Take cover, a trademark gunfight is brewing!

The First Shot: Duke University

John Wayne, our matinee idol, the symbol of the American West, is being tested once again.  No, not on the silver screen, but before the U.S. Trademark Trial and Appeal Board.  His antagonist?  Duke University, best known for stellar academics, bucolic settings, and Coach K.

Yes, it takes true grit to oppose The Duke.

In the trademark opposition, Duke University v. John Wayne Enterprises LLC,  the Opposer, Duke University (“Duke U.”), has challenged John Wayne Enterprise’s (“JWE”) application for registration of the mark DUKE for  “alcoholic beverages except beers, all in connection with indicia denoting the late internationally known movie star, John Wayne, who is also known as Duke.”  This is the latest chapter in Duke University’s fight against JWE, with Duke having either opposed or sought to cancel several other trademark registrations of JWE that contain the “Duke” moniker over the years.

In this most recent Notice of Opposition, Duke U. relies on several of its trademark registrations for “Duke” and its derivatives for a wide variety of goods and services, including Duke, Duke University, Dukie, and Iron Dukes ID.  Duke U. argues that JWE’s registration of the “Duke” moniker will be likely to cause confusion among the relevant consuming public as well as dilute Duke U.’s family of DUKE marks that it considers to be famous by virtue of the University’s long-standing use and sales of goods and services under the DUKE trademark.

The Big Gun Response- John Wayne Enterprises

Having had enough of Duke U.’s trademark confusion accusations, JWE has filed a federal lawsuit in U.S. District Court, seeking an order that JWE’s use of its Duke mark will not and does not cause confusion nor dilute Duke U.’s trademarks.   As reported by the Associated Press, there are over 250 existing federal trademark registrations that contain the name “Duke,” which may prove to be problematic to Duke University’s theory of its case.

Trademark Attorney Notes:  This case is a good example of when brand owners with well-known trademarks aggressively file trademark oppositions against third-party trademark applications that contain part or all of the Opposer’s trademark.  This strategy often results in a trademark applicant withdrawing its application and in certain instances, not proceeding to use its trademark in commerce.  There are a percentage of cases, however, as seems to be the case here, where the Applicant decides to make a stand.  The result?   The Opposer is forced to prove its case, something it does not have to do when successfully negotiating a trademark opposition settlement.  Therefore, trademark owners who oppose trademark applications should always make sure that they have a strong case, rather than gambling on the chance that the trademark owner will simply surrender without a fight.