November 19, 2018
Originally posted 2017-02-27 12:04:40
By Chloe Coska | amdlawgroup.com
In the litigation opposing John’s Wayne family against Duke university, the mark at issue is the legendary nickname “DUKE.”
As a fan of the great John Wayne you should be aware that he was referred as “Duke,” “Duke Morrison,” “Duke Wayne,” “Duke and The Duke” — a nickname that derived from his boyhood dog named Duke. John Wayne Enterprises, a Newport Beach Corporation filed a trademark application back in 2013 for the marks “Duke” and “Duke John Wayne” for alcoholic beverages excluding beers.
The University objected to this application, arguing that allowing the company to secure trademarks for the name “Duke” could cause confusion which can be deceptive to the public and would diminish their own trademark. John’s Wayne family argued back that this argument is preposterous as it is unlikely that consumers would be confused. They also argued that the products they are selling are solely related to John Wayne and his fans. As John’s Wayne heir said, “If it was not John Wayne, if it was ambiguous, our business wouldn’t survive.”
The U.S. District Court in Santa Ana, California, dismissed John’s Wayne family attempt to trademark the nickname, shared by the North Carolina University. Judge David Carter, dismissed the case for lack of jurisdiction and improper venue. He ruled that the John Wayne Enterprises, “may have a compelling argument against the scope of Duke’s trademarks”; however, he did not rule on the case’s merits.
For Duke University, it was a victory. The University spokesman said in a statement, “We are pleased that the court has dismissed the lawsuit, and we look forward to resolving this issue through the normal trademark process.”