July 14, 2014

John Wayne's Gotta Do What John Wayne's Gotta Do: John Wayne Heirs Sue Duke University

by Stites & Harbison, PLLC

John Wayne Enterprises and Duke University are duking it out over use and registration of the marks "DUKE" and "DUKE JOHN WAYNE". John Wayne Enterprises (we'll refer to it as JWE) has filed an application to register the mark "DUKE" (U.S. Serial No. 85/860,463) and one to register the mark "DUKE JOHN WAYNE (plus design)" (U.S. Serial No. 85/864,358) for alcoholic beverages except beer.

Duke John Wayne

"DUKE JOHN WAYNE (plus design)"

The university has put its dukes up and opposed the registration of both these marks before the Trademark Trial and Appeal Board. Even though JWE seeks to use the marks solely in connection with small batch Kentucky bourbon, Duke University has opposed the registrations on the grounds of deceptiveness, false suggestion of a connection, likelihood of confusion, and dilution. Duke University alleges that JWE's use and registration of marks containing "DUKE" by JWE will interfere with Duke University's use of the mark "DUKE" and will also diminish, dilute, and tarnish Duke University's rights in the marks. Duke University apparently fears that consumers will be likely to think that Duke University is the source of alcoholic beverages bearing the word DUKE and an image of Wayne himself -- hat, gun, and bandana. Unlikely. Take a look:

Duke Bourbon 02

JWE disagrees. JWE asserts that consumers recognize that John Wayne was often referred to as "Duke" or "The Duke" and will not be confused. JWE notes that Duke "does not own the word 'Duke' in all contexts for all purposes" and that Duke has never "been in the business" of marketing alcohol, so bottles of bourbon bearing "DUKE" are unlikely to be mistaken for school-sponsored alcoholic beverages.

John Wayne did say, "Don't pick a fight, but if you find yourself in one I suggest you make damn sure you win." It seems JWE took those words to heart by filing a declaratory judgment action in the Central District of California on July 3, 2014, to get a federal court's opinion. JWE seeks a declaration of no likelihood of confusion and non-dilution. Stay tuned to see how this trademark shootout unfolds.

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