Trademarks have forged a terrain for John Wayne to fight his most stubborn opponent yet: Duke University. Duke University was the recent victor, by way of a dismissal, in the Central District Court of California in the latest lawsuit brought by John Wayne Enterprises (JWE), Wayne’s family business, seeking a declaratory judgment from the court to use the trademark “Duke” on a brand of alcoholic beverages, particularly bourbon. The mark, which bears likeness to Wayne’s image and signature, has been consistently opposed by Duke University out of fear that the public will be confused by brand and associate the alcoholic drinks with the university rather than with John Wayne Enterprises. However, Judge Carter ruled not that the “Duke” mark would be a source of confusion for consumers, but rather that the court did not have jurisdiction to hear the case, still leaving the issue open for battle; most likely in front of the United States Patent and Trademark Office (USPTO), which is the more appropriate forum in which to litigate the dispute.
This most recent foray in the courtroom is just another of many between Duke and JWE since JWE first introduced its “Duke” trademarks almost a decade ago. The university has opposed JWE’s “Duke” mark on a variety of uses, such as for casino gaming machines, restaurant services and celebrity brand licensing. Duke University does not want its famed mark diluted by a nearly identical mark, despite the dissimilar appearance of the JWE “Duke” logo and the different goods and services for which JWE’s “Duke” marks seek trademark protection.
One of the reasons why an individual or entity pursues the federal registration of a trademark with the USPTO is to shield a brand in which he has invested time, money and effort from being used or capitalized on by others. Nevertheless, similarly named trademarks attached to differing goods and services can co-exist peacefully on the federal register. For example, aside from Duke University and John Wayne, there are other notable “Dukes” in popular culture who also carry registered trademarks in conjunction with their brands: Duke Ellington, also known as “The Duke,” is the owner of several marks protecting his name and orchestra; “The Duke” is the official football of the NFL named after Wellington Mara, and Wilson Sporting Goods owns the trademark of the football bearing the moniker; and Warner Bros. Entertainment owns marks protecting its two rowdy Dukes in connection with “The Dukes of Hazzard” television series which achieved popularity both on the small and large screens, and for clothing associated with them and their likenesses. Interestingly, however, JWE’s trademark application for “The Duke” for use on clothing, as it reads on the application: “all in connection with indicia denoting the late internationally known movie star John Wayne,” remains suspended due to the disputes with Duke University.
Duke University can be respected for vigilantly safeguarding its intellectual property rights in its brand; however, is the university trying to extend its territorial boundary over the “Duke” mark too far? Is it fair to allow the university to monopolize uses of the word “Duke” that are unrelated to academia and the school’s athletics? Is the public that likely to associate a logo featuring the name and silhouette of “The Duke” John Wayne used on alcoholic beverages and clothing with that of Duke University and its Blue Devils? Those are some of the questions that continue to linger, and that will likely be presented to the USPTO for final determination.
If you have trademarks that you would like to register for federal protection with the USPTO or any other intellectual property concerns, the attorneys at Korngut Paleudis LLC have the knowledge and experience necessary to apprise you of your rights and address your intellectual property needs. Please contact the firm either through our website or at (212) 949-0138 in New York City, (914) 220-8270 in White Plains, or (203) 355-3635 in Stamford, Connecticut.