Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA620497
`ESTTA Tracking number:
`08/08/2014
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91214459
`Plaintiff
`Duke University
`SUSAN FREYA OLIVE
`OLIVE & OLIVE PA
`PO BOX 2049
`DURHAM, NC 27702
`UNITED STATES
`emailboxTTAB@oliveandolive.com
`Other Motions/Papers
`Susan Freya Olive
`emailboxTTAB@oliveandolive.com
`/Susan Freya Olive/
`08/08/2014
`20140808 Resp-MotSusp-B.pdf(99592 bytes )
`Exhibits 1-6 (DUKU9270-b).pdf(5158874 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Before the Trademark Trial and Appeal Board
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`
`
`Duke University,
`Plaintiff-Opposer
`
`vs
`John Wayne Enterprises, LLC,
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`Defendant-Applicant
`
`Opposition No. 91214459
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`RESPONSE TO MOTION TO SUSPEND PROCEEDINGS
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`I. INTRODUCTION
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`Our Ref.: DUKU9270-b
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`John Wayne Enterprises, LLC (“Enterprises”)1 has moved to suspend proceedings herein.
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`The motion is its latest move in a set of longstanding disagreements between the parties. Those
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`disagreements stem from Enterprises’ attempts to establish over-arching rights in itself and to
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`interfere with the ability of Duke University (“Duke”) to protect Duke’s own marks and Duke’s own
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`interests. To date, Enterprises has lost every decision. The present motion, like Enterprises’ prior
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`cases, is not well-founded and should not be granted.
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`Moreover, as discussed hereafter, it is likely that Enterprises’ motion will in any event
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`become moot in approximately one month. Duke has moved to dismiss the California lawsuit. An
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`order deciding that motion is expected on or before September 15.2 If the Board delays evaluating
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`Enterprises’ motion until after September 15, which certainly would be a normal time frame for
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`reaching a decision in any event, the lawsuit may already have been dismissed and a decision may
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`well have become unnecessary.
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`1 Enterprises is a commercial entity established by the heirs of John Wayne after some interfamilial wrangling. It is
`attempting to earn money by licensing what it alleges are trademark rights associated with Mr. Wayne that will
`“associate the John Wayne brand with quality and timeless products and experiences.” See Ex. 1. Interestingly,
`although the marketing efforts supposedly are directed to products that will “embody the spirit of John Wayne and
`give back to the community,” the product that is the focus of Enterprises’ current efforts is liquor.
`2 See Decl. of John A. O’Malley filed herewith as Ex. 2 and incorporated herein by reference.
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`1
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`

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`II. FACTS
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`Duke and Enterprises (including Enterprises’ predecessor in interest) have been opposing
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`parties before the Trademark Trial and Appeal Board (“TTAB”) since at least 2005 in connection
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`with marks each of the parties has sought to register. Judgment has been entered in favor of Duke in
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`each of the prior proceedings. See Duke v John Wayne Enterprises, LLC, Opp. Nos. 91167168
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`(judgment refusing Enterprises’ application to register DUKE for restaurant services), 91174273
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`(judgment refusing Enterprises’ application to register DUKE for gaming machines and the like), and
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`Canc. 92053341 (judgment cancelling Enterprises’ registration of DUKE for celebrity licensing
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`services); and John Wayne Enterprises, LLC v Duke University, Opp. Nos. 91183030 (judgment
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`allowing Duke’s opposed application to register DUKE MEDICINE for medical services and
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`licensing services, among other things) and 91193267 (judgment allowing Duke’s opposed
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`application to register DUKE for clothing), collectively referred to hereafter as the “Judgments.”
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`Promptly after its latest losses, Enterprises filed an intent-to-use application seeking to
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`register a design mark in which the word DUKE is the most prominent text, for use in connection
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`with “alcoholic beverages except beer, all in connection with indicia denoting the late internationally
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`known movie star, John Wayne, who is also known as Duke.” The nature and meaning of the tag-
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`line following the identification of goods was not further defined.
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`Duke, knowing that Enterprises has in the past attempted to use its registration and alleged
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`rights to interfere with Duke’s own trademark applications, filed a notice of opposition to that
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`application in December 2013. Since that time, Enterprises has filed its answer to the Notice, the
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`parties have held their discovery conference, and discovery has commenced. As part of the
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`discovery process, Duke has notified Enterprises of its intent to rely on the prior decisions. (Ex. 3)
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`Almost eight months after Duke’s notice of opposition was filed, Enterprises filed a lawsuit
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`in the Central District of California, and a motion to suspend these TTAB proceedings in light of that
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`lawsuit. The lawsuit seeks a declaratory judgment that certain of Enterprises’ marks, as used, do not
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`2
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`

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`infringe the rights of Duke University and, as used, do not dilute Duke’s rights. The claims are
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`somewhat convoluted but clearly are based on what Enterprises alleges are the existing parameters of
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`its use; and seek a declaration as to Enterprises’ rights with respect to what Enterprises presently is
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`doing. 3
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`Duke has moved to dismiss the California lawsuit. See declaration of John A. O’Malley
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`(attached as Ex. 2). A ruling should be issued promptly—within a month. Id. Thus, it is very
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`possible that even before a ruling is entered by the Board on Enterprises’ motion to suspend, it will
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`already be moot. A short delay in issuing the Board’s ruling may, therefore, render it altogether
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`unnecessary to reach and decide this motion.4 Perhaps anticipating that result, Enterprises has
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`refused to delay discovery in this or another co-pending proceeding while awaiting the outcome of
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`this Board’s decision on the motion to suspend.5
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`Even if the California case were to proceed, however, it addresses fundamentally different
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`issues than this Opposition.6 As a result, the California case—even if ultimately decided in favor of
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`Enterprises—would not preclude the current proceeding nor assist in its resolution.
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`Accordingly, Duke opposes Enterprises’ motion to suspend proceedings [D5], which is not
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`well-founded and which, if granted, could create unreasonable delay in this proceeding and result in
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`harm to Duke.
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`The pertinent facts are set out in more detail below, and Duke’s argument follows in
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`Section III.
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`3 A copy of the complaint is attached to Enterprises’ motion.
`4 Counsel for Enterprises were requested to consent to a motion to extend the deadline to respond to the motion to
`suspend but did not respond to that request.
`5 See Ex. 6.
`6 For example the California lawsuit asks for a Declaratory Judgment that certain marks which Enterprises and its
`partners are apparently using on liquor bottles do not infringe Duke’s rights, while this Opposition is based on an
`intent-to-use application and all of the ways in which Enterprises would be entitled to use the DUKE mark if it
`proceeded to registration. The ways in which Enterprises would presumptively be entitled to use its mark, if
`registered, would of course not be limited to the ways in which it presently uses or contemplates use of the mark.
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`3
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`

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`A. The Application, the Parties, and This Proceeding
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`III. ARUGMENT
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`John Wayne never challenged Duke’s trademark rights during his lifetime. Subsequent to his
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`death, however, matters changed and unfortunately the present parties to this proceeding have a long
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`history of contested proceedings regarding attempts to register, and registrations of, “Duke.” In fact
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`in the first two months of 2013, Enterprises received adverse decisions in four cancellation and
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`opposition proceedings (resulting in denial of one registration it had sought and cancellation of the
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`only registration it owned, as well as judgments allowing Duke University to register marks that
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`Enterprises had challenged), as detailed in the Judgments listed supra at 2. This followed judgment
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`against Enterprises in another proceeding that it had initiated against Duke in 2011. Id. Enterprises
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`has not appealed any of those judgments, and they act as final bars to further action at least in those
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`cases.
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`Rather than take time to meditate on its failures to prevail in any opposition or cancellation
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`proceeding involving Duke or engage in constructive discussions, Enterprises waited less than a
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`week to file the an intent-to-use application seeking to register a design mark in which the word
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`DUKE is the most prominent text (Serial No. 85/864,358 hereinafter the “Application”) at issue here,
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`for use in connection with alcoholic beverages other than beer.7 On August 6, 2013, the mark was
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`published for opposition and, as Enterprises surely anticipated, Duke University obtained a 90 day
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`request for extension of time to oppose the mark before timely filing a notice of opposition late last
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`year. [D1]8
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`Duke has long served alcoholic beverages and licenses and sells DUKE-branded products for
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`use with wine and other alcoholic beverages, although it is very careful regarding the nature of its use
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`7
` The goods with respect to which the mark would be used are qualified as follows: Alcoholic beverages except
`beers, all in connection with indicia denoting the late internationally known movie star John Wayne, who is also
`known as Duke. There is no further explanation as to the intended meaning of the underlined terminology.
`8 Docketed pleadings in the pertinent opposition proceeding are referred to herein as “D” followed by the docket
`number. Exhibits to such pleadings are referenced following a hyphen.
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`4
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`and licenses pertaining to alcohol. See, e.g., Ex. 4; [D1 at ¶¶ 5, 10]. In its opposition, Duke cited its
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`prior rights in its famous (and incontestable) DUKE mark, as well as numerous other registered and
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`common-law marks, all of which it uses in connection with a wide range of goods and services, and
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`articulates its concerns that if Enterprises were to achieve registration of a DUKE mark that is
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`identical to Duke’s own famous mark, that registration and associated use could cause: consumer
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`confusion, mistake or deception; could falsely suggest a connection with Duke; could interfere with
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`Duke’s use and exploitation of its marks; and could diminish, dilute, or tarnish the excellent
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`reputation and goodwill Duke has spent years building in its DUKE marks. [D1]
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`Enterprises filed its answer to the notice of opposition; the parties have participated in their
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`discovery conference; discovery has begun; and as noted above, Duke has provided notice to
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`Enterprises of its intent to rely on the prior proceedings between the parties and the judgment
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`rendered therein.
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`B. The California Proceeding
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`On July 3, 2014, Enterprises brought a declaratory judgment action against Duke in the
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`Central District of California, Civil Action No. 8:cv-14-01020. Two weeks later, on July 17,
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`Enterprises served Duke with the summons and complaint. During the intervening period and since
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`that time, Enterprises extensively publicized its lawsuit and its alleged unhappiness with Duke. See,
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`e.g., Ex. 5.
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`The California complaint [D5], which largely resembled a press release regarding the alleged
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`fame and importance of the deceased actor known as John Wayne, included two nominal claims for
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`consideration, both of which ask for a determination that Enterprises’ use of a series of marks (of
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`which use it provides only one example, a press release showing a bottle that apparently contains
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`bourbon with the word “Duke” superimposed over a decorative image of a man in a western outfit
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`that Duke assumes is intended to be John Wayne and featuring a signature Duke can only assume
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`consumers are intended to assume is John Wayne’s) does not infringe on Duke’s rights. [See D5-A,
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`5
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`¶¶35-40, Ex. A] Based on that determination, it also asks for a broader determination that any use of
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`any such unspecified marks does not infringe upon Duke’s rights. [D5-A ¶¶40] It does not provide
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`any additional examples of such actual use, nor does it explain what marks that it purportedly uses
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`would be covered by such a determination.
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`Interestingly, although the California complaint mentions the prior proceedings between the
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`parties, it fails to inform the California Court that the Judgments were entered, and that Enterprises
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`took no appeal from any of the Judgments.
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`Enterprises’ California complaint addresses only its actual claimed use of a series of marks
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`and requested that judicial determinations be made on that basis. [See, e.g., D5-A ¶40 (second claim
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`for relief requesting “…a judicial determination and declaration that …use of the JWE Marks and
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`other similar marks [defined as anything including the word “Duke”] do not dilute or otherwise
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`violate…..”] The complaint does not address the myriad theoretical ways that the DUKE mark
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`which is at issue in this Opposition could be used based in on the intent-to-use nature of the
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`Application. [D5-A] Further the complaint’s overreaching fact pattern ignored that the DUKE
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`Application at issue here has no restrictions on the potential appearance of the mark, the indicia with
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`which it is intended to be used, the customers to whom goods bearing the mark would be marketed,
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`and the channels of trade in which such goods would travel. [See id.]
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`At the present time, it is not clear that the California proceeding will still be pending when
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`the Board reaches this motion. Duke already has filed a motion to dismiss the suit due to lack of
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`personal jurisdiction.9 Specifically, Duke, which is a North Carolina non-profit university and has
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`limited contacts with the State of California and its residents, is subject neither to general nor to
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`specific personal jurisdiction in California. As explained by Mr. O’Malley, in accordance with the
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`normal practice of the California court it is anticipated that this motion will be decided within the
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`next month. See Ex. 2.
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`9 The absence of subject matter jurisdiction also is an issue, but has not yet been addressed.
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`6
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`

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`Assuming the TTAB timing for determination of the present motion is similar to that which
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`counsel has experienced in other cases, it is likely that we already will know the result of the motion
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`before the TTAB begins to address the present motion to suspend. The Board will be updated
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`accordingly.
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`C. The Present Motion to Suspend
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`Despite the fact that the parties began discussing the Application late last year and have been
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`involved in a series of proceedings involving various marks containing the term “Duke” in front the
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`TTAB for almost a decade, Enterprises’ filing of the Motion to Suspend late last month was the first
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`time that it ever indicated to Duke that it felt that a federal court would be better suited than the
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`TTAB to decide disputes10 involving trademarks. As set out at FN8 of the memorandum filed in the
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`California proceeding (which cites to supporting declarations), attached to Mr. O’Malley’s
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`declaration filed herein (Ex. 2), Duke had made no threats to Enterprises and had done no more than
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`respond to Enterprises’ own election of the Trademark Office as the place where it would seek to
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`expand its rights.
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`Now, rather than accept the consequences of its decision to again seek registration of a
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`“Duke” mark significantly similar to those against which judgment previously was entered, and
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`demonstrably intended to be pronounced as DUKE alone, and typed as DUKE alone used in tweets
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`and other text-only media, Enterprises seeks to postpone this Board’s review of the Application in
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`favor of waiting for determination by a different tribunal on distinctly different claims; and it waited
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`nearly a year after the filing of the Notice of Opposition against this mark, until the parties were well
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`into discovery, to make this request
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`Interestingly, Enterprises does not give any reason supporting its motion to suspend beyond
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`noting that the Board is entitled to suspend the proceedings. Perhaps that is because Enterprises
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`10 Duke does not concede that the California lawsuit filed by Enterprises seeking a Declaratory Judgment that
`hypothetical unspecified marks, when used in connection with hypothetical unspecified goods and/or services, in
`hypothetical unspecified channels of trade is based on any actual controversy.
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`7
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`acknowledges that none of the typical arguments for suspension apply here. For example, Enterprises
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`clearly has no interest in delaying this proceeding and the discovery taking place in it, since it refused
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`to agree to an extension of deadlines pending a ruling on the motion to suspend and did not respond
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`to a suggestion that consideration of the motion to suspend should be postponed until after the
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`California court had decided the motion to dismiss. See Ex. 6. Those same refusals also refute any
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`possibility that Enterprises desires to conserve the parties’ resources, or those of the various
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`tribunals; as does the fact that Enterprises chose to wait to file the district court proceeding until the
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`parties had already entered the discovery phase in this case and were well into discovery in the co-
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`pending proceeding. [See D5-A]
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`A. Law relating to stays; standard of proof
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`As Enterprises correctly noted, the TTAB has the option to suspend a proceeding pending the
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`outcome of a federal court case; it is not, however, required to do so since such action is within its
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`sole discretion. 37 C.F.R. § 2.117(a); TBMP § 510.02(a). While TTAB proceedings “may be
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`suspended until termination of a civil action” that “may have a bearing on the case” (Trademark Rule
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`§ 2.117(a) (emphasis added)), such a suspension is decidedly improper when the civil action upon
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`which the motion is based does not involve the same marks.11
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`As with all motions, in the case of a motion to suspend the moving party bears the burden of
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`proof, keeping in mind that stays should not be granted for indefinite periods that essentially put the
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`opposing party out of court with respect to its claims. 12 Here, in order to prevail, Enterprises must
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`show by “clear and convincing” evidence that the suspension it is requesting is justified by
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`circumstances that outweigh potential harm to Duke.13 Id. In general, a party seeking to suspend
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`11 See Swerve IP, LLC v. Jones, Opp. No. 91204105 (TTAB July 16, 2012) (denying motion to suspend based upon
`district court action involving different parties).
`12 See Moses H. Cone Memorial Hosp. v. Mercury Const. Corp., 460 U.S. 1, 8-9 (1983).
`13 While Moses Cone involved litigation before federal courts, there is no reason for a different standard to apply
`before the TTAB when the same discretion is granted to the tribunal in each case and the considerations enunciated
`by the Supreme Court continue to apply.
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`8
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`proceedings in one proceeding pending the outcome of another case must show (1) it will likely
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`prevail on the merits; (2) it will suffer irreparable injury if the suspension is denied; (3) the other
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`parties will not be substantially harmed by the stay; and (4) the public interest will be served by
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`granting the stay.14 Further, the party requesting a stay “must make out a clear case of hardship or
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`inequity in being required to go forward, if there is even a fair possibility that the stay for which he
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`prays will work damage to someone else.”15 The most important factor in determining whether to
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`grant a motion to stay is the decider’s obligation to weigh competing interests (e.g., judicial
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`economy, the parties’ rights to a resolution, specialized knowledge of a particular tribunal) to
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`“maintain an even balance.”16 The “party seeking a stay must justify it by clear and convincing
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`circumstances outweighing potential harm to the party against whom it is operative.”17
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`Additionally, in TTAB proceedings specifically, the doctrine of primary jurisdiction also
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`comes into play; when it is a question of registrability, the TTAB is the appropriate forum.18 Here,
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`that is precisely the case: the issue is a question of registrability, not infringement; and this Board
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`should not delay its own decision.
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`B. Enterprises has not shown a likelihood that it will prevail
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`Here Enterprises’ Motion to Suspend failed to provide evidence any evidence suggesting that
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`it will prevail on the merits of this proceeding. In fact it failed to even argue that it is likely to
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`prevail. Thus since the burden of proof rests with Enterprises, any finding as to a likelihood of
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`success on the merits at this point must be found as favoring Duke.
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`14 Long v. Robinson, 432 F.2d 977, 979 (4th Cir.1970); Atlantic Capes Fisheries v. Gutierrez, 474 F. Supp. 2d 768
`(E.D.N.C. 2007).
`15 Landis v. N. Am. Co., 299 U.S. 248, 255 (1936); see also Williford v. Armstrong World Indus., Inc., 715 F.2d 124,
`127 (4th Cir. 1983).
`16 Landis, 299 U.S. at 254-55.
`17 Williford, 715 F.2d at 127; see also Kahn v. Gen. Motors Corp., 889 F.2d 1078, 1083 (Fed. Cir. 1989).
`18 See Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848, 853 (2nd Cir. 1988) (“If a district court action
`involves only the issue of whether a mark is entitled to registration and if subject matter jurisdiction is available, …
`the doctrine of primary jurisdiction might well be applicable, despite the differences between the trademark
`registration scheme and other regulatory patterns. In such a case, the benefits of awaiting the decision of the PTO
`would rarely, if ever, be outweighed by the litigants' need for a prompt adjudication.”).
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`9
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`Additionally, Duke notes that, while it is not Duke’s burden to come forward with evidence
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`at this point, based on the parties’ prior history, it is unlikely that Enterprises will be successful in
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`either its civil case or this opposition. Here, as noted above, the parties have been involved in five
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`prior oppositions and cancellations regarding marks containing the term “Duke” and in each case
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`Judgment was entered against Enterprises and in favor of Duke.19,20 Enterprises has in each case
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`failed to appeal, and those judgments finding likelihood of confusion have become final. Duke will
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`be able to rely on the res judicata and collateral estoppel effects of those prior decisions.21 Further,
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`Duke has previously established the fame of its “Duke” marks before the TTAB22 and in surveys
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`showing widespread association of the mark DUKE with Duke, and minimal if any connection of the
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`mark with Enterprises.23 Accordingly, when weighing likelihood of success, the balance favors
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`Duke, not Enterprises.
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`C. Enterprises has not shown it will suffer irreparable injury if suspension is denied
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`Enterprises bears the burden here of establishing a case of hardship or inequity in going
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`forward with this proceeding, particularly since there is a likelihood that Duke will be harmed by a
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`19 See Duke University v. John Wayne Enterprises, LLC, Canc. No. 92053341 (filed Nov. 29, 2010); judgment
`entered cancelling registration Jan. 2, 2013); Wayne Enterprises, LP v. Duke University, Opp. No. 91183030 (filed
`March 17, 2008; opposition dismissed with prejudice Jan. 2, 2013); Duke University v. Wayne Enterprises, LP, Opp.
`No. 91174273 (filed Nov. 10, 2006; judgment entered refusing registration Jan. 3, 2013); Duke University v. Wayne
`Enterprises, LP, Opp. No. 91167168 (filed Oct. 24, 2005; judgment entered refusing registration Jan. 3, 2013).
`20 Ex. 3 (Duke’s Notice of Intent to Rely On Prior Judgments).
`21 See, e.g., Miller Brewing Co. v. Coy International Corp., 230 USPQ 675, 678 (TTAB 1986) (judgment in first
`opposition, as result of abandonment of application without consent, operates as claim preclusion in subsequent
`opposition so as to bar applicant's subsequent application for an insignificantly modified mark); Bass Anglers
`Sportsman Society of America, Inc. v. Bass Pro Lures, Inc., 200 USPQ 819, 822 (TTAB 1978) (judgment against
`applicant in prior opposition due to abandonment of application without consent operated as collateral estoppel in
`subsequent opposition involving same marks and same parties in opposite positions); Aromatique Inc. v. Lang, 25
`USPQ2d 1359, 1361 (TTAB 1992) (applicant, by abandoning application with prejudice in prior opposition is
`estopped in subsequent opposition from attempting to register virtually identical mark for identical goods); Johnson
`& Johnson v. Bio-Medical Sciences, Inc., 179 USPQ 765 (TTAB 1973) (dismissal of previous counterclaims with
`prejudice operated as estoppel barring same counterclaims in subsequent proceeding).
`22 See Duke University v. Haggar Clothing Co., Opp. 108,304 (2003) (non-precedential; available at http://e-
`foia.uspto.gov/Foia/ReterivePdf?system=TTABIS&flNm=91154687-06-02-2008) (“The fame of opposer’s mark
`[DUKE] has been clearly established...”).
`23 See Duke’s Mem. Supp. Mot. Dismiss, 2 (attached to Decl. O’Malley (Ex. 2)).
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`10
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`stay.24 Enterprises’ motion, however, provides no evidence or argument suggestive of irreparable
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`injury to Enterprises, or even any injury at all, should the motion not be granted. Enterprises’ refusal
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`to extend discovery deadlines that would otherwise come due while awaiting the Board’s decision on
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`its motion to suspend strongly supports a conclusion that continuing with the proceedings will cause
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`Enterprises no harm.25 Enterprises’ California complaint, moreover, argues for a prompt
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`determination. (See D5-A ¶27). Reported public comments, although perhaps hearsay, are
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`consistent with the record. Ethan Enterprises, Applicant’s principal, is quoted as asserting that, “I
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`would like to end this dispute with Duke University.”26 In short, expeditious conclusion of this
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`Opposition would be helpful rather than harmful to Enterprises.
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`Thus, not only has Enterprises failed to show that it will suffer injury should its motion be
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`denied, but it has not even attempted to make such a case and all known factors suggest that it will in
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`fact suffer no significant injury. This factor weighs in Duke’s favor.
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`D. While Enterprises is unlikely to be harmed, Duke is likely to be harmed by a stay
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`Although nothing in Enterprises’ pleadings indicated that it will suffer any kind of harm if
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`this proceeding is not suspended, delay harms Duke and Duke’s marks. Enterprises is attempting to
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`use delay to promote its own alleged rights in the term DUKE, and to cast doubt on the rights of
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`Duke. After Enterprises filed its California lawsuit, it made numerous statements to the press
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`promoting itself and its position. Ethan Wayne, for example, is quoted as saying that, “I cannot
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`understand why they are opposing this… I think it’s a very preposterous claim.” Such statements
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`and the publicity they engender, of course, entirely ignore the Judgments previously entered against
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`Enterprises and the acquiescence of Enterprises in those Judgments by its failure to appeal. 27 Such
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`statements also ignore Duke’s own longstanding licensing and sales activities relating to alcoholic
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`24 See Landis v. N. Am. Co., 299 U.S. 248, 255 (1936).
`25 See Ex 6 (additional sentence relating to settlement communications between the parties has been redacted).
`26 See Ex. 5, Fox News, “John Enterprises’ son: Duke University claim that ‘Duke’ bourbon will create confusion is
`preposterous” (July 11, 2014).
`27 See Ex. 5, CBS News, “Why doesn’t Duke University like John Enterprises family’s bourbon” (July 10, 2014).
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`11
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`beverages, carefully curated to avoid tarnishment of the DUKE brand. See, Ex. 4. A prompt
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`decision is necessary to avoid continued attempts to tarnish Duke’s good name and mark through
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`improper publicity.
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`In short, delay is unreasonably burdensome to Duke, which deserves to particularly when the
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`result achieves no significant judicial economies and would harm Duke University by allowing
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`Enterprises to continue asserting trademark rights in, and the psychological benefit of, its pending
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`Application to register the “Duke” mark, while avoiding the TTAB’s review of the actual
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`registrability of the Application.
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`E. Enterprises has not shown that these proceedings would be substantially simplified by a
`decision issued in the California case
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`Although TTAB proceedings may be suspended pending resolution of a civil action having a
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`
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`bearing on the case, here the link between the civil action and this proceeding is tenuous at best.
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`While both proceedings involve Duke University and John Wayne Enterprises and both mention
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`alcohol, they do not involve the same marks or fact patterns. The California case centers on
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`Enterprises’ desire to receive a judicial determination that an unspecified range of marks which it is
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`currently using (and may hope to one day register) do not infringe on Duke’s rights.28 In contrast,
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`this Opposition centers on whether Enterprises’ request to register one particular DUKE mark, that is
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`identical to Duke’s famous DUKE mark for which it has incontestable registration, is likely to
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`infringe Duke’s rights in that and other marks given the lack of restrictions on the customers to which
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`the applied for goods would be marketed and sold, the channels or trade through which the goods
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`would travel, the appearance of the mark or even whether it could be used in connection with indicia
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`designed to remind consumers of Duke University. 29, 30 Given the vast differences in what the two
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`28 See, e.g., D5-A ¶40 (“[Enterprises] desires a judicial determination and declaration that [Enterprises]’s registration
`and use) of the JWE Marks and [other marks that include the word “Duke”] do not dilute any valid trademark of
`Duke University or otherwise violate any of Duke University’s rights”.).
`29 If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is
`not limited to any particular depiction of the mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55
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`12
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`proceedings seek to determine, there is no indication that resolution of the federal court proceeding
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`would resolve the issues in this case, substantially reduce the issues to be decided here, or even have
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`a significant bearing on this proceeding.
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`The California proceeding also has no bearing on this proceeding since the California court
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`should not be considering registrability of the Application at issue here. Trademark applications filed
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`on an intent-to-use basis in essence propose a theoretical future use. Such applications offer no
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`evidence as to how marks actually are used and could not under any circumstances serve as a basis of
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`any claim of infringement.31 Accordingly, the Application at issue in this proceeding is not properly
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`before the California court for consideration, any results from the California case will be entirely
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`irrelevant to this proceeding, and this proceeding should not be stayed in order to await such
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`resolution.32
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`F. Entry of a stay would not be equitable
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`Enterprises’ request to stay constitutes a delaying tactic that is not supported by equitable
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`considerations. Enterprises has elected to repeatedly engage with Duke before the TTAB regarding
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`the registration and use of “Duke” marks, for nearly a decade. Enterprises’ actions have resulted in
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`entry of the Judgments against it, which it has not appealed. The result is that this Board not only is
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`USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007). A registrant is
`entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely