Owners Of Derby-Pie Trademark Fight To Keep It From Becoming Genericized

Not a Kerns Kitchen Derby-Pie.

Not a Kerns Kitchen Derby-Pie. (sheesalt)

First of all, what’s a derby pie? For those not living in or near Louisville, many Kentucky Derby fans say it’s a pie made with bourbon, chocolate chips and pecans. And then there’s one company that says it’s a walnut treat made without bourbon. Thing is, the latter holds the trademark to the phrase Derby-Pie, and it’s not ready to allow others to peddle their own iterations of the traditional dessert with that name.

While the denizens of Louisville will likely be gulping down what they call derby pies for tomorrow’s event at Churchill Downs,  only one business has the legal right to call its creations Derby-Pie, reports NPR’s Foodways blog.

That company is Kerns Kitchen, and it hasn’t shied away from suing in its fight to keep the term from becoming genericized, potentially leading to a loss of its legal trademark.

One worker at an area restaurant remembers when she and her co-workers used to serve what they called derby pie, until the establishment received a cease-and-desist from Kerns.

“You can say, ‘We have chocolate pecan pie, but we do not have Derby-Pie,’ ” the worker says now if someone orders a derby pie. “You didn’t know if they’d sent a plant in to see if we were doing it or not.”

Kerns tells NPR its Derby-Pie chocolate nut pie was created by family members in the 1950s as their restaurant’s signature item. The company later ditched the restaurant idea and kept the pie business, registering Derby-Pie as a trademark around that time.

With a business that produces 800 pies per day, according to the company, Kerns is fierce about protecting its recipe and technique, along with staunchly defending the trademarked name.

In another bit of legal wrangling, the manager of a local diner has been sued twice by the company, once in 1997 and once in 2007.

“I actually put up a sign after that conversation [that read]: Have a piece of ‘I Can’t Call It Derby Pie’ pie,” he says of his reaction during the first legal fight, which . Now though, he says he makes a Kentucky Bourbon Pie.

Though Kern’s doesn’t want its pie to go the way of zipper, laundromat and linoleum — other trademarked names that fell to genericide when people used them to reference any similar product — critics say threatening other people who use the name is robbing Kentuckians of their history, Kentuckians who might think of a different recipe when they hear “derby pie” anyway.

“If you have people scared to use the words ‘derby pie,’ and yet Grandma used to make it, then you’ve really banished Grandma in a way, haven’t you?” the diner owner says.

What’s Inside A ‘Derby Pie’? Maybe A Lawsuit Waiting To Happen [NPR Foodways]