Protecting the Derby Pie trademark is a constant battle for Kern's Kitchen
BY JOHN R. KARMAN III
Business First, 2005

Last year, Louisville's Kern's Kitchen Inc. celebrated the 50th anniversary of its signature product, Derby Pie, which was developed by the husband-and-wife team of Walter Kern and Leaudra Kern, former managers of the old Melrose Inn restaurant in Prospect.

Five decades later, the famous pie, a rich dessert made with walnuts and chocolate, still is produced in small batches with the original secret recipe. It is available at restaurants, grocery stores and other specialty retailers and through mail-order catalogs.

In an average week, 3,400 pies are made at the company's plant in the Bluegrass Research and Industrial Park, according to Alan Rupp, president and owner of Kern's Kitchen and grandson of the founders.

That's a big change from the time when his grandparents started Kern's Kitchen, he said. "I think they were baking three pies at a time and cooling them on the back porch."
The Derby Pie name is registered with the U.S. Patent and Trademark Office and the state of Kentucky.

Kern's Kitchen, which also produces and sells a cheesecake made from a family recipe, has an annual revenue of less than $1 million but has had to take on some industry giants - including Nestle and Bon Appetit magazine - in court to protect its trademark name.

Why is the name of your product so important, and what have you had to do to protect it?

"The Derby Pie name, I think, is an attention getter. Being a registered trademark, that's very helpful to us. The downside is, when you've got a registered trademark, you've got to police it and protect it nationwide. We've probably been in eight or 10 major pieces of litigation. That's a little imposing for a small company. Legal fees are imposing for anybody who gets into litigation. The last thing we want to do is file a lawsuit, but it's something that we certainly will do if it's necessary."

How do you ensure that no one gets your secret recipe?

"No one's allowed in the bakery when (longtime employee) Jerry (Buker) is doing the actual mixing. The bakery's totally off limits. There are only a few people who know the recipe. Jerry's the first one outside the family who we've made privy to the recipe."

What makes Derby Pie unique among desserts?

"A lot of people go for the looks of a dessert. Derby Pie is not ... an American beauty. When people try it the quality and the taste and the textures ... I think that's when we're way ahead. There's not a whole lot of air in there. There's not fluff. It's all good."