John Wayne was born Marion Robert Morrison in 1907, but to millions of film fans he was always “The Duke”. However, lawyers for Duke University were obviously not among the late actor’s confidantes.
The North Carolina institution is trying to block Wayne’s estate from selling “Duke” bourbon. Early last year, John Wayne Enterprises filed applications to use the trademarks “Duke” and “Duke John Wayne” on alcoholic beverages. According to Wayne’s son, Ethan Wayne, the actor had an “unfulfilled dream of distilling fine spirits”.
Mr Wayne is a partner in Monument Valley Distillers, the maker of Duke spirits. Then, Duke University filed an objection with the US Patent and Trademark Office. Since 2005, the university has also tried to block the estate from using “Duke” in connection with a John Wayne-themed restaurant and celebrity licensing services.
Now, the university objects to Duke-branded bourbon because they say the estate’s mark, which features a silhouette of Wayne in full cowboy regalia with “Duke” superimposed on the image in block letters, is “substantially similar” to the university’s own logos. The school also claims that the drink the estate wants to sell is “closely related to goods and services” that bear the university’s mark, according to a complaint filed in the US District Court for the Central District of California.
Wayne’s estate concedes that the university uses the “Duke” mark in “connection with the sale of its university-related products and services”. But it argues: “Duke University does not own the word ‘Duke’ in all contexts for all purposes.”
“While we admire and respect John Wayne’s contributions to American culture, we are also committed to protecting the integrity of Duke University’s trademarks,” said the university’s spokesman, Michael Schoenfeld. “As Mr Wayne himself said: ‘Words are what men live by; words they say and mean’.”
Reid Wilson, an adjunct professor of trademark law at Ohio State University, said Duke University’s objections were “within the realm of the enforcement expectations of a famous mark”.
In the 1938 film Stagecoach, Wayne’s character asserts: “A man’s gotta do what a man’s gotta do.” His heirs are taking those words to heart, and intend to proceed with their business plans despite the “cloud of an eventual infringement claim”.
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