FRANKFORT  (KT) – A trademark battle is brewing between the University of Kentucky and the state, over the Beshear administration’s use of the term “Team Kentucky.”

UK is opposing the application by the state to trademark Team Kentucky, in a filing before the U. S. Patent and Trade Office’s Trademark Trial and Appeal Board.

Specifically, this involves any clothing with Team Kentucky on it, “All goods and services in the class are opposed, namely: Clothing, namely, t-shirts, sweatshirts, polo shirts, dress shirts, jackets, sweaters, golf shirts, cardigans, pants, shorts, sweatpants, socks, hats, caps being headwear.”

UK says they have used “Kentucky” on numerous clothing items since 1940, and that in 1997 was granted registration for the mark “Kentucky” for athletic jerseys, hats, t-shirts, sweatshirts, and jackets.  They claim the Team Kentucky mark use on clothing would, “cause confusion, cause mistake, and/or to deceive.” 

In a statement issued by Jay Blanton with UK Public Relations and Strategic Communications, he says:

“The University of Kentucky supports and applauds the governor’s use of the phrase ‘Team Kentucky.’ 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. 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. The governor’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 Team Kentucky mark. We kept them informed at every step of the way.

“We continue to work collaboratively with the governor’s office on this technicality related to federal trademarks and, more importantly, we continue to support efforts to keep our communities safe.  We encourage everyone to get vaccinated and to engage in healthy behaviors as part of Team Kentucky.”

In a series of Twitter posts, Josh Gerben. a patent attorney and founder of Gerben Intellectual Property stated, “This is about as silly as trademark cases get.”

Gerben noted,” The federal trademark registration grants the University of Kentucky the ‘presumption of national ownership’ around the word KENTUCKY as it relates to clothing.  Nevertheless, the University of Kentucky’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.”

He added, “It is a head scratcher as to why the case even got this far.”

The Governor’s office has not responded to a request for comment on the action.