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Can Two Different Entities Trademark the Same Name?

  • By: Robert Klein

John Wayne was one of the most iconic actors in American cinema history, famous for his walk, talk and good looks. He was also famous for his moniker “The Duke”, a childhood nickname that followed him even after he became a celebrity.

Currently, John Wayne’s family is looking to sell a line of Kentucky bourbon under the name Duke. Duke University is opposing the family’s attempt to trademark the name, arguing there could be a “false suggestion of a connection” between the liquor and the school.

Wayne’s estate claims that Duke University “does not own the word ‘Duke’ in all contexts for all purposes,” so they have no right to block its product. In fact, after several disputes with the school, the family wants the trademark office to go one step further and declare that both businesses can use the term without either of their brands being damaged.

A spokesperson for the university claimed that the institution “does not object to the use of ‘Duke’ on alcoholic beverages, as long as it is clearly linked to John Wayne’s likeness.” But the family wants the right to use the word with or without the star’s image, so Duke has pledged to do all it can to protect the integrity of its trademarks.

Trademark infringement lawsuits are about protecting a company’s brand and reputation rather than an actual product. If one company can prove its product is distinctive enough, the patent office may rule that no trademark infringement occurred, even if the same name is used.

Some elements that may decide the Duke’s fate are:

Strength of the senior user’s mark

Duke University undoubtedly has a strong connection to the name Duke, but so does John Wayne’s family. Family and friends began calling the iconic actor Duke after his childhood dog, and Duke University was founded in 1838. With two strong claims to the name, the patent office could have trouble distinguishing which user has the clearest right to the name.

Similarity of the marks

This may be the strongest defense for John Wayne’s family. According to the lawsuit, their bourbon depicts the word Duke “with a spur on it… a full silhouette of John Wayne, and John Wayne’s signature.” These elements should be more than enough to distinguish the product from Duke University, which uses a signature Carolina Blue and their mascot, a Blue Devil, for university merchandise.

Similarity of the products or services

Duke University has never marketed or sold alcohol in the past, so Wayne’s family argues that customers are not likely to be confused between the two brands.

If the patent office sides with the Duke’s family, that may not be the end of the dispute. Duke University could still file trademark lawsuits if the family tries to market merchandise bearing similar colors or fonts to the school’s trademarked logo, alleging customer confusion and unfair competition.

Trademark Infringement Attorneys in Los Angeles

If your mark is in danger, you will need an experienced attorney who knows the finer points of trademark infringement. Call Klein Trial Lawyers today to discuss your case. Our wealth of knowledge could make a crucial difference in your trademark case.

[Did You Know: There are currently more than 250 trademarks for the name Duke, from jazz legend Duke Ellington to a brand of mayonnaise.]

Klein Trial Lawyers—Los Angeles business litigation lawyers

Robert Klein

About the Author Attorney Robert Klein is a former CPA and known for
finding creative solutions to complex business lawsuits.