Earlier this month, Duke University and the estate of actor John Wayne (incorporated as John Wayne Enterprises, LLC (“JWE”)) became embroiled in a lawsuit concerning the use of the word “Duke,” John Wayne’s nickname, in connection with the marketing and sale of whiskey. According to the documents filed in the Middle District Federal Court of California, the lawsuit stems from Duke University’s claims that JWE’s “Duke Kentucky Straight Bourbon Whiskey” is likely to cause consumers to believe that Duke University is sponsoring or somehow associated with producing/distributing alcohol, which thereby damages the school’s reputation.  In prior proceedings before the Trademark Trial and Appeal Board (“TTAB”), Duke University claimed that the “Duke” University trademark is famous and entitled to broad protection.

Trademark Protection Generally

Properly registering a trademark with the United State Patent and Trademark Office (“USPTO”) ensures that no other person or business entity may use your mark, or anything confusingly similar, within the classes of goods/services identified within the applicable trademark application.  If the goods/services are accurately identified within the trademark application, the applicant will be able to prevent third parties from using its mark (or anything confusingly similar) and recover proven damages for trademark infringement.  However, if any missteps are made during the trademark application process, the breadth of the trademark rights may end up being much more limited than intended.  As such, an effective trademark application is one which is broadly drafted within the legal parameters of trademark law.

JWE v. Duke University

In its complaint, JWE alleges that Duke University never claimed trademark protection over the class of goods/services that encompasses alcohol.  Moreover, JWE claims that John Wayne’s nickname, “Duke,” is also well known in the marketplace and will not cause any consumer confusion as to the source or origin of “Duke Kentucky Straight Bourbon Whiskey.”

Duke University has until later this month to file its answer to JWE’s complaint, but we anticipate that it will fight JWE’s likelihood of confusion arguments and assert a claim of trademark dilution, which may only be relied upon by owners of famous marks.  A claim of trademark dilution essentially asserts that even if the court finds that there is no likelihood of confusion between the parties’ respective marks, the asserting party’s mark is so famous that it should still be entitled to protection.  Trademark dilution is, in essence, a safety net used by famous marks to prevail in a trademark action and courts have increasingly been siding with owners of famous marks when trademark dilution is alleged.

Trademark Takeaway

The key to ensuring that your brand is thoroughly protected is to obtain the services of a qualified attorney who is well-versed in the nuances of the trademark application process.  It is a better business decision to have an experienced attorney search the trademark database and file your trademark application properly, than risk ending up with a useless trademark and/or spending more time and money than necessary amending your application.