What do “Dude Diet,” “Little D” and “DBag” have in common? Duke thinks they could hurt its trademarks.
A recent study by two Duke Law professors, James Boyle and Jennifer Jenkins, argues that Duke is a “trademark bully,” as it has more trademark oppositions than any other university from 2015-2018. Trademark oppositions involve trademark holders trying to block others from registering trademarks that they believe infringe on their own—and Duke’s may go above and beyond usual practices.
“As we have tried to demonstrate, many of Duke’s trademark oppositions are expensive, legally ungrounded and, while interfering with the legitimate businesses of others, produce little for Duke beyond bad publicity,” Boyle and Jenkins wrote in the study.
Entitled “Mark of the Devil: The University as Brand Bully,” their study is the first empirical examination of Duke’s protection of its trademarks. Some of Duke’s registered trademarks include the words “DUKE”, “Duke University”, and “Blue Devils”.
From 2015 to 2018 alone, Duke filed more oppositions than the top ten academic institutions, top ten basketball programs by revenue and top ten athletic programs by revenue—39% more than the 28 other universities in the study combined.
Duke’s trademark oppositions generally object to usage of “Duke”, “Devil”, “Blue”, or the letter “D” alone, despite Duke not possessing an absolute property right to any of these terms.
“We’re very much in favor of Duke defending its marks when they’re genuinely threatened,” Boyle noted in an interview. Jenkins said that incidents like an apparel company attempting to register “Cameron Krzyz”, a play on the registered trademark “Cameron Crazies,” is a legitimate opposition on Duke’s part.
Jim Wilkerson, Duke’s director of trademark licensing, wrote in an email to The Chronicle that unlike other universities, “Duke” is a fairly common word with associations of names, royalty and others, “all of which can create public confusion as to whether such uses refer to Duke University or not. In addition, Duke’s fame means there are more counterfeiters than is the case with less renowned schools.”
The Office of Trademark Licensing “reviews over 4,000 requests for permissions to use Duke marks each year, ranging from requests for product approvals to projects, sponsorships, contracts, events, advertising,” he wrote.
“In 2020, the U.S. Patent and Trademark Office published thousands of applications but we only found 221 that we thought were potential problems, and we ended up filing only 12 opposition proceedings,” Wilkerson wrote. “Most were taken care of through amicable correspondence or agreements to avoid confusion.”
On the trademark search engine Trademarkia, Duke consistently ranked as one of the “Biggest Bullies” out of all trademark owners during the period of the study, coming in second after Monster Energy from 2014-17.
Duke has filed oppositions against businesses attempting to register marks such as “The Dude Diet”, “Little D”, “devils advocate”, “Beach’d”, “The Cameron”, “Goluke”, “Bluefood” and “#MakeDUfunagain.”
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The attempted trademark registrations may be from a small business which, although likely to win an opposition case against Duke, cannot afford the tens of thousands of dollars in legal expenses to defend their trademark. As a result, many of these companies will change their names to avoid the fight against Duke.
“In many of these cases, we’re sorry to say, Duke wins not because its arguments are correct, but because it has more money and more resources and more lawyers,” Boyle noted.
Wilkerson wrote in an email that the Patent and Trademark Office publishes a list of trademark applications before approving them and Duke then reviews those trademark applications via an automated process, “to determine whether third parties are trying to claim exclusive rights in marks that Duke already is using.”
“We have found from experience that doing this lets us take more amicable and less expensive steps to ward off problems, instead of letting problems occur and then spending money on after-the-fact lawsuits and creating (avoidable) angst,” wrote Wilkerson.
Of the 136 trademark oppositions detailed in the study, 80% reached results that could be described as favorable for Duke, with 67 marks being abandoned. As noted in the paper, scholar estimates of the legal costs associated with pursuing a trademark opposition through every stage of the legal process range from $90,000 to $500,000. However, since trademark oppositions are often settled quickly, the professors estimate that the actual cost of each of Duke’s trademark oppositions is likely far lower.
However, the process does have costs.
“Over the period of our study, which is four years, Duke could have saved hundreds of thousands of dollars and avoided considerable reputational harm,” Boyle estimated.
The professors believe Duke should pledge to conduct a full and transparent review of their trademark opposition process and change these practices going forward. Boyle and Jenkins emphasized that they assume good faith on the part of Duke, and that their research aimed to discover why Duke is such an outlier.
“We wanted to point out how out of sync we are with other similarly situated universities and also how legally groundless a lot of the oppositions are so people will realize what they actually are doing,” Jenkins said.
“Duke should be public both about reexamining what it's doing and disavowing bullying,” Boyle said. “If anyone should be against bullying, it’s universities. This is against everything that a university should stand for. We feel particularly passionate about this because we actually, as we say in our paper, we love our university while the converse may no longer be true—they may no longer love us quite as much.”
Boyle noted that trademark law does not bestow the ownership of a word to a business, which is why there are products from different industries, like Dove Chocolate and Dove Soap, that can coexist without infringing each other's trademark.
“There are 193 federally registered marks with “Duke” in the trademark that are not owned by Duke University and that’s the way trademark works,” Jenkins noted. “Duke owns “Duke” for educational services, for our medical facilities, but not for any use that involves the word “Duke”, much less for anything like the “Dude Diet.”
To illustrate what they say could be the reputational harm of trademark oppositions, the law professors cited an example of Duke opposing the trademark “DBag” last year.
“There are lots of Duke-haters out there and we are sorry to see Duke giving them a club to beat us with. UNC fans everywhere are going to say ‘Duke is such a d-bag that it thinks it owns the word ‘DBag’,” Boyle joked.