Government Contracts Legal Blog

Likelihood of Confusion between John Wayne and Duke University?

Posted by Brandon Selinsky on Dec 21, 2014 12:10:42 PM
Brandon Selinsky

Duke University versus the Duke's bourbon? Likelihood of consumer confusion? You decide.

When most people think of John Wayne, they immediately picture Academy Award winning actor and American icon famous for his cowboy films. Most people don’t make a connection between John Wayne and Duke University. However, due to an old nickname of John Wayne, Duke University and John Wayne’s estate have found themselves entangled in a trademark dispute.

different trademarks can cause consumer confusion

John Wayne’s Estate Has Plans

Those who know John Wayne probably know of his nickname, “The Duke.” It was a childhood nickname that stuck. Fun fact: he even named his dog Duke. John Wayne’s estate has been making use of this nickname in its branding of a bourbon called “Duke Kentucky Straight Bourbon Whiskey.” The flashy label includes John Wayne’s likeness, and can be viewed here.

The Blue Devils Don’t Like It

After hearing of the estate’s plans, Duke University decided to try to block the estate from using “Duke” in its name. The main argument that Duke University raises is that they own the trademark for “Duke” and the estate should not be able to use the word in reference to liquor. Additionally, Duke University argues that allowing the estate to use the word “Duke” in relation to alcohol tarnishes and dilutes the universities well-known and protected trademark, as well as the school’s well-respected reputation.

A Little About the Law

So who wins here? Should John Wayne’s estate be able to file and establish trademark for “Duke Bourbon” since John Wayne’s nickname was “Duke”? Should Duke University, which is not involved with the business of producing alcohol, have a say in the Duke trademark in relation to Bourbon?

Trademark law is based on the principle of stopping consumer confusion. As a result, when applying for a trademark registration one must place the good or service being trademarked into various classes of goods and services; these classes are uniform internationally. As a result, products are divided into classes according to the function or purpose of the item. Some trademark applications allow for “Multi-Class” registration and therefore one can register the trademark for multiple services or multiple goods. However, generally, a trademark for a lipstick called “Red Rose” will not be infringing on a trademark for household cleaning services called “Red Rose.”

In this case, the question is whether consumers will be confused by “Duke Bourbon” and mistakenly think that Duke University produced the Bourbon? Duke does not own the trademark for “Duke” in relation to alcohol and therefore, should John Wayne’s estate be able to use the trademark in relation to goods that are so distant from the universities uses?

The Wayne family is asking a federal judge to “declare that its use of “Duke” to sell liquor and other products is not likely to cause consumer confusion, does not dilute, and does not infringe the Duke University Marks.” More specifically, the family wants the judge to declare that there is “no likelihood of [consumer] confusion” which would then “remove the cloud hanging over its marketing deals” for Duke Bourbon. In response, Duke University stated, “While we admire and respect John Wayne’s contributions to American culture, we are also committed to protecting the integrity of Duke University’s trademarks.”

Trademarks & Your Business

Trademark disputes are not uncommon and become even more complicated if a business operates internationally. Fortunately, a lot can be done to protect trademarks domestically and internationally. If you would like more information about what businesses need to know about trademark law, contact the attorneys at Whitcomb Law, P.C. today.

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Topics: Trademark Law

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