10/02/2013 12:02 EDT | Updated 12/02/2013 05:12 EST

A pie by any other name: Derby Pie maker, restaurant settle dispute over dessert's trademark

LOUISVILLE, Ky. - A pie by any other name may be just as sweet, but it won't be Derby Pie.

Kern's Kitchen, the Louisville-based company that makes the famous dessert, and Claudia Sanders Dinner House settled a dispute over the trademark on the name Derby Pie. Under the agreement approved by U.S. District Judge Gregory Van Tatenhove, the dinner house and its employees are permanently barred from using the Derby Pie name or anything similar to it to promote the chocolate pie made with pecans and chocolate chips.

The dinner house, which was started in 1959 by Kentucky Fried Chicken founder Col. Harlan Sanders and his wife, is located in Shelbyville, about 30 miles east of Louisville, where the Kentucky Derby is held each year.

Kern's Kitchen holds a trademark in the name of the sweet treat, which was created in the 1950s and is sometimes sold at the popular horse race. Kern's Kitchen created its popular pie in 1954.

The settlement acknowledges Kern's trademark, but indicates no money or damages changed hands.

The dispute arose over whether servers at the restaurant were calling their dessert "Derby Pie."

Kern's Kitchen's attorney Donald Cox said they asked the restaurant to stop using the term, but management wouldn't.

"We were surprised someone who clearly knew about the trademark was doing this," Cox said. "We were more interested in stopping the infringement than counting pennies."

An attorney for Claudia Sanders Dinner House, Kyle Ann Cintrynell, did not immediately return a message seeking comment Wednesday.

"Derby Pie" is a specific recipe for a chocolate-nut pie made by Kern's Kitchen, which has held the trademark on it for decades and hasn't been shy about going to court to protect it. Cox estimated that Kern's Kitchen has sued to protect the copyright more than 25 times over the years and that he sends out at least one or two letters a week asking people and companies to honour the trademark.

Bon Appetit magazine won a legal victory when a judge in 1987 found the name to be generic, but the U.S. 6th Circuit Court of Appeals overturned that decision.

Recipes for the sweet treat can be found on multiple websites and the pie has its own dedicated Facebook page set up by Kern's Kitchen.

The Claudia Sanders Dinner House, in its online menu, advertises "Claudia's Kentucky Pie — Made With Chocolate Chips and Pecans," but makes no mention of "Derby Pie."

The restaurant has since left the control of the Sanders family and is run by businessman Thomas Q. Settle.

Because Kern's Kitchen owns the "Derby Pie" name, others who make similar pies have had to alter their recipes slightly or use a different name, including "Pegasus Pie," in reference to the Pegasus Parade at the Kentucky Derby Festival and May Day Pie, a reference to the first Saturday in May, the day of the Kentucky Derby.


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