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Disappointing: Duke’s licensing office doubles down on trademark bullying

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I am the co-author of “Mark of the Devil: The University as Brand Bully,” covered by The Chronicle in a recent article. Sadly, our study shows that our beloved university, Duke, has the dubious distinction of being a trademark bully. Why? Because it routinely threatens individuals and small businesses with baseless legal claims, opposing their attempts to register brand names they have every right to use, such as “The Dude Diet” (for a diet-related website), “Bluefood” (for food products), “Get Your Blue On!” (for prostate cancer awareness fundraising), “D’Grill” (for barbecue smokers and grills), and “Pretty Devil” (for electronic slot machines). There are hundreds more examples. As we explain in our article, Duke’s aggressive tactics go far beyond what trademark law actually allows, with costs not only to competition and free speech, but also to Duke’s budget–diverting precious money to groundless legal actions–and to the university’s reputation. Duke regularly ranks near the top of charts identifying trademark bullies, not as compared to other universities, but as compared to all companies doing business in the US. This is not a good look.

To be clear, Duke should engage in the legitimate protection of its brands. Its oppositions to “Duke” for hospital blankets or catering services, or to “Cameron Krzyz” for imprinting on apparel, are legally sound. This is not the “bullying” that has garnered so much negative attention. Our concern is about Duke’s demands that have no basis in the law. These comprise the majority of Duke’s actions.

As a Duke fan and trademark professor, I had hoped that our colleagues who deal with such matters would be horrified and move immediately to rectify the situation. Instead, they chose to double down, and did so in a way that is both revealing and distressing. Here are the misleading justifications emailed to The Chronicle by Mr. Wilkerson, Duke’s Director of Trademark Licensing, followed by an explanation of why they are erroneous. If Duke’s actions have been in good faith, and driven by a misunderstanding of the applicable law, these clarifications will hopefully assist it in correcting course.

1) Duke says it files so many trademark actions because “‘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.’”

Reality: Under the law, this is exactly backwards. Ownership of a trademark is not ownership of a word. Delta Airlines coexists with Delta faucets; Dove soap coexists with Dove chocolate. It is precisely because Duke is a “common word” that other unrelated uses of “Duke” do not create “public confusion.” In fact, there are 193 federal registered trademarks containing “Duke” that have nothing to do with our university. By Duke’s logic, when Bass Ale trademarked “bass” for beer in 1912, it should have been able to contest all other uses of the word “bass.” So much for those businesses wishing to use “bass” for the fish, or the instrument, or the sound range, or the surname. This is not how the law works. Trademark law reserves the right to use common words to the public, not to a single entity.

Moreover, many of the applications targeted by Duke do not contain the word “Duke” at all. Duke opposes trademarks with only a few letters in common with “Duke” (such as “The Dude Diet,” “Kuke,” “Goluke,” and “Le Duc”), and routinely targets brands because they happen to contain the letter “d,” the word “devil,” or the word “blue.” For example, Duke filed formal opposition proceedings against “Beach’d” bags, “Devils Nightmare” beer, “Stay Blue” denim clothing, and “True Blue” auto parts stores. Obviously, there is no plausible confusion here: the public does not assume that every use of “d” or “blue” somehow refers to our university.

2) Duke says: “Duke’s fame means there are more counterfeiters than is the case with less renowned schools.”

Reality: Our research shows that during 2015-2018, Duke filed 39% more trademark oppositions than the top ten academic schools + the top ten athletic programs in revenue + the top ten basketball programs, combined. Duke’s renown hardly makes it more susceptible to infringement than Harvard, Yale, Stanford, MIT, Princeton, Texas, Alabama, Michigan, LSU, Kentucky, Ohio State, Auburn and all of the other top schools put together.

3) Duke says: “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… Most were taken care of through amicable correspondence or agreements to avoid confusion.”

Reality: Wow. In 2020, a relatively modest year for Duke’s trademark filings, Duke “only” identified 221 “potential problems” that were “taken care of”? Incredibly, this statistic shows that Duke’s aggressive practices extend well beyond what we documented. In our article, we only covered the tip of the bullying iceberg—the filing of expensive opposition proceedings, where we could review the publicly available record. There, the high quantity and low quality of Duke’s claims were already disturbing. But now Duke helpfully points out that it actually challenges many more applications.

So, let’s take a broader look. In addition to opposition proceedings, the Trademark Office’s database shows all of Duke’s “extensions of time” to file such oppositions, during which it can send what it calls an “amicable correspondence.” If you include all of Duke’s trademark filings from 2015-2021, it made over 1,000 of them. This is not only far more than other universities, but more than the world’s largest megabrands over the same period (by comparison, Apple filed 745, Facebook 226, Amazon 210, and Wal-Mart 120). Obviously, Duke is not of such renown that it has more potential brand-related “problems” than those companies. Rather, the reason Duke’s numbers are so abnormally high is because the vast majority of its filings have no legal merit. To take just two examples, here are applications that Duke targeted in 2020 with “extensions of time” to oppose:

  • Another university’s attempt to register “Pandemic Response Research Network”—because, for real, Duke is currently trying to claim exclusive ownership of “Pandemic Response Network.” Not surprisingly, the US Trademark Office issued a preliminary rejection, citing several flaws with Duke’s claim.
  • An individual’s attempt to register “When the devil wears blue black men die,” a statement that could be interpreted as a Black Lives Matter protest, apparently because it contains the words “devil” and “blue.”

That Duke would flag these as “problems” speaks for itself. And, of course, what Duke calls “amicable correspondences” were actually letters threatening legal action unless the recipient agreed to Duke’s demands. I doubt that anyone receiving these considered them especially “amicable.”

4) Duke says: “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.”

Reality: This statement would only make sense if the attempts by others to use “devil” or “blue” or the letter “d” are in fact “problems” for Duke. Under trademark law, the majority of the applications challenged by Duke do not interfere with its rights. This is like the schoolyard bully saying he needs to take your lunch money now, so that he does not have to fight you for it at recess later. He was never entitled to it in the first place. To the extent that Duke is suggesting it employs current threats to “ward off” future problems that do not yet exist, this is inherently speculative and no more defensible. “True Blue” for auto parts stores is not going to morph into something that competes with Duke’s “Blue Devils” marks. Duke opposed it anyway.

Many trademark lawyers and Duke alumni have expressed concern about Duke’s strangely aggressive tactics. Ironically, Duke’s attempts to “protect” its brand are actually harming it. Obviously, a university should not be in the business of bullying. I love this university. We can do better.

There is so little that any of us can control. Yet here is an example of something that Duke can readily do to save both financial and reputational costs. Just stop the bullying. It is a waste of resources, hurts other people, and is an embarrassment to the high ethical and academic standards of our institution. To our licensing office, we would commend the words of another Duke (Ellington)—“A problem is a chance to do your best.” And no, we don’t own his name either.

Jennifer Jenkins is a Clinical Professor of Law at Duke Law School.

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