Honorable Order of Kentucky Colonels v. Building Champions

Citation: Honorable Order of Kentucky Colonels v. Building Champions, LLC, 345 F.Supp.2d 716 (W.D. Ky. 2004)(full-text).

Factual Background
Plaintiff is a nonprofit Kentucky corporation that distributes grants to needy causes in the state and owns the trademark KENTUCKY COLONELS and the domain name “kycolonels.org.” Plaintiff also sells merchandise such as t-shirts, hats, and key rings to raise charitable donations through its website and direct mail. Plaintiff also had plans to license its KENTUCKY COLONELS mark to a larger audience and for a wider variety of goods.

Plaintiff sued defendant, the newly formed American Basketball Association Kentucky Colonels professional basketball team, for trademark infringement and unfair competition. There had previously been a Kentucky Colonels professional basketball team between 1967 and 1976. Plaintiff requested a preliminary injunction barring defendant from using “Kentucky Colonels” on its team-related merchandise; plaintiff did not challenge defendant’s use of the name for the basketball team.

Trial Court Proceedings
Analyzing the merits of the plaintiff’s claim, the court found plaintiff’s mark “quite distinctive and widely recognized” but found a lack of similarity between the parties’ marks. Plaintiff’s goods typically bore the full name “The Honorable Order of Kentucky Colonels,” or the Kentucky Colonels name with the seal of the state. Defendant, on the other hand, used a red, white, and blue logo including a basketball and the words “Louisville” and “Kentucky Colonels.”

Regarding the marketing channels used and likelihood of expansion, the court focused on the use of the Internet by both parties. The court pointed to the Sixth Circuit’s Therma-Scan decision for the “three questions to consider when deciding whether the Internet constitutes a common marketing channel,” namely (1) whether both parties use the Internet as a substantial marketing and advertising channel, (2) whether the parties’ marks are used in connection with Internet products, and (3) whether the parties’ marketing channels overlap in other ways.

Here, both parties used the Internet as a “substantial marketing and advertising channel” such that some initial confusion between the websites was possible. However, because plaintiff’s customers sought to support plaintiff’s charitable efforts and defendant’s customers wanted to support the basketball team, the court concluded that the “predominant customers of the two parties appear to be inherently distinct.”

Considering the likelihood-of-confusion factors, only the strength of the mark was in plaintiff’s favor. According to the court, the “unrelatedness of the underlying activity, the dissimilarity of the overall impression as well as the likelihood of purchaser care [were] all significant enough to outweigh the importance of a strong trademark.” Plaintiff thus failed to establish a strong likelihood of success on the merits of its infringement claim, and the court denied plaintiff’s motion for a preliminary injunction.

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