July 08, 2014 12:11pm PT by Eriq Gardner
John Wayne's Heirs Sue Duke University Over Trademark Rights to Alcohol (Exclusive)
John Wayne was known in his legendary Hollywood acting career as "The Duke," but his heirs are annoyed that a famous university located in North Carolina is getting in the way of "Duke" alcohol — specifically, bourbon.
Duke University has been slapped with a lawsuit by John Wayne Enterprises that ridicules the "ludicrous" idea that consumers will be confused.
The new complaint tells the story of John Wayne, who was born Marion Robert Morrison in 1907, and how he came to have the "Duke" moniker: That was the name of his dog. Firefighters in Wayne's Iowa hometown used it to nickname the young boy, and it stuck.
Wayne later went to the University of Southern California on a football scholarship, but his time on the gridiron was cut short by a body-surfing accident, at which point he tried out the movie business to pay his tuition. "The movie business — and the country — would never be the same," says the new lawsuit.
Enter the Blue Devils.
Duke University has been fighting with the late actor's heirs over "Duke" trademarks (restaurant services, gaming machines, celebrity licensing services, etc.) for nearly a decade, and last year, the school stepped forward after John Wayne's family attempted to register "Duke" for all alcoholic beverages except beer.
The school told the Trademark Office, "Consistent with its policies and in order to prevent tarnishment of its brand, [Duke University] does not permit use of confusingly similar marks associated with unapproved goods or services, of uncertain quality and/or unregulated by [Duke University]." Duke University, established in 1838, added that what the actor's heirs wanted to grab threatened its own hold on a variety of food products and beverages.
John Wayne Enterprises is now going to federal court over the objection, asserting jurisdiction in the Central District of California because the school actively recruits students there, raises money there, maintains alumni associations there and sells university-related products there.
One thing that the private research university doesn't do? "Duke University is not and never has been in the business of producing, marketing, distributing, or selling alcohol," states the complaint. "On information and belief, the actual and potential customer base of Duke University is vastly different from the customer base of JWE."
The school is charged with going too far. "Duke University does not own the word 'Duke' in all contexts for all purposes," continues the complaint. "Duke is a common word that has been in use for centuries in a wide array of commercial and other applications wholly independent of Duke University. Yet by the actions alleged herein, Duke University seems to think it owns the word 'Duke' for all purposes and applications."
The plaintiff gives an example of what it wants to bring to market in trademarked form: "Apparently, Duke University believes that products bearing John Wayne's world-renowned image and signature, like the bottle of bourbon depicted in Exhibit A attached hereto, will somehow be confused as being associated with Duke University. The bottle of bourbon in Exhibit A is imprinted with 'Monument Valley Distillers.' John Wayne's image and signature are prominently featured on the label, along with the words 'Kentucky Straight Bourbon Whiskey Small Batch' and the image of a shot gun shell casing. Suffice to say, as is evident from Exhibit A, JWE regards Duke University's apparent belief that the JWE Marks cause confusion and dilution as ludicrous."
The actor's family now is seeking a declaratory judgment that there is no likelihood of confusion and that its attempts to register and use "Duke" alcohol will not dilute Duke University's own rights.