Trademark Law And Duke vs. The Duke

Trademark law can be a tricky business.

Laws pertaining to these marks need to be broad enough to cover situations in which a company or individual is attempting to ‘piggyback’ off the success of a brand via trademark infringement, while remaining unobtrusive enough to prevent brands from exploiting the law to discourage competition.

A case I read recently between the heirs of John “The Duke” Wayne and Duke University brings some of the subtleties of trademark law to light. Before we discuss this case, however, it is important that I highlight the basics of the law involved.

What is a trademark?

Unlike copyright law, which applies automatically to unique works, trademarks often need to be registered with the Patent and Trademark Office. A trademark is a word, symbol, phrase or other unique aspect of a product or brand that identifies a particular product, manufacturer or seller.

Trademarks generally do not stop an individual or company from selling a product, but instead govern the packaging of a product or service. Anyone can sell chocolate, for example, but only Hershey’s can sell chocolate with its name on it. In fact, trademarks only cover identifying features – any sort of functional or competitive advantage is not within the domain of trademark law. Hershey’s can maintain a trademark on the name that it prints on its chocolate bars, but could not maintain a trademark on a better chocolate recipe or the shape of its chocolate bars that allows for pieces to be easily broken off.

Types of trademark

Taking a step further, marks are sorted into one of four categories, only two of which receive full protection under the law. The first, arbitrary or fanciful marks, receive full protection because they have no independent bearing on the product. An example might be Dove Chocolate. Doves clearly are not related to chocolate in any meaningful way.

The second, suggestive marks, evoke a characteristic of the product or service. Greyhound, the bus line company, is one good example of a suggestive mark. Greyhounds are the dog traditionally used in racing, therefore suggesting a speedy travel time. These, too, receive full trademark protection.

Descriptive trademarks are those that directly describe a part of the good or service conveyed. As a result, they cannot be considered eligible for trademark protections until they create a “secondary meaning” associated directly with the brand. So Holiday Inn would be unable to trademark that name until the average consumer in its market hears the name and thinks of the company, rather than a generic Holiday Inn.

Finally, generic marks that are simply the name of a product, service or category cannot receive trademark protections.

Trademark infringement

In order to determine that infringement has taken place against a mark protected under trademark law, courts generally look at the following seven factors.

1. Strength of the mark.
2. Proximity of the goods or services.
3. Similarity of the marks.
4. Evidence of actual confusion occurring.
5. Similarity of marketing channels used.
6. Degree of caution that the typical purchaser exercises.
7. Defendant’s intent.

It is worth noting that trademark dilution is an issue separate from infringement, under which likelihood of confusion need not occur. Instead, dilution occurs when a brand risks “blurring” or “tarnishment” by association with unrelated goods or services.

Duke vs. The Duke

In this particular case, John Wayne Enterprises is seeking a declaratory judgment stating that their use of “The Duke” on a line of bourbon bottles does not infringe upon the Duke University trademark. Specifically, the actor’s heirs are suggesting that the university’s claims of confusion and dilution are “ludicrous.”

Under trademark infringement law, my personal opinion is that there is no real likelihood of confusion here. The marketing channels used to promote an educational institution and a bourbon are dissimilar, and it is exceedingly unlikely that Duke will be able to provide evidence of actual confusion occurring. However, the allegations of dilution may give courts pause. It is difficult to say how this case will turn out.

As a sports and entertainment attorney, I’ve covered the area of trademark laws extensively, it is always a tricky business. If you are concerned about trademarks for your business or would like to know about this area of the law, check out my previous posts on trademark law:

• What are the repercussions of copyright and trademark violations?
• Are you breaking copyright and trademark laws at your restaurant? Know the facts
• Pharrell Williams, will.i.am Settle Trademark Lawsuit
• Can Athletes Trademark Their Name?
• Can You Trademark Your Name?
• Trademark Lawsuits, Rather Than Public Opinion, May Affect Washington Redskins’ Name Change
• Should the Trademark Office “Fear the Brow?” Rising NBA Star Seeks to Protect Famous Look
• Jeremy Lin Facing Trademark Trouble in China