Duke and “The Duke” Duke it Out

There have been stories all over the national news media this week about a trademark spat between Duke University and the heirs of movie legend John Wayne.  Wayne’s heirs are trying to register the trademarks DUKE and DUKE JOHN WAYNE for use on whiskey.  Duke University opposed the registration applications before the U.S. Trademark Office last year, and now the heirs, apparently fed up, have filed a federal lawsuit back at Duke University.

Likelihood of Confusion?

Usually, a trademark owner only can stop another business from using a similar word or phrase if that use would cause a “likelihood of confusion” among consumers.  This is why there can be different companies using identical trademarks for completely different products, like DOVE soap and DOVE chocolate, or GERBER baby food and GERBER pocketknives.  It’s just not very likely that consumers will confuse chocolate with soap, or baby food with knives.  So a trademark owner generally does not own exclusive rights to a word or phrase.  The trademark owner only owns exclusive rights to that word or phrase when it is used on identical or similar goods.

So, how can Duke University argue that the heirs of John Wayne should not be able to sell DUKE whiskey?  The university is not in the alcohol business.  As the heirs write in their lawsuit, “Duke University is a private research university. . . .  Duke University is not and never has been in the business of producing, marketing, distributing or selling alcohol.”  No one is likely to get confused and think that Duke University has launched a new brand of whiskey.  What’s the university’s problem?

One thing Duke University argues is that because it has a registered trademark for DUKE for restaurant services, the John Wayne heirs should not be permitted to register DUKE for a beverage.  This is bogus.  The top federal trademark court has held that “the fact that restaurants serve food and beverages is not enough to render food and beverages related to restaurant services for purposes of determining likelihood of confusion.”

Duke Claims its Trademark is “Famous”

Actually, Duke University’s main argument is that it doesn’t have to show a “likelihood of confusion” because (unlike in run-of-the-mill trademark cases) its trademark DUKE is “famous.”  The law provides special protections to “famous” trademarks, on the theory that if a trademark is extremely famous, then any use of that trademark by someone else is likely to cause confusion.  So the owner of a famous trademark does not have to show that there is a “likelihood of confusion” in order to stop someone else from using the famous trademark.  This is called a claim for “dilution.”

One example of an indisputably “famous” mark is COCA-COLA.  If, for example, an auto parts company were to launch a line of spark plugs branded COCA-COLA, then the Coca-Cola Company probably would be able to stop the company, even though COCA-COLA does not make spark plugs or any other kind of auto parts.  The owner of a “famous” trademark has truly awesome power.

So, in this case Duke actually is trying to argue that it is the sole owner of the word DUKE, and that no one else can use it as a trademark for any purpose whatsoever.

How Famous is Duke?

But how well-known does a trademark have to be in order to be considered “famous?” No higher federal court has established any rule for this, but influential scholar Thomas McCarthy has written (and some lower federal courts have agreed) that a trademark should not be considered “famous” unless about 75% of the general consuming public of the United States recognizes it.  This is a very high bar.  As McCarthy puts it, treatment as “famous” should be reserved only for a small class of “truly elite marks.”

Would 75% of all Americans recognize DUKE as the trademark for Duke University?  Perhaps citizens of North Carolina and Virginia would, but what about citizens of our Western states, where Duke graduates and Duke basketball fans probably are pretty thin on the ground?

In a 2008 case, a federal court found that the “longhorn silhouette logo” of the University of Texas was not “famous,” even though the University provided evidence that its football games were prominently featured on national television, that its BCS Rose Bowl national championship game against USC was watched by 35 million people, that its sales of licensed products totaled nearly $400 million annually, that its football helmet had been displayed on two separate Wheaties’ boxes, etc., etc.

In a nation where 50% of people surveyed cannot find New York State on a map, can we realistically expect 75% of Americans to associate the term DUKE with Duke University?  I doubt it.  Sure, Duke University has had some unusual national publicity lately, but it probably is not, as some courts have required, a “household name.”  It’s my bet that the John Wayne heirs will win this shootout.