It’s the trademark battle where both sides put up their Dukes. The family of John Wayne has been sent to the mat in their attempt to challenge the North Carolina university’s trademark use. According to this case, John Wayne Enterprises LLC v. Duke University, described in court papers by the actor’s heirs as a “family business,” seems to have shot first and asked questions later. Or, at least, shot first. The Duke always seemed to me like more of the pull-my-gun-in-a-heartbeat sort of guy, but only one to pull the trigger when left with no choice. The heirs apparently were not so patient.
The court in California has ruled that this is not how the West was won. In truth, the decision really decides nothing. The dispute between John Wayne Enterprises and Duke University will go on, likely for a significant period of time. The court only said that the whole idea of a federal lawsuit between these two entities is premature.
What happened? Several years ago, John Wayne’s heirs filed some applications to register trademarks in the U.S. Patent and Trademark Office. They owned other marks, already registered, for “Duke.”
The current applications were published for opposition (opportunity for opposition to a trademark by any member of the public is a regular and mandatory part of the trademark registration process). Duke University filed Notice of Oppositions, apparently as well as a Cancellation Petition for a “Duke” trademark which had already registered in the past. At this point, the heirs showed their true grit and in their best John Wayne style said enough is enough; you could just hear it: “now look, Pilgrim…If you’re gonna go around threatening me I’m just going to sue you.” Or something like that.
By going to the federal court, the John Wayne heirs were saying that because the university is attacking our trademark applications and registrations, we feel like they may sue us, too. We want the federal court to declare here and now that nothing we are doing with these marks is an infringement upon Duke University’s marks. That is when the court told the university to put it back in the holster. The Trademark Office is designed to resolve these disputes, and unless there is more of a threat than just your subjective belief that they could sue you someday, let the Trademark Office sort this out.
The other reason the case was dismissed was because John Wayne tried to exploit a tactic which has worked for Duke University for decades: the home court advantage. It’s no coincidence that John Wayne filed this lawsuit in a Santa Ana, California federal court (Santa Ana: home to John Wayne international Airport), rather than taking the fight to Duke and North Carolina. The judge blew the whistle on that play.
This gives the Trademark Trial and Appeal Board, which is the administrative court of the U.S. Patent and Trademark Office, another chance for a high-profile decision. (Remember the “Redskins” case?) Once all the procedure is whittled away, the question is certainly an interesting one. Some of us probably think that Duke is an evocative name that readily conjures up images of John Wayne. When my college sophomore roommate informed me he was transferring to Duke, I remember asking why he wanted to go to John Wayne University (I didn’t say it was clever, I just said I said it). For certain other generations, their primary thoughts may lean toward the university, which over the last couple of decades has developed an elite reputation both athletically and academically.
John and Pilar Wayne, 1971. (Photo credit: Wikipedia)
One thing which makes this an interesting and difficult case is that “duke” is a fairly common word. The legal issue is this: is the public already accustomed to differentiating between many different uses of “duke,” especially to a degree that would negate any likelihood of confusion between the products and services endorsed by the university and products coming from John Wayne Enterprises? There are literally hundreds of trademark registrations and applications which include the word “duke.” Everything from software from Estonia, to cocktails and clothing (under the mark “Daisy Dukes”), to hotels, wines, chemicals, and real estate. The official football of the National Football League is called “the Duke,” after the late Wellington Mara. According to Wilson Sporting Goods, Mr. Mara, owner of the New York Giants football club, was named after the Duke of Wellington. Hence his nickname. NFL balls have been called “the Duke” since the 1940s.
Duke is even the name of a main street running right through the town where the Trademark Trial and Appeal Board sits (Alexandria, Virginia). Whether Duke is a common name is not the beginning and ending of the story. The Trademark Trial and Appeal Board will still have to focus on the particular products and services of both companies and how they market and label them, and ultimately decide if and how confusion is likely.
Earlier this year, the Board made what may well have been its single most impactful decision when it found the word “Redskins” to be disparaging and incapable of trademark registration. Though binding only on the question of trademark registration (not actual use) the impact of this decision has been felt far and wide, causing many media outlets and organizations to question whether they will refer to the Washington, D.C. football team by its chosen nickname. First the Redskins, next the Cowboys. Who says that the world of trademarks is not the Wild West?
This post originally appeared on Forbes