When it comes to marketing, branding is important. A clever brand name can become ubiquitous and help a company soar to popularity. The drawback is that such brands are at risk of being genericized. When this happens, what was once a brand name is now a generic term used as a noun or verb to denote items in a product category–some notables include Kleenex, Chapstick, and even Dumpster. Equally damaging is the use of a similar brand name in an unapproved manner that tarnishes the original brand. To prevent a brand name from being either genericized or tarnished, entities often seek to enforce their trademarks. Trademark litigation can cost anywhere from $250,000 to $750,000 to prosecute to a final judgment.

For over ten years, Duke University has been embroiled in a series of disagreements with John Wayne’s heirs over “Duke” trademarks. John Wayne, born in 1907 and known primarily for his acting roles in western films, was nicknamed The Duke.  Thousands of miles from Hollywood on the nation’s east coast is the North Carolina basketball powerhouse Duke, which was founded in 1838 and is known for both its basketball and academic successes.

On July 3, John Wayne’s family filed a lawsuit in federal court, challenging Duke University’s objection to the family’s attempt to register the name Duke in various services and industries. Recently, the family sought to use the name Duke in connection with a line of alcoholic beverages except beer. The complaint alleges that the school has attempted to monopolize a commonly used word. Duke University has never sold or attempted to sell alcoholic products. Thus, the family concludes that the university “does not own the word ‘Duke’ in all contexts and for all purposes.”

The central focus of any trademark infringement claim is the likelihood of confusion. Generally speaking, it is harder to prove infringement when the competing marks are in non-competitive industries. The Wayne family’s primary exhibit is a bottle of bourbon, which will contain John Wayne’s image and signature on the label. Duke University argues that such use of the mark will cause confusion and dilution. The family seeks a declaratory judgment stating that there is no likelihood of confusion, and that the use of Duke as a bourbon brand will not dilute the university’s rights to the name.

The automaker Cadillac, as well as the New York Knicks basketball franchise, are also engaged in separate, similar controversies. A winemaker from the Cadillac region of France intends to market its wine in a manner similar to designations such as Champagne, which is a protected appellation of origin that designates Champagne made in the Champagne region of France. In an alternate dispute, the New York Knicks oppose Cinemax’s new series, “The Knick.” The show is set in the Knickerbocker hospital in New York around the early 1900s.  The New York Knicks franchise, which also derived its name from the word Knickerbocker, opposed Cinemax’s attempt to register the name “The Knick” because of the possibility that viewers would think the show was endorsed by the franchise.

As the weeks progress, it will be interesting to see if any court decides to limit the reach of trademarks when entities battle over commonly used terms in unrelated industries. Any decision will likely turn on evidence of actual consumer confusion, a task that might prove difficult because of the degree of care exercised by consumers when selecting a university or buying a car.

Samara Shepherd

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