by
`(Designation Retained)
`
`Defendant: University represented William Eugene Thro
`of Kentucky
`by
`(Designation Retained)
`
`Phone:859 -252-6700
`Fax: 859-255-3735
`Email : j francis@fowlerlaw, com
`Phone:859-255-858 1
`Fax: 859-231-0851
`Em ail : bbeauman@sturgilltumer. com
`Phone:859 -252-0889
`Fax: 859-252-0779
`Email: michael@iplaw 1 .net
`Phone:859 -257 -2936
`Fax: 859-323-1062
`Email : william. thro @uky. edu
`
`PACER Service Center
`Transaction Receipt
`
`01119/2016 l6:33:55
`
`l4:2549909:
`
`ription:
`
`: I 5-cv-003 85-
`R
`
`10
`
`htþs ://ecf.kyed.uscourts. gov/cgi-bin/qrySumm ary .pl?1 937 9
`
`U1912016
`
`

`
`Exhibit 2
`Exhibit 2
`
`

`
`JS44 (Rev 12l,2) Case: 5:15-cv-00385-DCR dtftf, bôfdpStlfÊfts Page: 1of l- - Page tD#:4
`
`TheJS44civilcoversheetandtheinformationcontainedhereinneitherreplacenorsupplementtbefitingandseruiceofpleadingsorotherpapersasrequiredbyìaw,
`exceptas
`providedb-ylocal rulesofcourt. Thisfom,approvedbytheJudicial ConferenceofthèUnitedStatesinSeptembe¡1974,isrequìredforthe'uieoftheClerkofCourtforthè
`purpose of initiating the civil docket sheet. 6EE INSTRUCTI)NS oN NEXT eAGE oF THIS F1RM.)
`I. (a) PLAINTIFFS
`Kentucky
`
`Moonshine Inc.
`
`DEFENDANTS
`IJniversity of Kentucky
`Favette
`County ol Rcsidence of First Lisled Dcfcndant r
`(IN U,S. PLAINTIFF CASES ONLY)
`NOTE; IN LAND CONDEMNATION CASES. USE THE LOCATION OF
`THE TRACT OF LAND INVOLVED.
`
`(b) County of Resiclcnce of First Listed Plaintiff LetChef
`(EXCEPT IN U.S. PLAINTIFF CASES)
`
`(C) Attomeys (Fhm Name, Address, and Telephone Nunber)
`James M. Francis, Fowler Bell PLLC (francis@fowlerlaw.com)
`300 W. Vine Street, Ste 600
`Lexinston, KY 40507 T: 1859) 252-6700
`BASIS OF JURISDICTION ¡etor"on "x" inoneBoxonty)
`
`Attorneys (( Known) (bbeauman@sturgilltumer.com)
`Bryan H. Beauman, Sturgill, Turner, Barker & Moloney PLLC
`333 W. Vine Street, Suite 1500
`Lexington, KY 40507 T: (859) 255-8581
`III. CITIZENSHIP OF PRINCIPAL PARTIES (Ptace an "x" in one Boxlor Ptaintif
`and One Boxfor Defendant)
`(For Diversity Casæ Only)
`rTF DEF
`PTF DEF
`ol
`01
`Incorporated or Principal Place O 4 E 4
`ofBusiness In This State
`
`Citizen ofThis State
`
`II.
`D1
`
`U,S Govemment
`Plaintiff
`
`Federal Qucstion
`(U.5. Governmenl Nol a Party)
`
`{3
`
`J4
`
`O2 USGovement
`Defendant
`
`Diversity
`(Indícate Citizerehíp ofPartiæ in ltem I[I)
`
`CitizenofAnotherState J2
`
`A 2
`
`IncorporatedazdPrincipalPìacc D 5 D 5
`olBusiness In Anothcr State
`
`Citizen or Subject ofa
`
`ö 3 D 3
`
`ForeignNation
`
`O 6 D6
`
`l, l Y
`t{'()R l'l¡ll-l'l,Rtl/l,l¡lN/\
`D 625 Drug Related Seiarre
`ofProperty 2l USC 881
`D 690 Other
`
`NANKPIIPTI.V
`
`-.J 422 Appeal 28 IJSC I 58
`O 423 Withdrawal
`28 USC I s7
`
`PR.ìPF'-RTY RII:HTS
`O 820 Copyrights
`O 830 Patenl
`ft840 Trademark
`
`o 861 HIA (1395fÐ
`D 862 Black Lung (923)
`D 863 DIWC/DìWW (a0s(g))
`O 864 SSID Title XVI
`o 865 RSI (a0s(e))
`
`tr.RTIERÀI-TÄX SIIITS
`D 870 Taxcs (tJ.S, Plaintiff
`or Dcfcndant)
`ü 871 IRS-Th¡rd Party
`26 USC 7609
`
`f .aRltR
`O 710 Fair Labor Standards
`Act
`û 720 Labor/Management
`Relations
`O 740 Railway Labor Act
`D 751 FamilyandMedical
`Leave Act
`D 790 Other Labor Litigation
`D 791 Employee Retirement
`Income Secuilty Act
`
`IMMIGRATION
`O 462 Naturalizatron Appl¡cat¡on
`0 465 Other Immigration
`Actions
`
`rlTI{ER STATf ITF'.S
`O 375 False Cla¡ms Acl
`J 400 State Reapportionmenl
`O 410 Ant¡trust
`O 430 Banks and Banking
`O 450 Commerce
`O 460 Deportation
`D 470 Racketeer Influenced and
`Compt Organiatìons
`O 480 Consumer Credit
`D 490 Cable/Sat TV
`ü 850 Securities/Comodities/
`Exchange
`õ 890 Other Statutory Actions
`D 891 Agriculhrral Acts
`O 893 Environmental Matters
`D 895 Frccdom oî Infomation
`Act
`D 896 Arbitration
`O 899 Administrative Procedure
`ActReview or Appeal of
`Agcncy Dccisìon
`D 950 Constitut¡onality of
`State Statùtes
`
`IV. NATURE OF SUIT
`l-.lNTR À'T
`
`in One Box
`
`PERSONAL INJURY
`D 310 Airplane
`D 315 Airplanc Product
`Liabil ity
`O 320 Assault, Libel &
`Slander
`D 330 Federal Employers'
`Liability
`D 340 Marine
`O 345 Marine Product
`Liability
`0 350 Motor Vehicle
`O 355 Motor Vehicle
`Product Liability
`O 360 Othe¡ Personal
`Injury
`O 362 Penonal Injury-
`Medical Malomctice
`(:tvt¡, Rft:HTs
`O 440 Other Civil Rights
`O zl4l Voting
`O ,142 Employment
`D 443 Housìng/
`Accommodations
`O 445 Amer w/Disabilities -
`Employment
`O ,146 Amer, w/Disabilities -
`Othcr
`O 448 Education
`
`aDDDa
`
`I [0 lnsurance
`120 Marine
`ll0 Millcr Act
`I 40 Negotiable Instrument
`I 50 Recovery ofOverpayment
`& Enforccmcnt of JudgmeDt
`l5l MedicueAct
`I 52 Recovery ofDefaulted
`Student Loans
`(Excludes Veterans)
`D I 53 Recovery ofOveqrayment
`ofVete¡an's Benefits
`O I 60 Stockholders' Suits
`ú [90 Other ConFact
`O 1 95 Contract Product Liability
`O 196 F¡anchise
`
`l Do
`
`REAL PROPERTY
`ú 210 Land Condemnation
`O 220 Fo¡cclosurc
`tl 230 Rent Lease & Ejectmcnl
`O 240 Torts to Land
`O 245 Tort Product Liability
`D 290 All Other Real Prcperty
`
`TORTS
`PERSONAL INruRY
`D 365 Personal [njury -
`Product Liability
`D 36? Health Carei
`Phamaceutical
`Personal Injury
`Product Liability
`0 368 Asbestos Pemonal
`Injury Product
`Liability
`PERSONAL PROPERTY
`O 370 Other Fraud
`O 371 Truth in Lending
`0 380 Other Pe¡sonal
`Property Damage
`D 385 Property Damage
`Product Liab¡lity
`
`Habeas Corpus:
`O 463 Alicn Dctainee
`D 510 Motions to Vacate
`Sentence
`O 530 General
`D 535 Death Penalty
`Other:
`Cl 540 Mandamus & Other
`Õ 550 Civil Rights
`O 555 Prison Condition
`O 560 Civil Detainee -
`Condil.ions of
`Confinement
`
`V. ORIGIN (Place an "X" ín One Box Onty)
`O I Original Çf Removed from
`Procccding '^.' Stale Court
`
`D 3 Remanded from
`Appellate Court
`
`ll 4 Reinstated or
`Reopened
`
`ü 5 Transfened from
`Another District
`
`ù 6 Multìdistrict
`Litigation
`
`VI. CAUSE OF ACTION
`
`VII. REQUESTED IN
`COMPLAINT:
`vrrr. RELATED CASE(S)
`IF ANY
`
`DATE
`
`Cite the U.S. Civil Stah.rte under which you are filing (Do not c¡te juisd¡ct¡onsl støtut* unl6s diversity)
`l5 u.s.c. 1052, r064. I I 19. I l2l
`Brief description of cause:
`ù cugcr IF THIS rs A cLASS AcrroN
`UNDER RULE 23, F.R,Cv.P.
`
`DEMAND $
`
`CHECK YES only if demanded in complaint
`JIJRY DEMAND: ð Yes Ü No
`
`(See instructiow):
`
`ruDGE
`
`DOCKT,T NLMBER
`
`SIGNATIJRE OF ATTORNEY OF RECORD
`
`RECEIPT #
`
`AMOUNT
`
`APPLYING IFP
`
`MAC JUDGE
`
`

`
`Exhibit 3
`Exhibit 3
`
`

`
`Case: 5:1-5-cv-00385-DCR Doc #: 5 Filed: 01-/08/16 Page: l- of 10 - Page lD#: 83
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF KENTUCKY
`LEXINGTON DIVISION
`
`KENTUCKY MIST MOONSHINE INC.
`
`Case No. 15:5-CV-00385-DCR
`
`UNIVERSITY OF KENTUCI(Y
`
`Defendant.
`
`Filed via ECF
`
`COMPLAINT FOR DECLARATORY RELIEF REGARDING U.S.
`TRADEMARK REGISTRATTON 2,066,$04 FOR THE MARK "KENTUCKY"
`
`Plaintiff Kentucky Mist Moonshine Inc. (hereafter sometimes referred to as "Plaintiffl' or
`
`"Kentucky Mist Moonshine"), through counsel, brings this action against Defendant, the
`
`University of Kentucky (hereafter sometimes referred to as "IJK" or "Defendant") and alleges as
`
`follows:
`
`NATURE OF EWIIgN
`1. This action arises out of the Defendant's threatened legal action against Kentucky Mist
`
`Moonshine for its pursuit of a federal trademark registration for the KENTUCKY MIST
`
`MOONSHINE mark for hats, hooded sweatshirts, jackets, pants, shirts, shoes, and socks in
`
`international trademark class 25 based upon its registration of the KENTUCKY mark on the
`
`United States Patent and Trademark Office ("USPTO") principal register of trademarks.
`
`2. This action seeks a partial cancellation or reformation of the KENTUCKY mark in
`
`international trademark class 25 as well as a declaration by the Court that there is no likelihood
`
`of confusion between the marks, there is no trademark dilution caused by either the registration
`
`of the KENTUCKY MIST MOONSHINE mark or the commercial use of the mark, there is no
`
`

`
`Case: 5:l-5-cv-00385-DCR Doc #: 5 Filed: 01-/08/1-6 Page: 2 of L0 - Page lD#: 84
`
`infringement of the KENTUCKY mark by the Plaintiff, and all reasonable attorneys' fees and
`
`costs.
`
`PARTIES
`
`3. Plaintiff, Kentucky Mist Moonshine Inc., is a corporation organized under the laws of the
`
`Commonwealth of Kentucky and operating from its principle place of business at 128 East Main
`
`Street, Whitesburg, KY 41858.
`
`4. Kentucky Mist Moonshine is a manufacturer of distilled spirits and sells goods, including
`
`clothing, bearing its name and logo in an on-site gift shop.
`
`5. Defendant, the University of Kentucky, is an educational institution operating from its
`
`principle place of business in Lexington, KY 40506.
`
`JURISDICTION AND VENUE
`
`6. This Court has subject matter jurisdiction of this action under, and by virtue of 28 U.S,C.
`
`$$ 1331, 1338, and 15 U.S.C. $1121.
`7. Venue is proper in this judicial district pursuant to 28 U.S.C. $1391 as a substantial part
`
`of the events occurred in this judicial district, and the Defendant resides in this judicial district.
`
`8. This Court is authorized to grant a declaratory judgment under the Declaratory Judgment
`
`Act, 28 U.S.C. $$ 2201-02, as implemented through Federal Rule of Civil Procedure 57.
`9. This Court is authorized to grant a declaratory judgment under the Declaratory Judgment
`
`Act, Ky. Rev. Stat. $ 418 et seq., as implemented through
`
`10. This Court is authorized to grant Kentucky Mist Moonshine's prayer for relief regarding
`
`costs, including a reasonable attorney's fee, pursuant to 15 U.S.C. $ 1117.
`
`RELEVANT FACTS
`
`I 1. "Kentucky" is a well-known geographical location and the word has been commonly
`
`used since at least 1792.
`
`

`
`Case: 5:15-cv-00385-DCR Doc #: 5 Filed: 01-/08/1,6 Page: 3 of 10 - Page lD#: 85
`
`lL.The University of Kentucky is the o\¡/ner of U.S. Trademark Registration 2,066,804
`
`(hereafter the "KENTUCKY mark") for the word "Kentucky" in intemational trademark class 25
`
`for swim suits, hats, sweaters, children's footballibaseball jerseys, sweatshirts, T-shirts, shoes,
`
`shorts, jackets, athletic jerseys, and aprons (see Exhibit A).
`
`13. The word "Kentucky" appears in 45 USPTO registered trademarks unrelated to and not
`
`owned by the University of Kentucky, 11 of which predate the Defendant's federal trademark
`
`application (Exhibit B).
`
`14. The word "Kentucky" is commonly found on articles of clothing in association with
`
`businesses, organizations, govemment agencies, and brands that are unaffiliated with and not
`
`sponsored by the University of Kentucky.
`
`15. The University of Kentucky was aware of the widespread use of the word Kentucky by
`
`businesses, organizations, government agencies, and brands that are unaffiliated with and not
`
`sponsored by the University of Kentucky prior to the filing of its federal trademark application
`
`for the KENTUCKY mark.
`
`16. Kentucky Mist Moonshine is a manufacturer of distilled spirits and sells articles of
`
`clothing bearing its KENTUCKY MIST MOONSHINE mark.
`
`17. The University of Kentucky is an educational institution.
`
`18. The federal trademark application for the KENTUCKY mark was filed on April 5,7996
`
`in the USPTO.
`
`19. The federal trademark application for the KENTUCKY mark was granted on June 3,
`
`1997 by the USPTO.
`
`20. During the prosecution of the KENTUCKY mark the Defendant made a claim for
`
`acquired distinctiveness by claiming substantially exclusive and uncontested use of the word
`
`

`
`Case: 5:15-cv-00385-DCR Doc #: 5 Filed: 01-/08/16 Page: 4 of 1-0 - Page lD#: 86
`
`"Kentucky" in class 25 for the five years preceding the date of the claim for acquired
`
`distinctiveness.
`
`21. Kentucky Mist Moonshine filed a federal trademark application in the USPTO for their
`
`KENTUCKY MIST MOONSHINE mark on March 25, 2015 as application serial number
`
`86s778ss (Exhibit C).
`
`22.The Plaintifls use of the word "Kentucky" in its mark is a geographical reference.
`
`23.The Plaintiff s use of the word "Kentucky" in its mark is fair use under federal trademark
`
`law.
`
`24.Plaintiff has made a significant investment in time and money in developing its branding
`
`using the KENTUCKY MIST MOONSHINE mark.
`
`25. The Defendant mailed a cease and desist letter to the Plaintiff on or about October 12,
`
`2015 (Exhibit D),
`
`26.The aforementioned cease and desist letter demanded that the Plaintiff abandon federal
`
`trademark application serial number 86577855 and avoid using the KENTUCKY MIST
`
`MOONSHINE mark with the Defendant's color schemes and/or other indicia associated with the
`
`University.
`
`27.The Defendant further stated in the cease and desist letter that their position is that the use
`
`of the KENTUCKY MIST MOONSHINE mark on articles of clothing is likely to cause
`
`deception, confusion, and mistake as to the Plaintiff s affiliation, connection or association with
`
`the Defendant and as to the Defendant's sponsorship or approval of the Plaintiff s activities in
`
`violation of l5 U.S.C. $ I 125 and applicable state law.
`
`28. In the aforementioned cease and desist letter, the Defendant threatened to file a Notice of
`
`Opposition against the Plaintiff s federal trademark application with the Trademark Trial and
`
`Appeal Board ("TTAB") of the USPTO, and take "further action" as it deems necessary.
`
`

`
`Page: 5 of 10 - Page lD#: 87
`
`CAUSES OF ACTION
`
`COUNT 1
`PARTIAL CANCELLATION OR REFORMATION OF MARK
`UNDER 15 U.S.C. $$ 1119, 1052(F) AND 28 U.S.C. 1064
`29. Kentucky Mist Moonshine repeats and realleges each of the foregoing paragraphs as if
`
`fully set forth herein.
`
`30. The University of Kentucky asserts trademark rights for the word "Kentucky" as applied
`
`to clothing.
`
`31. UK's KENTUCKY mark does not constitute a valid and protectable trademark because it
`
`is primarily a well-known geographic reference that lacks distinctiveness and does not serve as a
`
`source identifier for the Defendant.
`32. The KENTUCKY mark has not acquired distinctiveness in international trademark class
`
`25 through substantially exclusive and continuous use because non-parties have produced
`
`clothing bearing the word "Kentucky" both before and since the registration of the KENTUCKY
`
`mark.
`
`33. UK rvas aware of the widespread use of the word "Kentucky" in international trademark
`
`class 25 prior to filing its federal trademark application and claiming substantially exclusive and
`
`uncontested use of the word "Kentucky" for the 5 years prior to making its claim for acquired
`
`distinctiveness.
`
`34. UK's claim that it had substantially exclusive and uncontested use of the word
`
`"Kentucky" for the 5 years prior to making its claim for acquired distinctiveness was false and
`
`made with the intent to deceive the USPTO for the purpose of obtaining a registration for the
`
`KENTUCKY mark on the USPTO's principal register for trademarks.
`
`35. Kentucky Mist Moonshine is being and will continue to be damaged by UK's continued
`
`registration of the KENTUCKY mark in international trademark class 25, as the registration
`
`

`
`Case: 5:l-5-cv-00385-DCR Doc #: 5 Filed: 01-/08/l-6 Page: 6 of 10 - Page lD#: 88
`
`forms the basis of UK's meritless claims of likelihood of confusion and dilution and threats of
`
`"fufther action."
`
`36. A declaration of rights is necessary and appropriate afthis time so that the Plaintiff may
`
`ascerrain its rights ro its KENTUCKY MIST MOONSHINE mark.
`
`37.\n light of the foregoing, the Court should declare UK's purported mark invalid and
`
`cancelled in international trademark class 25 or reform the registration to limit the scope of
`
`protection to uses of the word "Kentucky" which denote a clear and unambiguous connection to
`
`the University of Kentucky pursuant to 28 U.S.C . ç 2201-02, l5 U.S.C $$ 1 I I 9, 1052(Ð and/or
`
`1064.
`
`COUNT 2
`DECLARATORY JUDGMENT OF NO LIKELIHOOD OF CONFUSION
`38. Kentucky Mist Moonshine repeats and realleges each of the foregoing paragraphs as if
`
`fully set forth herein.
`39. The University of Kentucky has threatened to file an opposition proceeding in the
`
`USPTO seeking to prevent the registration of the KENTUCKY MIST MOONSHINE mark
`
`based upon allegations of a likelihood of confusion as to the source, sponsorship, affiliation, or
`
`approval ofgoods.
`
`40, The Plaintiff is entitled to a judicial determination and declaration that there is no
`
`likelihood of confusion between the KENTUCKY MIST MOONSHINE mark and the
`
`KENTUCKY mark.
`
`41. A declaration of rights is necessary and appropriate atthis time so thatthe Plaintiff may
`
`ascertain its rights with respect to the KENTUCKY MIST MOONSHINE mark.
`
`42.In light of the foregoing, the Court should declare thatthere is no likelihood of confusion
`
`between the KENTUCKY MIST MOONSHINE mark and the KENTUCKY mark in any
`
`intemational trademark class of goods and services.
`6
`
`

`
`Case: 5:l-5-cv-00385-DCR Doc #: 5 Filed: 0l-/08/16 Page: 7 of L0 - Page lD#: 89
`
`COUNT 3
`DECLARATORY JUDGMENT OF NON.DILUTION
`
`43. Kentucky Mist Moonshine repeats and realleges each and of the foregoing paragraphs as
`
`if fully set forth herein.
`
`44.The University of Kentucky has threatened to file an opposition proceeding in the
`
`USPTO seeking to prevent the registration of the KENTUCKY MIST MOONSHINE mark
`
`based upon allegations of trademark dilution.
`
`45. The Plaintiff is entitled to a judicial determination and declaration that the KENTUCKY
`
`mark lacks sufficient recognition to function as a famous mark under the Trademark Dilution
`
`Revision Act of 2006, therefore there is no dilution of the KENTUCKY mark by the Plaintifls
`
`commercial use of the words "Kentucky Mist Moonshine" in any class of goods or services.
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`46. A declaration of rights is necessary and appropriate at this time so that the Plaintiff may
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`ascertain its rights with respect to the KENTUCKY MIST MOONSHINE mark.
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`47.In light of the foregoing, the Court should declare that there is no dilution of the
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`KENTUCKY mark by the Plaintiffls commercial use of the words "Kentucky Mist Moonshine"
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`in any international trademark class of goods or services.
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`COUNT 4
`DECLARATORY JUDGMENT OF NON-INFRINGEMENT
`48. Kentucky Mist Moonshine repeats and realleges each of the foregoing paragraphs as if
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`fully set forth herein.
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`49. The Plaintiff, based upon the threat of "further action" has a good faith belief that the
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`University of Kentucky will pursue a civil action alleging that the use of the KENTUCKY MIST
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`MOONSHINE mark on clothing constitutes an infringement of the KENTUCKY mark.
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`50. The Plaintiff is entitled to a judicial determination and declaration that its use of the
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`KENTUCKY MIST MOONSHINE mark does not infringe the rights of the University of
`
`

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`Case: 5:15-cv-00385-DCR Doc #: 5 Filed: 01/08/L6 Page: I of 1-0 - Page lD#: 90
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`Kentucky to its KENTUCKY mark.
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`51. A declaration of rights is necessary and appropriate at this time so that the Plaintiff may
`
`ascertain its rights with respect to the KENTUCKY MIST MOONSHINE mark.
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`52.In light of the foregoing, the Court should declare that there is no infringement of the
`
`KENTUCKY mark by the Plaintifls commercial use of the words "Kentucky Mist Moonshine"
`
`in any intemational trademark class of goods or services.
`
`COUNT 5
`DECLARATORY JUDGMENT THAT THE MARK "KENTUCKY'' IS NOT A
`FAMOUS MARK UNDER 15 U.S.C. S1125
`53. Kentucky Mist Moonshine repeats and realleges each of the foregoing paragraphs as if
`
`fully set forth herein.
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`54. Under the 2006 revised federal Trademark Dilution Revision Act ("TDRA"), in order to
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`be famous, a mark must be widely recognized by the general consuming public of the United
`
`States as a designation indicating a single source of goods or services,
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`55. Famous marks are entitled to a broader scope of protection from dilution than other
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`marks.
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`56. The KENTUCKY mark is not sufficiently distinctive to serve as a single source identifier
`
`of goods and services so as to exclude all others from the use of the geographic name
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`"Kentucky."
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`57. A declaration of rights is necessary and appropriate at this time so that the Plaintiff may
`
`ascertain its rights with respect to the KENTUCKY MIST MOONSHINE mark.
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`58. In light of the foregoing, the Court should declare that the KENTUCKY mark is not
`
`entitled to the broad scope of protection afforded famous marks because the KENTUCKY mark
`
`not famous.
`
`

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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff prays that the Court enter a judgment as follows:
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`(a) a declaration by this Court cancelling or reforming the registration of the
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`KENTUCKY mark in international trademark class 25;
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`(b) a declaration by this Court that there is no likelihood of confusion between the
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`KENTUCKY mark and the KENTUCKY MIST MOONSHINE mark;
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`(c) a declaration by this Court that there is no dilution of the KENTUCKY mark by the
`
`use of the words KENTUCKY MIST MOONSHINE;
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`(d) a declaration by this Court that there is no infringement of the KENTUCKY mark by
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`Kentucky Mist Moonshine Inc.'s use of the KENTUCKY MIST MOONSHINE mark;
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`(e) a declaration by this Court that there is the KENTUCKY mark is not famous, thus not
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`entitled to the broad scope of protection given to famous marks;
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`(f) a finding by this Court that this case is exceptional under the 15 U.S.C. $ 1117 and
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`that an award to Kentucky Mist Moonshine Inc. their costs of suit, including reasonable
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`attorneys' fees and expenses as provided by law is appropriate;
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`(g) trial by jury; and
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`(h) granting such other and further relief as the Court deems just and proper.
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`Respectfully submitted,
`
`/s/ James M. Francis
`James M. Francis
`FOWLER BELL PLLC
`300 W Vine St., Ste 600
`Lexington, KY 40507
`Phone: (859)252-6700
`Fax: (859) 255-3735
`Counsel for Kentucky Mist Moonshine Inc.
`
`

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`Case: 5:15-cv-00385-DCR Doc #: 5 Filed: 01/08/L6 Page: 10 of L0 - Page lD#:92
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`CERTIFICÄTE OF SERVICE
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`I hereby certify that on January 8, 2016, I caused a copy of the foregoing Plaintiffs
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`Amended Complaint to be served on all counsel for the Defendant via the ECF system.
`
`Bryan Beauman
`Sturgill Turnery Barker & Moloney, PLLC
`333 W Vine St, Ste 1500
`Lexington, KY 40507
`bbeaum an@sturgi I lturner. com
`COUNSEL FOR THE DEFENDANT
`
`William Thro
`University of Kentucky
`301 Main Building
`Lexington, KY 40506
`William.thro@uky.edu
`COUNSEL FOR THE DEFENDANT
`
`Michael Hargis
`Trevor Graves
`King & Schickli PLLC
`247 N Broadway
`Lexington, KY 40507
`Michael@iplawl.net
`trevor@iplawl .net
`COUNSEL FOR THE DEFENDANT
`
`/s/ James M. Francis
`COLINSEL FOR THE PLAINTIFF
`
`10