Law & Practice

UNITED STATES: The Sixth Circuit’s Take on Derby Pie

Published: February 17, 2021

Peter J. Rosene McBrayer PLLC Louisville, Kentucky, USA INTA Bulletins—North America Subcommittee


Mari-Elise Paul Stites & Harbison PLLC Louisville, Kentucky, USA INTA Bulletins—North America Subcommittee

Derby Pie, a Kentucky staple along with bourbon and the Hot Brown (an American hot sandwich originally created at the Brown Hotel in Louisville, Kentucky), recently found itself before the Sixth Circuit Court of Appeals in a trademark dispute over the name of the well-known dessert.

Kern’s Derby-Pie, made with the basic ingredients of chocolate and walnuts (the original recipe is a closely held trade secret), was invented by George Kern and his parents, Leaudra and Walter, in the 1950s at the Melrose Inn in Louisville, Kentucky. It has become a common fixture at festivities centered around the Kentucky Derby, for which it is named. The owner of what is now Kern’s Kitchen has held the DERBY PIE trademark, registration number 878,334, with the U.S. Patent and Trademark Office since 1969.

The Courier Journal, a Louisville newspaper, used “Derby pie” in two articles. The first article, titled, “Bourbon makes this Derby pie a state original” and published on the day of the 2017 Kentucky Derby, describes another local restaurant’s recipe for the chocolate nut pie. The second was a piece about a local baker’s macaron recipes with a photo caption containing the sentence, “Derby Pie, Mint Julep and Peach Tea macarons from Derby City Macarons.” The owner of the DERBY PIE mark filed suit against the Courier Journal for various claims, including trademark infringement and false designation of origin. The district court dismissed all claims with prejudice. The owner of the DERBY PIE mark appealed to the Sixth Circuit.

The question before the Sixth Circuit was this: Is a recipe from another restaurant and a flavoring for a non-pie pastry trademark infringement? More precisely, was use of “Derby pie” misleading consumers as to the origin of the original Derby Pie or was it instead being used in a “non-trademark way”? The court’s conclusion: this was a non-trademark use because “Derby pie” was used descriptively by the Courier Journal and not in a trademark-infringing way.

Regarding the first article, the court reasoned that although the Courier did indeed used the words “Derby pie,” it was a reference to another restaurant’s take on the recipe, not the famed Kern’s recipe. The recipe was for a Derby pie and not the Derby Pie. As for the baker’s Derby Pie—flavored macarons? The reference was merely to inform the reader of the general flavor of the macarons, just like the peach tea and mint julip flavors, not a designation of who originated the Derby Pie recipe.

As such, the court concluded in a decision filed January 11, 2021 that the Courier Journal had created sufficient differentiation from the products in the articles and the product designated by the DERBY PIE mark.

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