“Kentucky Fried Chicken” not in Kentucky, “Leavenworth Oktoberfest” not in Leavenworth,

On the morning of Tuesday September 27, Judge Thomas Rice held court two minutes early, at 9:58 AM, in Room 802 of the US District Court in Spokane. Christie Voos, Leavenworth Communications Analyst, sat, wearing nearly all black, as attorney Robert Carlson presented opening remarks in a low and slow pitch and cadence. He claimed the defense made “egregious statements” about the City online, citing an “egregious post” from July 25, which claimed “there is no Oktoberfest in Leavenworth.”

Projekt Bayern president Cary Sanger watched at ease, dressed in a traditional, short-sleeved dirndl with blue accents. Then defense attorney James Breitenbucher offered his reply while wearing a suit matched by a sky-blue dress shirt, speaking a little more quickly, in a slightly higher tone — a noticeable contrast to Carlson. Among the defense’s more memorable arguments was the claim that their trademark “Leavenworth Oktoberfest” is “no more a geographic misnomer than a Kentucky Fried Chicken outside of Kentucky.” Breitenbucher also noted that the business “Leavenworth Tattoo Haus” also first opened in Leavenworth, then, like “Leavenworth Oktoberfest”, moved to Wenatchee.

Ultimately the court denied the City’s motion, but the overall case has not been decided. Last week’s motion hearing ruled only on a preliminary injunction to, among other requests, temporarily legally order Projekt Bayern to stop using “Leavenworth” in their Oktoberfest materials. The date for the case’s jury trial has been set for August 28, 2023. Meanwhile, another motion hearing is scheduled for November 4, 2022; in this instance, for a motion by the City to dismiss Bayern’s counterclaims.

The City’s initial complaint, filed July, outlined ten requests it hopes to win from the court over Bayern which include compensation for damages and attorney fees, to forbid the use of “Leavenworth”' in any Bayern events not in Leavenworth, to declare the Bayern’s 2017 trademark on “Leavenworth Oktoberfest” as invalid, and to declare the trademark is in fact owned by the City. The court has yet to make a final decision on any of these requests. Though, according to the court’s recent decision, the City has not yet provided sufficient evidence that it is “likely to succeed” in its claims to invalidate Bayern’s trademark.

Issues of intellectual property — copyrights, patents, trademarks — have always been mired in moral controversy: while words, ideas, and information may benefit society when shared freely and openly, to what extent should the original innovators be granted protection in order to reward and motivate future innovation? Society might not have as many and as effective life-saving cancer treatments without the prospect of billions of dollars of incentives to be reaped by first-to-market. Traditional book and music industries are already struggling, but revenue made from their copyrights still goes toward discovering and funding authors and artists with new ideas to share. Apple invests hundreds of millions of dollars every year in marketing its iconic brand name. With their profits, they invest in the kind of research and development that created the iPhone and Apple Watch, devices that have shaped the nature of daily life. But the system is imperfect. Large corporations with extra cash, including Apple, are accused of “trademark bullying;” harassing small organizations into lawsuits they cannot afford to sustain, sometimes over issues seemingly as trivial as using a logo with a completely different fruit (see Apple v. Prepear 2020). At times these laws can hurt as much as they help.

Trademark law, which originated in England as a way to help customers distinguish different brands of bread, beer, and cattle, is distinct from other IP law in its purpose to protect consumers from confusion. Trademarks should, in theory, help consumers accurately identify the product or brand they hope to find. Therefore, in trademark cases, complainants have to show there is a “likelihood of confusion” between two brands or labels, and courts often require direct evidence from consumers (like a customer survey). As evidence for confusion, the City provided several emails showing consumers believing Oktoberfest was canceled, and a voicemail transcript from September 9, 2022 which read, “I got some [Oktoberfest] tickets last night um I thought it was from the Leavenworth website…but come to find out within five minutes of ordering them… it’s showing it’s in Wenatchee and [I basically thought] that it was gonna be for Leavenworth.”

The evidence proved somewhat convincing to the court: “[The] plaintiff had shown some likelihood of success on the confusion element but that the evidence was not decisive, particularly because some of the confusion may have stemmed from the plaintiff’s past affiliation with the defendant.” However, the court was less convinced that Bayern’s trademark was invalid: “Plaintiff has not provided evidence that the mark is invalid, was fraudulently registered, or that Defendant lacks the right to use the mark.”

During the hearing, the City claimed Bayern’s trademark should not be valid because “[the] Lanham Act prohibits use of a trademark to deceive consumers… including false statements of geographic origin.” They cite a class action lawsuit by Kona coffee harvesters from Kona against Costco, Kroger, and other corporations who claimed their coffee was “Kona coffee” even though chemical tests show very small percentages of coffee from Kona. However, the case was never decided by a judge. The defense settled for a total of fifty million dollars in payouts.

As it turns out Kentucky Fried Chicken actually did run into legal trouble using “Kentucky” in its name, but only because the State of Kentucky legally trademarked “Kentucky” in 1990 as part of a strategy to generate licensing revenues. Kentucky Fried Chicken officially became “KFC” shortly after, but, as of 2006, settled with Kentucky over using “Kentucky,” and can once again go by “Kentucky Fried Chicken.”

After further argument, evidence, and deliberation, a jury will consider the alleged claims of deceptive geographical designation and trademark validity. But for now, even if it may seem unreasonable to some residents that the terms “Leavenworth” or “Oktoberfest” can be trademarked at all or for services outside Leavenworth, it remains legally permissible. Until further notice, “Leavenworth Oktoberfest” remains trademarked by Projekt Bayern, and it remains completely legal to host and advertise “Leavenworth Oktoberfest” in Wenatchee.