Ky. Mist Moonshine, Inc. v. Univ. of Ky.

• Decision Date: 23 June 2016
• Docket Number: Civil Action No. 5: 15-385-DCR
• Citation: 192 F.Supp.3d 772
• Parties: KENTUCKY MIST MOONSHINE, INC., Plaintiff, v. UNIVERSITY OF KENTUCKY, Defendant.
• Court: U.S. District Court — Eastern District of Kentucky

192 F.Supp.3d 772

KENTUCKY MIST MOONSHINE, INC., Plaintiff,

v.UNIVERSITY OF KENTUCKY, Defendant.

Civil Action No. 5: 15-385-DCR

United States District Court, E.D. Kentucky, Central Division at Lexington.

Signed June 23, 2016

James M. Francis, Francis Law Firm, Lexington, KY, for Plaintiff.

Bryan Howard Beauman, Sturgill, Turner, Barker & Moloney PLLC, Michael S. Hargis, Trevor T. Graves, King & Schickli, PLLC, William Eugene Thro, University of Kentucky, Lexington, KY, for Defendant.

MEMORANDUM OPINION AND ORDER

Danny C. Reeves, United States District Judge

This matter is pending for consideration of Defendant University of Kentucky's motion to dismiss Plaintiff Kentucky Mist Moonshine, Inc.'s (hereafter, "KM") Amended Complaint [Record No. 8] and the plaintiff's motion for leave to file a Second Amended Complaint [Record No. 22]. In moving to dismiss the Amended Complaint, The University of Kentucky argues that: (i) the Eleventh Amendment and state sovereign immunity bar the plaintiff's claims; (ii) the Court lacks jurisdiction over the claims involving registration of trademarks; and (iii) certain claims involve issues of standing. [Record No. 8, pp. 10, 21, 29, 31] With respect to Kentucky Mist Moonshine's motion for leave to amend, it contends that the tendered Second Amended Complaint cures the standing issues. [Record No. 22]

For the reasons outlined below, the Court will grant the defendant's motion to dismiss and deny the plaintiff's motion for leave to file the proposed Second Amended Complaint.

I.

The University of Kentucky (hereafter, "UK") is an educational institution operating in Lexington, Kentucky. UK has owned United States Trademark Registration No. 2,066,804 (the "804 application") [Record No. 5-1] for the mark "KENTUCKY" for several goods in Classes 16 and 25 of the Trademark International Classification System since June 3, 1997. [Record No. 5, ¶¶ 1, 5, 12, 17, 19] Kentucky Mist Moonshine, Inc. (hereafter, "KM") is a manufacturer of distilled spirits. Additionally, it sells articles of clothing with its "KENTUCKY MIST MOONSHINE" mark. [Id. , ¶ 16] On March 25, 2015, KM filed a federal trademark application numbered 86577855 (the "855 application") with the United States Patent and Trademark Office ("USPTO"). [Id. , ¶ 21; Record No. 5-3] The application proposes to use the mark to identify hats, hooded sweatshirts, jackets, pants, shirts, shoes, and socks in Class 25 and distilled spirits in Class 33. [Record No. 5-3, pp. 16–17; 8-3] The application remains pending.

On October 12, 2015, UK mailed a "cease and desist" letter to KM, requesting that KM "expressly abandon its effort to register the mark KENTUCKY MIST MOONSHINE & Design (U.S. Reg. App. Ser. No. 86/577,855) in Class 25" and:

continue to take care to avoid using the mark in combination with the University's source-identifying color schemes and/or other indicia associated with the University, in connection with clothing, or any other goods or services .... It is our present position that Kentucky Mist Moonshine, Inc.'s use of the mark KENTUCKY MIST MOONSHINE to identify articles of clothing is likely to cause deception, confusion, and mistake ....

[Record No. 8-4, p. 1] The letter then reiterated the demand that KM abandon its application and warned that, "[i]n the event our requests are not met, the University is prepared to file a Notice of Opposition" against the '855 application as it relates to Class 25. [Id. , p. 2] UK expressed its desire to hear from KM by the end of the month. [Id. ]

On October 29, 2015, the plaintiff responded to the letter, informing the defendant of its belief that its effort to register the KENTUCKY MOONSHINE MARK would not result in dilution of or a likelihood of confusion with the KENTUCKY mark. [Record No. 8-6, p. 1] Next, the plaintiff's letter warned that:

[i]f your client is unwilling to voluntarily reform their trademark registration to limit the scope of protection to uses of the word 'Kentucky' which clearly and unambiguously relate to the University of Kentucky, we will have no other recourse than to seek a judicial declaration as to the scope of the mark and to resolve allegations of likelihood of confusion, dilution, and infringement.

[Id. , pp. 1–2] KM further expressed its desire to meet with UK's counsel, stating that it "look[ed] forward to hearing from" UK no later than 1:00 p.m. the next day. [Id. , p. 2]

At 11:57 a.m. the next day, UK sent an e-mail to KM, explaining that it did not have sufficient time to substantively respond but that it would do so within a reasonable time to discuss an "amicable resolution." [Record No. 8-7] KM's counsel responded that the parties could "circle back to this on Monday morning," highlighting that he was feeling pressure from KM to file a civil action against UK. [Record No. 8-8] At 1:22 p.m. on November 2, 2015 (Monday), UK e-mailed KM, apologizing for missing a phone call from KM and alerting KM to a forthcoming written response to the October 29, 2015 letter. [Record No. 8-9]

That afternoon, KM filed a civil action in this Court against UK. See Kentucky Mist Moonshine, Inc. v. University of Kentucky , Civil Action No. 5: 15-328-DCR (E.D. Ky. 2015). [Record No. 1, therein] At 4:35 p.m., UK sent KM the November 2, 2015 letter, which sought to correct certain alleged misunderstandings contained in the October 29, 2015 letter. [Record No. 8-10] Specifically, UK informed KM that it did not need to change its name, abandon its effort to register its mark in Class 33, stop using the mark, or stop selling T-shirts bearing the mark. [Record No. 8-5, p. 1] Additionally, the defendant's letter clarified that KM's use of its logo on T-shirts thus far was appropriate and that KM should "continue to take care" to avoid combining UK's indicia with KM's logo on such items. [Id. , p. 2] Further, UK discussed a possible "amicable agreement" and its proposed "limitation to the Class 25 identification of the pending registration application" to protect both parties' rights. [Id. ] Subsequently, the plaintiff e-mailed the defendant, advising the defendant that the written response arrived "30 minutes too late," but expressing a desire to discuss a resolution. [Record No. 8-10, p. 4]

On November 19, 2015, KM sent a letter to UK, explaining its interpretation of the November 2, 2015 letter. [Record No. 12-3] The letter specifically requested that, "[i]f the intention of the University of Kentucky is to permit the use of the KENTUCKY MIST MOONSHINE mark by Kentucky Mist Moonshine without threat of a lawsuit, then please explicitly state that intention." [Id. , p. 3] In addition, KM expressed its willingness to resolve the pending action through settlement and limit its pending application, as long as UK limited the scope of its mark. [Id. ] UK did not respond to this correspondence.

On December 4, 2015, UK filed a motion to dismiss the civil action instituted in this Court. See Civil Action No. 5: 15-328-DCR. [Record No. 11, therein] KM responded procedurally by filing a notice of voluntary dismissal, without prejudice, pursuant to Rule 41(a)(1) of the Federal Rules of Civil Procedure. See id. [Record No. 12, therein] The next day, KM filed an action against UK in state court. See Kentucky Mist Moonshine, Inc. v. University of Kentucky , Case 15-CI-4611 (Fayette Circuit Court Dec. 22, 2015). [Record No. 1-2] On December 23, 2015, UK removed that action to this Court, filing a motion to dismiss that same day. [Record Nos. 1; 4] KM then filed an Amended Complaint. Five days later, it also filed a response in opposition to the motion to dismiss. [Record Nos. 5; 7] Because the motion to dismiss was mooted by the Amended Complaint, UK filed another motion to dismiss on January 19, 2016. [Record Nos. 8; 10] On the same date, UK filed a Notice of Opposition with the Trademark Trial and Appeal Board ("TTAB") concerning the '855 application as it relates to Class 25. [Record No. 8-11]

In Count I of the Amended Complaint, KM seeks cancellation of the KENTUCKY mark in Class 25 or reformation to denote "a clear and unambiguous connection to the University of Kentucky" under 28 U.S.C. §§ 2201 −02 and 15 U.S.C §§ 1119, 1052(f), and 1064. [Record No. 5, ¶¶ 29–37] The second count seeks a declaration that there is no likelihood of confusion between the KENTUCKY MIST MOONSHINE MARK and the KENTUCKY mark in "any international trademark class of goods and services." [Id. , ¶¶ 38–42] The plaintiff asserts in Count III that there is no dilution of the KENTUCKY mark by its "commercial use of the words 'Kentucky Mist Moonshine' in any international trademark class of goods or services." [Id. , ¶¶ 43–47]

Next, KM claims in Count IV that there is no infringement of the KENTUCKY mark by its "commercial use" of the aforementioned words in "any international trademark class of goods or services." [Id. , ¶¶ 48–52] Finally, the last count seeks a declaratory judgment that the KENTUCKY mark is not famous under 15 U.S.C. § 1125. [Id. , ¶¶ 53–58] Ultimately, KM requests five declaratory judgments and an award of costs under 15 U.S.C. § 1117. [Id. , p. 9]

In its motion to dismiss, UK argues that all the plaintiff's claims are barred by Eleventh Amendment and/or state sovereign immunity. [Record No. 8-1, p. 8] It also asserts that this Court lacks jurisdiction under Rule 12(b)(1) of the Federal Rules of Civil Procedure to address the first two counts. [Id. , p. 31] And finally, UK alleges that KM lacks standing regarding Counts III through V. [Id. , pp. 21, 29]

II.

A party may move for dismissal based on lack of subject-matter jurisdiction under Rule 12(b)(1) of the Federal Rules of Civil Procedure at any time. See Fed. R. Civ. P. 12(h)(3). Rule 12(b)(1) motions to dismiss may constitute facial or factual attacks. See Gentek Bldg. Products, Inc. v. Sherwin – Williams Co. , 491 F.3d 320, 330 (6th Cir.2007). A facial attack "questions merely the sufficiency of the pleading." Id. With a factual attack, the Court must "weigh...