Duke, Hershey, and Winston: Who gets to trademark a famous name?

by Thompson Coburn LLP
Contact

Duke bourbon trademark disputeCommon sense tells you that you can always use your own name. But under trademark law, that’s not always true. Three recent cases illustrate this conundrum, which plays a major role in many Internet marketing and domain name disputes.

Let’s start with Maryland State Senator Steve Hershey. In three of his political campaigns, he seemed to gravitate toward campaign signs that used a brown background, a white border, and his last name “HERSHEY” in bold white letters. In short, his campaign logo looked just like the famous HERSHEY’S bar wrapper.

Politicians certainly have the right to use their own name in their campaigns. But the way Senator Hershey used his was hardly benign. It necessarily called to mind the famous candy bar — the top-ranked brand of chocolate candy with annual sales of more than $1 billion.

Senator Hershey’s defenses were readily rejected when Hershey’s sued to enjoin his advertisements. He claimed to avoid infringement by using a dual-tone brown Maryland flag as the background, and he pointed to his lack of a possessive at the end of his name. But the court found the overall appearance “substantially similar.” He claimed no one would confuse candy and politicians, but the court noted that viewers might believe the candy maker supported him. He claimed he had a First Amendment right, but the court found no First Amendment right to infringe.

The court granted Hershey’s requested injunction on July 17, requiring the senator to change his signs and Internet site immediately, and to communicate with voters without using Hershey’s candy trade dress.

A recently filed case between John Wayne Enterprises, which licenses the late actor’s name and image, and Duke University presents a more nuanced trademark name dispute.

The John Wayne Enterprises complaint waxes lyrical about the actor. It mentions Wayne’s movies, his Academy Award nominations, his Congressional Gold Medal, and his Presidential Medal of Freedom. It also admits that “Duke” was at most his nickname, which originated with the name of a dog that the young Marion Robert Morrison (later John Wayne) owned as a boy in Glendale, Calif.

It’s at least five steps from dog to plaintiff (the dog, Marion, “John Wayne,” Wayne as “Duke,” Wayne’s estate, and the company that now exploits his celebrity rights), but that is not uncommon among modern trademarks. The nickname “Duke” clearly has value to John Wayne’s heirs.

But the name “Duke” also has trademark value to Duke University, and various conflicts between these two marks have been quietly fought for almost a decade. The John Wayne organization even at one point opposed the university’s application for DUKE MEDICAL, on theory that it would create confusion with the John Wayne Cancer Institute. The university now cites that filing in claiming that the Wayne group conceded a likelihood of confusion, and that the university, with priority going back to its first trademark use in 1924, should prevail in a new case based on John Wayne Enterprises using "Duke" to sell a brand of bourbon.

There is one certainty in every name-trademark case: It will not be decided — as a layperson might expect — on the simple basis that everyone has a right to use his or her own name. As these cases show, multiple people or entities often have the same name, and one party or the other is going to have to be restricted in the commercial exploitation of his or her own name. The decisions often focus on priority, likelihood of confusion (including confusion as to possible affiliation or endorsement, as in the Hershey case), and dilution of the value of famous marks.

Sometimes the cases are decided fairly easily when one party’s name adoption seems suspicious. That occurred in an early Internet domain name dispute, when persons opposed to the animal-rights organization PETA (People for Ethical Treatment of Animals) jumped ahead of that organization and registered the peta.org domain name. When they posted their own organization website revealing their name (People for Eating Tasty Animals), the claim-squatting nature of their registration became apparent.

More often, legitimate name conflicts arise among persons with the same name. In a case decided on July 9, for example, the Trademark Trial and Appeal Board refused to permit registration of the mark BRUCE WINSTON by the son of the famous jeweler Harry Winston, noting that members of the public would inevitably connect the two businesses. The HARRY WINSTON mark, moreover, was particularly strong because of Harry Winston’s reputation during his lifetime as the “King of Diamonds,” and the fame he achieved by having celebrities wear his jewels at Academy Awards and other ceremonies.

In another noted case from 1989, Joseph Gallo, brother of Ernest and Julio, the famous winemakers, sought to use his own name in a company, Gallo Cattle Company, that made and sold cheese. A court eventually restrained his use of his own name, because consumers would erroneously conclude that he was affiliated with his brothers’ wine business.

That decision was based in part on the fact that wine and cheese are complementary products, and consumers might well conclude that the same company might make both. That’s what makes the pending case between Wayne Enterprises and Duke University especially intriguing. Most of the trademarks at issue are for alcoholic beverages, including “DUKE Kentucky Straight Bourbon Whiskey.” A court may have to consider: How closely related are alcohol and a university?

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Thompson Coburn LLP | Attorney Advertising

Written by:

Thompson Coburn LLP
Contact
more
less

Thompson Coburn LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.