Duke v. The Duke: Trademark Dispute Over Alcoholic Beverages

Duke University and John Wayne Enterprises, Inc. (“JWE”) are engaged in trademark litigation over the “Duke” trademark in connection with alcoholic beverages.  JWE is operated by John Wayne’s descendents and enters into licenses and partnership agreements with respect to the name and likeness of John Wayne.  The dispute arose when Duke opposed trademark applications filed by JWE for “Duke” and “Duke John Wayne” in connection with alcoholic beverages except for beers.  In its oppositions, Duke University alleged that JWE was seeking trademarks substantially similar to the university’s “famous mark … for goods that are closely related to goods and services with which” Duke uses its DUKE marks.  Accordingly, Duke asserted that the applications should be rejected because the applied-for marks were likely to cause confusion and/or dilution with respect to Duke’s trademarks.

JWE was apparently so taken aback by Duke’s position that it filed a complaint for declaratory judgment with the U.S District Court for the Central District of California.   Specifically, it asserted that it feared that Duke University “intends to sue JWE for trademark infringement” and it therefore “seeks a judicial declaration of no likelihood of confusion and nondilution to remove that cloud.”  JWE calls Duke’s position “ludicrous” and noted that the DUKE bourbon sold under license features John Wayne’s signature, an image of a shotgun casing and the words “Kentucky Straight Bourbon Whiskey Small Batch.”

From Duke University’s perspective, they are doing what most companies (or universities) would do in their position — they are exercising their affirmative duty to police their trademarks by objecting to the registration of a substantially similar mark.  After all, Duke University uses its mark on a wide variety of products and those marks can be weakened if there are lots of other “Duke” marks on the trademark registry.  JWE’s position is equally rationale.  It does not believe its “Duke” mark, as specifically used on its products in connection with John Wayne and especially on alcoholic products, could ever be confused with Duke University.

See complete copy of the complaint here.

The Supreme Court’s Lesson on Labeling – My Article for Food Processing Magazine

I have written an article for Food Processing magazine regarding the Supreme Court’s decision in POM Wonderful v. Coca-Cola.  It is available on-line here.

Consumer Reports Petitions FDA/USDA to “Prohibit the Use of the ‘Natural’ Label on Food”

Consumer Reports is sponsoring a petition to the FDA and USDA to prohibit use of “natural labeling” on food products.  Consumer Reports believes such labeling is misleading because it is used on products that most consumers would not view as “natural.”

Even though the Food and Drug Administration does not object to the use of the term “natural” if “nothing artificial or synthetic” is added, there’s no definition for the term, which essentially means no regulation and no oversight.  As a result, “natural” processed foods can include ingredients from nature that are processed into artificial ingredients and may also come from plants grown with toxic pesticides, bioengineered seeds, and chemicals processed with synthetic solvents.  Meat labeled as “natural” can come from animals that were raised with daily doses of antibiotics and other drugs, given artificial growth hormones, fed genetically engineered soy and corn feed and other artificial ingredients and continually confined indoors.

Consumer Reports then cites the results of a recent consumer survey which suggests that most consumers view the “natural” label as excluding the foregoing practices and ingredients.   Thus, “[t]oo many people believe they’re avoiding toxic pesticides, artificial growth hormones, and GMOs when they buy food labeled ‘natural.’”

The petition therefore urges (a) the USDA to add the following section to 9 CFR 412.1: “The term “natural” may not be used on labeling for meat products and poultry products” and (b) the FDA to add the following section under 21 CFR 101 General Provision for Food Labeling: “The term ‘natural,’ or any derivation of the term, such as ‘naturally grown,’ ‘naturally sourced,’ or ‘from nature,’ is vague and misleading and should not be used.”

Consumer Reports certainly has a point.  There is no question that the term “natural” is vague and subject to different interpretations.  And there are certainly food products with questionable “natural” claims when compared to the expectations of a reasonable consumer.   Moreover, as I wrote in January, the FDA has no interest in crafting a formal definition of the term “natural.”  It recognizes that such a task means traveling down the proverbial rabbit hole in a potentially vain effort to  issue a regulation or formal guidance on this amorphous term.  It noted that engaging in this process requires it to consider, among other things, “relevant science; consumer preferences, perceptions, and beliefs; the vast array of modern food production technologies in addition to genetic engineering (e.g., use of different types of fertilizer, growth promotion drugs, animal husbandry methods); the myriad food processing methods (e.g., nanotechnology, thermal technologies, pasteurization, irradiation); and any strictures flowing from the First Amendment.”  (Emphasis added)

The Consumer Reports’ petition seeks to avoid these complications by simply banning all uses of “natural” labeling.  But this approach tosses the baby out with the bath water.  Specifically, banning all uses of “natural” precludes uses of “natural” in cases where it is plainly not false or misleading.  In this regard, the petition also appears to bar all uses of the term, no matter how narrowly drawn.  These points raise First Amendment concerns and concerns about the regulatory authority for the proposed regulations.  Notably, if the petition sought to prohibit natural labeling only as to certain types of food products, ingredients, technologies and/or processes, then it would be creating a de facto definition of natural that brings with it all the complications the FDA wants to avoid.

In light of the foregoing, I doubt the FDA or USDA will view this petition any differently than petitions asking for a formal definition of “natural.”  As I told NPR,  “[t]his is not a health or safety issue for them” and not high on the agency’s list of priorities.”

Supreme Court Rules 8-0 In Favor of POM Wonderful

The Supreme Court has ruled 8-0 in favor of POM Wonderful in its lawsuit against Coca-Cola with respect to its Minute Maid “Pomegranate Blueberry” juice blend.   I am fortunate to have been quoted in numerous articles discussing today’s ruling.

USA Today – “Justices: Coke’s Pomegranate Juice Not the Real Thing.”

CBS News Moneywatch – “In Juicy Battle with Coke, Supreme Court Sides with POM.”

Washington Post – “Supreme Court says Coca-Cola can be sued over Juice Drink Label.”

Food Navigator – “POM Wonderful scores ‘resounding victory’ at Supreme Court, But What Does it Mean for Your Label?”

National Law Journal – “Supreme Court Closes Safe Harbor in False Advertising Wars.”


Hershey’s Not Amused By Pot-Infused “REEFER’S” Peanut Butter Cups

Hershey’s also just filed a very similar lawsuit against pot-infused candy makers in Colorado.  See here.  For obvious reasons, Hershey’s is not amused by sales of pot-infused candy products that plainly trade on its well-known trademarks and packaging.  While mimicking popular candy brands might have been popular for illegal marijuana products, that practice will likely fade very quickly for regulated dispensaries.

Muscle Milk Target of Another False Advertising Claim


Cytosport, Inc., maker of MUSCLE MILK protein shake products, is the target of a false advertising claim under the Lanham Act brought by Global Beverage Enterprises, Inc. which markets beverages under brand names such as MR. Q. CUMBER and SWEET BLOSSOM.  Although Global Beverage’s products are not protein shakes, it alleges that its beverages are displayed alongside MUSCLE MILK roducts in the same beverage coolers at Fresh Market s

Global Beverage claims that the Cytosport products are misleading because they prominently display the term MUSCLE MILK even though they do not contain milk and that this has the effect of suggesting to consumers that its products  “are healthier beverages when compared to competitor’s products, including the Plaintiff’s products.”  Global Beverage asserts that these “deceptive efforts” include marketing products (i) in flavors traditionally associated with milk such as ‘chocolate’ and ‘chocolate malt’ and terms traditionally associated with milk as ‘chocolate malt’ and ‘shake’” and (ii) as  “lactose free” which is a phrase “that would only be associated with a product containing milk.”

This case is noteworthy for two key reasons.  First, Global Beverage’s products are not protein shakes or milk products which undermines its allegation that it is harmed by the marketing of Cytosport’s products.  In this regard, Global Beverage alleges that its beverages are displayed alongside MUSCLE MILK products in the same beverage coolers at Fresh Market stores nationwide and that they therefore “compete.”  Pursuant to recent Supreme Court precedent, a plaintiff has standing to bring false advertising claims under the Lanham Act if can (1) allege an injury to a commercial interest in reputation or sales; and (2) show that such injury was proximately caused by defendant’s misrepresentations.   Because it does not appear that the parties’ products are directly competitive, both of these elements are likely to be tested in this litigation.

Second, as shown in the above image taken from Global Beverage’s complaint, MUSCLE MILK products include the statements “contains no milk” and “includes milk proteins” directly below the product name on the front label.  In  2010, the Federal Trade Commission (FTC) reviewed the use of “Muscle Milk” in connection with the “contains no milk” disclaimer and found the label was not deceptive to consumers.  One year later, the FDA took a different view and sent Cytosport a warning letter stating that the MUSCLE MILK products are misbranded because they (a) prominently feature the word “MILK” but contain no milk with the actual statements of identity (“Protein Nutrition Shake” and “Nutritional Shake”) in significantly smaller and less prominent type and (b)  contain certain milk-derived ingredients but the “Contains No Milk” disclaimer could give consumers the impression that these products are free of milk-derived ingredient, which is especially relevant with respect to allergens.  Presumably, the “Includes Milk Proteins” statement directly below “Contains No Milk” was added in response to these concerns.

The lawsuit is pending as Case No. 0:14-cv-60950 in the U.S. District Court for the Southern District of Florida.





GMA States it will Challenge Vermont GMO-Labeling Bill

On May 8th, Vermont Governor Peter Shumlin signed into law the nation’s first GMO labeling law requiring that food offered for retail sale that is entirely or partially produced with genetic engineering must be labeled as such by July 2016.  Ballot initiatives to require GMO labeling failed in California and Washington while Maine and Connecticut passed laws that do not go into effect until other states pass GMO-labeling laws.

The Grocery Manufacturers’ Association (GMA) has already announced plans to challenge the new law, stating in relevant part:

Today, Vermont Governor Peter Shumlin signed into law HB 112, a bill that is critically flawed and not in the best interests of consumers.  It sets the nation on a costly and misguided path toward a 50-state patchwork of GMO labeling policies that will do nothing to advance the safety of consumers.

GM crops are safe and have important benefits for people and our planet.  They use less water and fewer pesticides, reduce crop prices by 15-30 percent and can help us feed a growing global population of seven billion people.  ….

Consumers who prefer to avoid GM ingredients have the option to choose from an array of products already in the marketplace labeled ‘certified organic.’ The government therefore has no compelling interest in warning consumers about foods containing GM ingredients, making this law’s legality suspect at best.  In light of this fact, in the coming weeks GMA will file suit in federal court against the state of Vermont to overturn the law.

See the GMA’s complete press release here.

Consumer’s right to know or compelled speech that violates the First Amendment?  The final answer to this compelling question is still many years away.