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 descendants 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.

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