Trademark Disputes: The Duke Bourbon Controversy

A boy, a dog, and a nickname: that’s how the trademark dispute between Duke University and the estate of iconic actor John Wayne began.

When Marion Morrison was a child in the early 1900s, his family owned an 80-pound Airedale Terrier named Big Duke. Young Marion disliked his own given name but reveled in the nickname his family bestowed upon him: “Little Duke.” The childhood epithet evolved into the eventual high school persona, “Duke Morrison.”

By the time Morrison’s acting career took flight, his name had changed once again, this time to “John Wayne.” The moniker stuck throughout the years, but as Wayne himself once said, “Anyone who calls me John doesn’t know me.”

The Duke Abides

Indeed, to those who knew him best, Marion Morrison was Duke. And Duke loved his libations. That’s one reason Ethan Wayne, the late actor’s son, sought to realize his father’s “unfulfilled dream of distilling fine spirits” by branding “The DUKE” Kentucky Straight Bourbon, a product featuring his dad’s image and signature on the label.

From the family’s point of view, the bourbon was a brilliant business idea and a sweet way to commemorate the late actor. However, a prestigious North Carolina university with its own trademark agenda had a different take on the situation. Here are both sides of the controversy and some key takeaways for small businesses and marketers interested in establishing their own trademarked brand.

Stepping on Duke University’s Toes

As it turns out, America holds another Duke close to its heart: Duke University. When college executives got wind of the Wayne family’s plan to trademark their bourbon as “The DUKE,” they promptly filed an objection, saying that they would not “permit the use” of logos similar to their own in the sale of “unapproved goods or services.”

John Wayne’s heirs likely anticipated Duke University’s disapproval, but budding entrepreneurs often fail to think ahead like this. Often, a small amount of research on trademarks held by other companies will prevent a world of hurt later on.

Key Takeaway: Businesses are protective of their trademarks. Entrepreneurs who do not conduct an initial trademark search could unwittingly “step on the toes” of an existing trademarked business and face legal problems.

Wayne Family Defense: “You Don’t Own the Word Duke”

The Wayne family acknowledged Duke University’s right to advertise products under its own logo. In the same breath, they argued that the school doesn’t “own the word Duke in all contexts and for all purposes.” The context in which the Wayne family wants to sell bourbon is quite different from the context in which Duke University markets its academics, according to the heirs.

Key Takeaway: Trademark law isn’t common knowledge and often result in trademark disputes. Without legal counsel, people sometimes interpret trademark issues based on their personal opinions. Even the word “context” can mean different things to different people.

College Counter-Defense: “Words Are What Men Live By”

In an ironic attempt to foil Wayne’s heirs, university representative Michael Schoenfeld reminded them in an email that John Wayne himself said “Words are what men live by [. . .] words they say and mean.” University officials are keen on their plan to keep The DUKE Kentucky Bourbon from marring their reputation as an upstanding school. And it’s not just the word “Duke” that offends them—it’s the bourbon’s cowboy logo, which purportedly bears a striking resemblance to the university’s own “Blue Devil” symbol.

Key Takeaway: Some executives become embroiled in legal trademark battles because they’re concerned about their company’s reputation.

Logo Defense: A Right and Responsibility

The Wayne/Duke duel has quickly become a spectacle, with different parties clinging to different sides. The result of this battle, however, will not boil down to which side is more passionate about their position. The result will depend on how the case is judged within the confines of U.S. Trademark Law.

Duke officials are well within their right to defend their school, according to Ohio State University trademarks professor Reid Wilson. In fact, companies have a responsibility to protect their trademarks. If they don’t, they risk losing the very logos that fuel their business. So even if the university ends up losing its side of the argument, the fact that it put up a fight sets an important precedent for the school’s reputation and integrity.

Wilson’s statement also applies to the Wayne family. Avoiding confrontation over the logo issue with Duke could be tantamount to surrender. The most prudent course of action is to let the legal experts hash out the details in court.

Key Takeaway: Every entrepreneur has a right and a responsibility to defend his or her trademark.

Duking it Out Since 2005

This isn’t the first time Duke University and the Wayne heirs have battled over a trademark. For almost a decade, the school has actively thwarted the family’s attempts to use “Duke” in other ways, including the failed establishment of a John Wayne-themed restaurant. In 2013, the family’s hope of using the word “Duke” for other projects was legally dismissed via an Inter Partes decision. 

In spite of past failures, it looks as if the heirs don’t plan to give up on their fight for Duke Bourbon, as evidenced by the federal lawsuit they filed this summer. Interestingly, more than 250 patented trademarks bearing the name “Duke” exist in the U.S. today, most of which are unrelated to both the actor and the school.

Are the Logos Really That Similar?

Two major camps exist in the Duke vs. Duke trademark case. Some people side with the university. They agree that the bourbon’s cowboy logo, paired the word “Duke” on the label, is dangerously similar to the school’s trademarked logo. They contend that John Wayne’s heirs should change their packaging or abandon their business plan altogether.

Others side with the late actor’s heirs. They find each logo to be unique and unrelated to the other, contending that John Wayne’s family should be allowed to sell Duke Bourbon with a cowboy logo and the actor’s signature on the bottle.

Both groups are fighting for the right to brand their products as they see fit, and both have a long battle ahead of them. The advice of a trademark attorney is invaluable in cases such as this, but such advice is best sought before legal trouble begins to brew—not afterward.

Xavier Morales, Esq.

About the Author:

Xavier Morales, Esq.

Mr. Morales founded this trademark law practice in January 2007 with the goal of providing intellectual property expertise to entrepreneurs and businesses around the country. Since then, he has filed more than 6,000 trademarks with the USPTO. You can learn more about Xavier here.

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