By Scott Hervey
Clearly there is no love lost between John Wayne Enterprises, LLC (“JWE”), the entity owned by John Wayne’s heirs which controls the intellectual property related to John Wayne, and Duke University. Both have have been locked in battle over various trademarks incorporating the word DUKE. The most recent skirmish involves a trademark application filed by John Wayne Enterprises, LLC (“JWE”) for the following design mark for alcoholic beverages, excluding beer:
Duke University requested and was granted an extension of time to potentially opposition to the registration of this mark. Previously, Duke University opposed JWE’s’ application to register DUKE for restaurant services, claiming that the mark is likely to cause confusion with Duke University’s other DUKE trademarks and/or dilute Duke University’s famous trademarks. Specifically, Duke University alleged that: “[JWE] seeks to register a mark that is substantially similar to [the University’s] famous mark DUKE, and that moreover is likely to be abbreviated simply as DUKE and expressed orally simply as DUKE, for goods that are closely related to goods and services with which [the University’s] DUKE Marks are used…”
It appears that this time, JWE took John Wayne’s quote “You tangle with me, I’ll have your hide.” literally and didn’t wait and see whether the University actually filed an opposition. JEW filed a complaint for declaratory relief in the United States District Court for the Central District of California, requesting the court to declare that the above mark does not infringe or dilute any of the DUKE trademarks owned by Duke University. In its complaint it alleges that “Duke University believes that products bearing John Wayne’s world renowned image and signature…will somehow be confused with being associated with Duke University.” Further, JWE alleges that “in light of the multiple Oppositions and Cancellation proceedings Duke University has filed against JWE and the claims made therein, JEW believes Duke University contends that JEW’s [registration and use of its marks] or any other mark that includes the term DUKE are likely to cause confusion with [the marks owned by Duke University] and intends to sue JWE for trademark infringement, notwithstanding that JWE’s use is directly associated with and expressly linked to John Wayne.”
In determining whether JWE’s mark infringes any of the University’s marks, the court will follow the multifactor test established by AMF Inc. v. Sleekcraft Boats. In applying this test the court will engage in the following analysis:
1. Strength or Weakness of the Plaintiff’s Mark. The more the consuming public recognizes the plaintiff’s trademark as an indication of origin of the plaintiff’s goods, the more likely it is that consumers would be confused about the source of the defendant’s goods if the defendant uses a similar mark. The court will consider whether the University’s mark are strong marks. If so, this would weigh in favor of a finding of confusion. The court is likely to find that the University’s marks are strong.
2. Defendant’s Use of the Mark. If the defendant and plaintiff use their trademarks on the same, related, or complementary kinds of goods there may be a greater likelihood of confusion about the source of the goods than otherwise. The court will consider the types of goods and services covered by the University’s marks. The records of the trademark office do not reveal a DUKE mark owned by Duke University for any type of alcoholic beverages. While there are various marks covering beverage glasses and containers and food and beverage services, unless Duke University is able to establish common law rights covering alcoholic beverages, its likely the court would not find these services similar enough to support a finding of confusion.
3. Similarity of Plaintiff’s and Defendant’s Marks. If the overall impression created by the plaintiff’s trademark in the marketplace is similar to that created by the defendant’s trademark in appearance, sound or meaning, there is a greater chance of likelihood of confusion. Here, the court would consider whether, taken in their entirety, the marks are similar in appearance, sound and meaning. JWE’s mark features a distinct and unmistakable design element of a cowboy (likely stylized after one of the numerous cowboy characters played by John Wayne). Its likely that the court will determine that, not only does this cause the marks to be different in appearance, but it also causes JWE’s mark to give off a commercial impression that is different than any of the Duke University marks; that the bourbon is associated with John Wayne. The court will likely find that these facts support a finding of no likelihood of confusion.
4. Actual Confusion. Evidence of actual confusion strongly suggests a likelihood of confusion. The court will consider any evidence of actual confusion. If none, this will be a neutral factor.
5. Defendant’s Intent. Knowing use by defendant of the plaintiff’s trademark to identify similar goods may strongly show an intent to derive benefit from the reputation of the plaintiff’s mark, suggesting an intent to cause a likelihood of confusion. The court will consider whether JWE’s intent in using DUKE was to refer to John Wayne or to refer to the University. Its likely that JWE will present strong evidence that its use of DUKE was as a reference to John Wayne. After all, one of John Wayne’s better known quotes is “I never trust a man who doesn’t drink.”
6. Marketing/Advertising Channels. If the plaintiff’s and defendant’s goods or services are likely to be sold in the same or similar stores or outlets, or advertised in similar media, this may increase the likelihood of confusion. If Duke University does not use any of its DUKE marks in connection with alcoholic beverages, the court may find that there is not a significant overlap in the marketing channels.
7. Consumer’s Degree of Care. The more sophisticated the potential buyers of the goods or the more costly the goods, the more careful and discriminating the reasonably prudent purchaser exercising ordinary caution may be. Ordinarily, where a heightened degree of care is exercised by purchasers, this factor tends to favor a finding of no confusion. However, since buyers of alcoholic beverages are generally not considered sophisticated purchasers, the court would consider the degree of care exercised by an ordinary consumer.
8. Product Line Expansion. If there is a strong possibility of Duke University expanding into the alcoholic beverage market, there is a greater likelihood of confusion. If Duke University is not able to show that it has made any overtures to use or allow use of its mark in connection with alcoholic beverages, this factor will not support a finding of likelihood of confusion.
In a claim for trademark dilution, the owner of a famous mark can bring a claim due to either blurring or tarnishment. Blurring occurs when a defendant uses or modifies the plaintiff’s trademark to identify the defendant’s goods and services, raising the possibility that the plaintiff’s mark will lose its ability to serve as a unique identifier of the plaintiff’s product. In considering whether JEW’s mark causes dilution of Duke University’s mark by blurring, the court will consider the following:
(i) The degree of similarity between JWE’s mark and the Duke University’s mark. The court will likely find the marks not similar;
(ii) The degree of inherent distinctiveness in the University’s marks that have allegedly been infringed. The court will likely find the University’s marks to be distinctive;
(iii) The extent to which Duke University is engaged in substantially exclusive use of DUKE as a trademark. This will require some investigation by the court. USPTO records show only one DUKE mark registered by JWE – DUKE’S PLACE for restaurant services. This use is likely pursuant to a settlement agreement between JWE and the University. Additionally, records of the Trademark Trial and Appeals Board show that the University has opposed the registration of almost every third party trademark application which includes DUKE. These facts could support a finding of dilution by blurring;
(iv) The degree of recognition of the Duke University marks. The court will likely find them to be highly recognizable;
(v) Whether JWE intended to create an association with one or more of Duke’s mark. As mentioned above, its likely that JWE will present strong evidence that its use of DUKE was intended to create an association with John Wayne and not the University; and
(vi) Any actual association between JWE’s mark and Duke University’s marks.
Dilution by tarnishment occurs when the reputation of a famous mark is harmed through association with another similar mark or trade name. Here the court would consider whether there is any actual association between JWE’s mark and Duke University’s marks and if the University’s reputation is harmed by such association. Even if the court found an association between the two marks, such association does not likely harm the University’s reputation.
Predictions: A well known quote of John Wayne is “Out here, due process is a bullet.” While the resolution of the present dispute will not be as quick, based on the facts as they are presently known, it seems that JWE will prevail. It seems clear that JWE’s mark does not infringe any Duke University marks. And while the outcome JWE’s request for judicial determination that its mark does not dilute any of the University’s marks is not as easy to predict, its likely that a court will be persuaded by the lack of similarity between the marks and find that a substantial influence in a finding of no dilution.