This Opinion is Not a
Precedent of the TTAB

Mailed: November 1, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Duke University
v.
Benson J. Williams
_____

Opposition No. 91220555
_____

Susan Freya Olive of Olive & Olive, P.A.,
for Duke University.

John E. Russell of Allmark Trademark,
for Benson J. Williams.

_____

Before Kuhlke, Greenbaum and Pologeorgis,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

Benson J. Williams (“Applicant”) filed an application for registration on the

Principal Register of the mark DRANK UNIVERSITY (in standard characters) for

Athletic apparel, namely, shirts, pants, jackets, footwear,
hats and caps, athletic uniforms; Baseball caps and hats;
Caps; Hooded sweat shirts; Hooded sweatshirts; Knitted
caps; Leather hats; Open-necked shirts; Polo shirts; Rugby
shirts; Short-sleeved or long-sleeved t-shirts; Skull caps;
Sports caps and hats; Sweat bands; Sweat jackets; Sweat
pants; Sweat shirts; Sweat shorts; Sweat suits; T-shirts;
Opposition No. 91220555

Tee shirts; Wearable garments and clothing, namely,
shirts, in International Class 25.1

Duke University (“Opposer”), opposes registration pursuant to Section 2(d) of the

Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when

applied to Applicant’s goods, so resembles Opposer’s numerous previously used and

registered DUKE and DUKE-formative marks including DUKE UNIVERSITY, and

close variants thereof, for various educational, entertainment, and sports services,

assorted clothing, and various other goods and services, as to be likely to cause

confusion. The most relevant registrations are:

Reg. No. Mark Relevant Goods

17018272 DUKE UNIVERSITY Shirts
(registered (stylized)
10/01/91, second
renewal)
20264923 DUKE (stylized, with a Clothing, namely, t-shirts
(registered heart design substituted
12/31/96, second for the letter “U”)
renewal)
2317603 DUKE UNIVERSITY Retail store and mail order
(registered STORES4 services in the field of clothing
07/21/92, second
renewal)
39360965 DUKE Clothing including hats,
(registered jackets, shirts, shorts, sweat
03/29/11, Sec. 8 & bands, sweat pants, sweat
shirts, and t-shirts

1Application Serial No. 85859775 was filed on February 25, 2013, based upon Applicant’s
claim of first use anywhere since at least as early as November 13, 2011, and use in commerce
since at least as early as March 25, 2012.
2 1 TTABVUE 32-34.
3 1 TTABVUE 44-46.
4 The term “STORES” is disclaimed.
5 1 TTABVUE 76-79.

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Opposition No. 91220555

Reg. No. Mark Relevant Goods

15 accepted and
acknowledged)
39950156 composite mark consisting Clothing, namely, shirts
(registered of a medallion design and
07/12/11, Sec. 8 & the words DUKE
15 accepted and UNIVERSITY
acknowledged) ATHLETICS
EXCELLENCE LOYALTY
DIVERSITY EDUCATION
ACCOUNTABILITY
SPORTSMANSHIP
COMMITMENT
INTEGRITY RESPECT D

7

6 1 TTABVUE 80-83.
7 The registration includes the following description of the mark: “The mark consists of a
medallion design that consists of two outer concentric rings and an inner circle. The
outermost ring has a scalloped border and contains nine stars. The mid ring contains the
words ‘DUKE UNIVERSITY ATHLETICS’ in a circular presentation. The inner circle
contains the words ‘LOYALTY DIVERSITY EDUCATION ACCOUNTABILITY’ stacked in
the top half and ‘SPORTSMANSHIP COMMITMENT INTEGRITY RESPECT’ stacked in the
bottom half. The word ‘EXCELLENCE’ appears in an oblong banner that horizontally bisects
the entire medallion. A stylized letter ‘D’ appears at the bottom of the medallion in the
scalloped outer ring.” Color is not claimed as a feature of the mark. The words UNIVERSITY,
ATHLETICS, EXCELLENCE, LOYALTY, DIVERSITY, EDUCATION,
ACCOUNTABILITY, SPORTSMANSHIP, COMMITMENT, INTEGRITY and RESPECT
have been disclaimed.

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Opposition No. 91220555

Opposer raised four additional grounds:

1. Applicant’s mark is likely to dilute Opposer’s famous marks DUKE and DUKE

UNIVERSITY through dilution by blurring and tarnishment pursuant to

Section 43(c) of the Trademark Act, 15 U.S.C. § 1125(c);

2. Applicant’s mark falsely suggests a connection with Opposer under Section

2(a) of the Trademark Act, 15 U.S.C. §1052(a);

3. the application is void ab initio pursuant to Section 1(a) of the Trademark Act

because Applicant did not use the mark in commerce on the identified goods

before the filing date of the use-based application; and

4. fraud based on false averments of use in the application declaration.

Applicant, in his answer, admitted the allegations in paragraph 1 of the Notice of

Opposition, namely, that “Opposer is the owner of many marks consisting in whole

or substantial part of the term DUKE and close variants thereof [ ], which marks

include the term DUKE UNIVERSITY,”8 and that Opposer “appears to own the listed

registrations in paragraph 6.”9 Applicant denied the other salient allegations in the

Notice of Opposition.

I. The Record

The record consists of the pleadings and, by operation of Trademark Rule

2.122(b), 37 C.F.R. § 2.122(b), the file of application Serial No. 85859775. Opposer

attached to the Notice of Opposition printouts from the USPTO TSDR electronic

8 1 TTABVUE 19, ¶ 1 (Notice of Opposition); 4 TTABVUE 2, ¶ 1 (Answer).
9 1 TTABVUE 20-21, ¶ 6 (Notice of Opposition); 4 TTABVUE 3 ¶ 6 (Answer). The “listed
registrations” include the five registrations set forth in the chart above.

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Opposition No. 91220555

database showing the status and title of Opposer’s 24 pleaded registrations.

Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1).10 During its assigned testimony

period, Opposer filed the deposition, with exhibits, of James Earl Wilkerson, Director

of Trademark Licensing and Store Operations at Duke University,11 and a Notice of

Reliance upon Opposer’s Requests for Admission, Interrogatories, and Requests for

Documents.12

With respect to Opposer’s discovery requests, Opposer avers that “Applicant failed

to respond to Opposer’s First Set of Discovery Requests, serving no objections and

providing no responses of any kind or nature. Counsel by signature to this document

declares under penalty of perjury that these documents were properly served in

accordance with the Rules and that no responses were received.”13 Applicant has not

contested the averments. Accordingly, the Requests for Admission are deemed

admitted pursuant to Fed. R. Civ. P. 36(a)(3) (“A matter is admitted unless, within

30 days after being served, the party to whom the request is directed serves on the

requesting party a written answer or objection addressed to the matter and signed by

the party of its attorney.”). See also Trademark Rule 2.120(k)(3)(i), 37 C.F.R.

§ 2.120(k)(3)(i); TBMP § 407.03(a) (June 2017).

10 1 TTABVUE 29-108.
11 14 TTABVUE.
1215 TTABVUE. We refer to the specific Requests for Admission as “RFA” followed by the
particular number of the Request.
13 15 TTABVUE 3.

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Opposition No. 91220555

Several of the admissions concern Opposer’s priority for all of its pleaded marks,14

including Opposer’s priority in Opposer’s mark DUKE UNIVERSITY for “apparel”

and “clothing,” particularly “shirts.”15 In addition, Applicant admits the following:

1. Applicant was aware of Opposer and its use of the pleaded marks on apparel

when he selected his mark;16

2. the goods identified in the application and pleaded registrations move in the

same trade channels to the same class of consumers including college

students;17

3. “Applicant’s goods are not targeted to sophisticated consumers”;18

4. “Applicant’s Mark is substantially similar to at least one of Opposer’s

Marks,”19 and “Applicant’s Mark is substantially similar to Opposer’s

Marks”;20

5. Opposer owns the pleaded registrations including registrations for marks in

International Class 25, all of which are valid and subsisting;21

6. “Opposer’s DUKE mark is famous”;22 and

14 15 TTABVUE 7-9, RFA 1-16.
15 15 TTABVUE 8-9, RFA 10-16.
16 15 TTABVUE 9-10, RFA 17-20.
17 15 TTABVUE 10, 12, RFA 21-24, 36.
18 15 TTABVUE 12, RFA 35.
19 15 TTABVUE 12, RFA 38.
20 15 TTABVUE 16, RFA 52.
21 15 TTABVUE 12-14, RFA 39-40, 42-44.
22 15 TTABVUE 15, RFA 45.

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Opposition No. 91220555

7. “Applicant is not associated with, licensed by, or connected to Opposer.”23

We highlight the importance of these admissions because all matters are

considered to be “conclusively established unless the court on motion permits

withdrawal or amendment of the admission.” See Fed. R. Civ. P. 36(b). Applicant has

not filed such a motion.

Applicant submitted no testimony or other evidence, and only Opposer filed a

brief. Nonetheless, Opposer, as plaintiff in this proceeding, must prove its standing

and its claims by a preponderance of the evidence. See Cerveceria Centroamericana,

S.A. v. Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989).

II. Standing and Priority

Because Opposer’s pleaded registrations are of record, are valid and subsisting,

and are owned by Opposer, Opposer’s standing to oppose registration of Applicant’s

mark is established and its priority is not in issue as to the goods and services listed

therein. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111

USPQ2d 1058, 1062 (Fed. Cir. 2014); Cunningham v. Laser Golf Corp., 222 F.3d 943,

55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., Inc. v. Ralston Purina Co.,

670 F.2d 1024, 213 USPQ 185 (CCPA 1982); and King Candy Co., Inc. v. Eunice King’s

Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Applicant does not dispute

Opposer’s standing and, as noted above, admits Opposer’s priority as to each of the

23 15 TTABVUE 15, RFA 48.

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Opposition No. 91220555

pleaded marks.24 Even without this admission, Applicant presented no testimony or

other evidence, and therefore has not established any earlier use of his mark.

We turn now to Opposer’s claim of likelihood of confusion. For purposes of this

proceeding, Opposer’s claim of common law rights is unnecessary, and we have not

considered it in making our decision.25

III. Likelihood of Confusion

When the question is likelihood of confusion, we analyze the facts as they relate

to the relevant factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357,

177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311,

65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key

considerations are the similarities between the marks and the similarities between

the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors.

See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947

(Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of

record” need be considered).

24 15 TTABVUE 7-9, RFA 1-16.
25 Nonetheless, we note Applicant’s admission that “Opposer owns common law marks that
are used on goods classified in International Class 25.” 15 TTABVUE 13, RFA 41. We also
acknowledge Mr. Wilkerson’s uncontroverted testimony as to Opposer’s use of the common
law marks DUKE and DUKE UNIVERSITY in connection with clothing “[f]or decades prior
to the Applicant’s alleged first use of Applicant’s Mark in 2011.” 14 TTABVUE 201, ¶ 22.

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Opposition No. 91220555

A. Similarity of the Parties’ Goods and Services and Channels of Trade

We begin with the du Pont factors involving the relatedness of the goods and

services, and the similarity of established, likely to continue channels of trade. We

base our evaluation on the goods and services as they are identified in the application

and registrations. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d

1317, 110 USPQ2d 1157, 1171 (Fed. Cir. 2014); Octocom Sys. Inc. v. Houston

Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).

1. Similarity of the Goods and Services

Applicant’s goods and Opposer’s goods overlap to the extent that all of Opposer’s

above-listed goods, namely, “hats,” “jackets,” “shirts,” “shorts,” “sweat bands,” “sweat

pants,” “sweat shirts,” and “tshirts,” are listed in Applicant’s identification of goods.

Accordingly, the goods are identical in part, and the other goods identified in the

application comprise closely related apparel. Applicant also has admitted that

“Opposer uses the mark DUKE UNIVERSITY in commerce in connection with shirts

sold in the USA,”26 and that “[t]he goods in Class 025 for which [Applicant] seeks to

register the Subject mark includes shirts.”27 In addition, Mr. Wilkerson testified that

“[f]or decades prior to [ ] Applicant’s first use of [his] mark in 2011, [Opposer] has

used the marks DUKE and DUKE UNIVERSITY in connection with clothing,”

including nearly all of the items identified in the application.28 Opposer attached to

26 15 TTABVUE 9, RFA 13.
27 15 TTABVUE 9, RFA 14.
28 14 TTABVUE 201, ¶ 22.

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Opposition No. 91220555

Mr. Wilkerson’s testimony examples of many such items.29 Moreover, Applicant’s

identified goods are related to Opposer’s retail store and mail order services featuring

clothing inasmuch as goods and the services of selling those same goods are related

for purposes of likelihood of confusion. See, e.g., In re Hyper Shoppes (Ohio), Inc., 837

F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and

general merchandise store services and BIGGS and design for furniture likely to

cause confusion); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (applicant’s mark

CAREER IMAGE for women’s clothing stores and women’s clothing likely to cause

confusion with CREST CAREER IMAGES for uniforms including items of women’s

clothing).

2. Channels of Trade

Because the goods of the parties are identical, in part, and neither Opposer’s

registrations nor the involved application contain any limitations on the channels of

trade and classes of purchasers, we must presume that they are the same for these

identical goods. See Stone Lion, 110 USPQ2d at 1161; In re Yawata Iron & Steel Co.,

Ltd., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical

goods, the channels of trade and classes of purchasers are considered to be the same).

Such trade channels would include retail store and mail order services featuring

clothing, such as that identified in Reg. No. 1702350 (DUKE UNIVERSITY

STORES).

29 14 TTABVUE 226-255 (Wilkerson Dec., Exhibit 2).

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Opposition No. 91220555

We also note Applicant’s many admissions concerning the overlapping trade

channels and classes of customers.30 In particular, Applicant has admitted that

“Applicant’s goods will be sold through the same channels of trade as those used by

Opposer and Opposer’s licensees to offer Opposer’s Goods and/or Services under

Opposer’s Marks,”31 “Applicant has marketed its goods to college students,”32 and

“Applicant’s goods could be marketed and/or sold to the same types of consumers as

those who currently purchase goods and services offered by Opposer and its licensees

under Opposer’s Marks.”33

Accordingly, these du Pont factors support a finding of likely confusion.

B. Conditions of Sale

Next, we consider the conditions under which the goods and services are likely to

be purchased, e.g., whether on impulse or after careful consideration, as well as the

degree, if any, of sophistication of the consumers. “Purchaser sophistication may tend

to minimize likelihood of confusion. Conversely, impulse purchasers of inexpensive

items may tend to have the opposite effect.” Palm Bay Imps. Inc. v. Veuve Clicquot

Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691, 1695 (Fed.

Cir. 2005) (citation omitted). Again, because we are bound by the identifications of

goods and services in the application and pleaded registrations, and because none of

The record also demonstrates that the channels of trade are similar, if not identical. See 14
30

TTABVUE 197-198, ¶¶ 10 and 14; 14 TTABVUE 204, ¶ 30; and 14 TTABVUE 207, ¶ 40.
31 15 TTABVUE 11, RFA 32.
32 15 TTABVUE 12, RFA 33.
33 15 TTABVUE 12, RFA 36.

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Opposition No. 91220555

the identifications are restricted as to price, we must presume that Applicant’s goods

and Opposer’s goods and services are marketed to all ordinary consumers of clothing.

Ordinary consumers of these goods and services are likely to exercise only ordinary

care, and given the lack of price restrictions in the identifications, may buy the

identified goods on impulse. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d

1894, 1899 (Fed. Cir. 2000) (“When products are relatively low-priced and subject to

impulse buying, the risk of likelihood of confusion is increased because purchasers of

such products are held to a lesser standard of purchasing are.”). Indeed, Mr.

Wilkerson testified that “[c]onsumers of DUKE-branded goods come from all sectors

of the public at large. They range from grandparents to young adults and children—

essentially any person who has access to funds. The purchase price of DUKE and

DUKE UNIVERSITY-branded apparel and clothing is such that consumers can buy

a quick gift for themselves or for a family member of friend.”34 Similarly, Applicant

has admitted that his “goods are not targeted to sophisticated consumers.”35

Accordingly, this factor favors a finding of a likelihood of confusion.

C. Similarity of the Marks

We turn now to the du Pont factor of the similarity or dissimilarity of Applicant’s

mark DRANK UNIVERSITY and Opposer’s marks DUKE and DUKE UNIVERSITY,

and the variants listed in the chart above. We analyze “the marks in their entireties

as to appearance, sound, connotation and commercial impression.” In re Viterra, 671

34 14 TTABVUE 207, ¶ 42.
35 15 TTABVUE 12, RFA 35.

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Opposition No. 91220555

F.3d 1358, 101 USPQ2d 1905, 1908 (quoting du Pont, 177 USPQ at 567). See also

Palm Bay, 73 USPQ2d at 1691. “The proper test is not a side-by-side comparison of

the marks, but instead whether the marks are sufficiently similar in terms of their

commercial impression such that persons who encounter the marks would be likely

to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning

LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).

Further, in comparing the marks, we are mindful that where, as here the goods

identified in the application and registrations are legally identical, in part, the degree

of similarity between the marks necessary to find likelihood of confusion need not be

as great as where there is a recognizable disparity between the goods. Id. at 1721;

Viterra, 101 USPQ2d at 1912 (citing Century 21 Real Estate Corp. v. Century Life of

Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)).

Applicant admits that “Applicant’s Mark is substantially similar to at least one of

Opposer’s Marks,”36 and “Applicant’s Mark is substantially similar to Opposer’s

Marks.”37 The marks are similar in that the first word in each mark is one syllable

that begins with the letter “D” and ends with the letters “K” or “KE” which are

pronounced identically in each mark. In addition, the second word in Applicant’s

mark, UNIVERSITY, is identical to the second word in some of Opposer’s marks. The

marks therefore share some aural and visual similarities.

36 15 TTABVUE 12, ¶ 38.
37 15 TTABVUE 16, ¶ 52.

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Opposition No. 91220555

As for commercial impression, because Applicant applied to register his mark in

standard character format, his display is not limited to any particular font style, size,

or color, and we therefore must consider that Applicant’s mark might be used in any

stylized display or color scheme, including one that is similar or identical to any

lettering style used by Opposer. See Trademark Rule 2.52(a). See also Citigroup Inc.

v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed.

Cir. 2011). In this regard, Mr. Wilkerson testified that he has “seen examples of the

use of the Applicant’s Mark (and variants of Applicant’s Mark) on internet sites

controlled by the Applicant that include additional indicia and imagery,” including “a

crest with the letters ‘DU,’ and a design that presents Applicant’s Mark in the form

of an official seal of a university” which will “enhance the overall similarity of the

presentation to Duke University’s own usage,” and he submitted examples thereof as

Exhibits 9-11 to his Declaration.38 We may look to the trade dress to determine the

commercial impression engendered by the marks. Citigroup, 98 USPQ2d at 1259

(“illustrations of the mark as actually used may assist the T.T.A.B. in visualizing

other forms in which the mark might appear.”); Specialty Brands, Inc. v. Coffee Bean

Distribs., Inc., 748 F.2d 669, 223 USPQ 1281, 1284 (Fed. Cir. 1984) (trade dress may

provide evidence of commercial impression). See also Am. Rice, Inc. v. H.I.T. Corp.,

231 USPQ 793, 797 (TTAB 1986) (“we may take into account whether the trade dress

of packages or labels in the application file as specimens, or otherwise in evidence,

3814 TTABVUE 211, ¶ 55; 14 TTABVUE 397-416 (Exhibit 9 – Examples of Applicant’s use),
14 TTABVUE 417- 431 (Exhibit 10 – Examples of Opposer’s use), 14 TTABVUE 432-445
(Exhibit 11 – Examples of Applicant’s use).

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Opposition No. 91220555

may demonstrate that the trademark projects a confusingly similar commercial

impression”); Nw. Golf Co. v. Acushnet Co., 226 USPQ 240, 244 (TTAB 1985)

(“Evidence of the context in which a particular mark is used on labels, packaging,

etc., or in advertising is probative of the significance which the mark is likely to

project to purchasers.”).

While the marks have differences, in particular different connotations, in view of

Applicant’s admissions and the possible depiction of Applicant’s mark emphasizing

the first letters D and U, we find this du Pont factor also favors a finding of a

likelihood of confusion.

D. Strength of Opposer’s Registered Marks/Third Party Uses

As a final matter, we address the du Pont factors involving the strength of

Opposer’s registered marks, and the number and nature of similar marks in use on

similar goods or in connection with similar services.

In the likelihood of confusion context, fame “varies along a spectrum from very

strong to very weak.” Midwestern Pet Foods Inc. v. Societe des Produits Nestle S.A.,

685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012) (quoting Palm Bay, 73

USPQ2d at 1694); see also Carefirst of Maryland Inc. v. FirstHealth of the Carolinas

Inc., 77 USPQ2d 1492, 1507 (TTAB 2005) (stating that “fame is relative … not

absolute”), aff’d, 479 F.3d 825, 81 USPQ2d 1919 (Fed. Cir. 2007). A famous mark is

one that has extensive public recognition and renown. Bose Corp. v. QSC Audio Prods.

Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002).

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Opposition No. 91220555

Fame, if it exists, plays a dominant role in the likelihood of confusion analysis.

Kenner Parker Toys Inc. v. Rose Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456

(Fed. Cir. 1992). In view of the extreme deference that is accorded to a famous mark

in terms of the wide latitude of legal protection it receives, and the dominant role

fame plays in the likelihood of confusion analysis, “[i]t is the duty of the party

asserting that its mark is famous to clearly prove it.” Coach Servs., 101 USPQ2d at

1720 (quoting Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901,

1904 (TTAB 2007). The commercial strength of a mark “may be measured indirectly,

among other things, by the volume of sales and advertising expenditures of the goods

traveling under the mark, and by the length of time those indicia of commercial

awareness have been evident.” Bose, 63 USPQ2d at 1305. In addition, some context

in which to place raw statistics may be necessary. Id. at 1309.

Again, we must give appropriate consideration to Applicant’s admission that

“Opposer’s DUKE mark is famous,”39 and find this matter to have been conclusively

established. We also bear in mind that a famous mark “casts a long shadow which

competitors must avoid.” Id. at 1305; see also Kenner Parker Toys, 22 USPQ2d at 1456

(“[T]he Lanham Act’s tolerance for similarity between competing marks varies

inversely with the fame of the prior mark.”).

In addition to Applicant’s admission, Mr. Wilkerson testified that Opposer’s

DUKE and DUKE UNIVERSITY marks have received some notoriety in connection

with clothing, as well as retail services featuring these goods. For example, he

39 15 TTABVUE 15, ¶ 45.

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Opposition No. 91220555

testified to Opposer’s annual revenues of approximately $9.5 million from the sale of

DUKE and DUKE UNIVERSITY clothing at Opposer’s DUKE UNIVERSITY retail

stores since prior to 2011,40 Opposer’s sales of clothing bearing the marks DUKE or

DUKE UNIVERSITY through Opposer’s online retail outlets since 1998, and sales of

its “DUKE-branded clothing” in on-campus retail stores since 1970,41 and

overwhelming public association of shirts bearing the word DUKE with Opposer.42

Most of his testimony, however, relates to the fame of the DUKE and DUKE

UNIVERSITY marks for Opposer’s educational and medical center services, as well

as Opposer’s basketball team.43 To the extent his testimony concerns promotional

activities associated with DUKE and DUKE UNIVERSITY branded products, the

associations generally are in the context of the purchasers’ affiliation with and loyalty

to Opposer.44 Moreover, Opposer has not provided any information that would allow

us to evaluate its share of the U.S. clothing market. Cf., e.g., Recot, 54 USPQ2d at

1896 (noting that retail sales of products under the famous mark FRITO-LAY

exceeded $6 billion in 1995, for a greater than 50 percent market share in the

domestic snack chip industry); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111

40 14 TTABVUE 207, ¶ 40.
41 14 TTABVUE 207, ¶ 40.
42 14 TTABVUE 207-208, ¶ 43 (“For example, in one poll that I commissioned, Duke
University was the first association made by almost 80% of consumers across the United
States who saw shirts bearing the word DUKE; they thought those shirts were legitimately
authorized Duke University apparel. In my experience, virtually everyone who sees DUKE
or DUKE UNIVERSITY on clothing—regardless of the presentation—associates that
clothing with Duke University.”).
43 14 TTABVUE 204-207, ¶¶ 32-41.
44 For example, 14 TTABVUE 204, ¶¶ 34-35.

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Opposition No. 91220555

USPQ2d 1419, 1438 (TTAB 2014) (finding HARRY WINSTON famous in the jewelry

field on evidence opposers summarized as “sales in the billions, advertising and

marketing expenditures in the millions, and editorial mentions valued in the millions

over an eighty year period.”).

The totality of Opposer’s evidence concerning the fame of the DUKE and DUKE

UNIVERSITY marks shows that Opposer has enjoyed some recognition of those

marks for clothing, but it does not “clearly prove” that the marks are famous for

clothing (or retail or mail order services featuring clothing). To the extent that

customers recognize DUKE or DUKE UNIVERSITY as a clothing brand, we find this

to be due to the renown of DUKE and DUKE UNIVERSITY for educational and

medical center services, and its basketball team. See, e.g., Inter IKEA Sys. B.V. v.

Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014).

We further note there is no evidence of conceptual weakness based on consumer

exposure to extensive third-party use of the same or similar marks in connection with

the same or similar goods and services. Cf. Jack Wolfskin Ausrustung Fur Draussen

GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d

1129, 1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016); Juice Generation, Inc.

v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).

Moreover, Mr. Wilkerson testified as to Opposer’s licensing and aggressive

enforcement policy to eliminate unauthorized use of DUKE and DUKE UNIVERSITY

marks.45

45 14 TTABVUE 202-204, ¶¶ 24-26, 31; 14 TTABVUE 210, ¶ 51.

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Opposition No. 91220555

Thus, while we find that Opposer has not clearly proven that its marks DUKE

and DUKE UNIVERSITY are famous for clothing and retail and mail order services

featuring clothing, on this record, we find Opposer’s marks to be conceptually and

commercially strong. The strength of Opposer’s marks also favors a finding of

likelihood of confusion.

IV. Conclusion

Having considered all the evidence, in particular the admissions, and arguments

bearing on the relevant du Pont factors, we conclude that Opposer has established,

by a preponderance of the evidence, that there is a likelihood of confusion between

Applicant’s mark DRANK UNIVERSITY for the clothing identified in the application,

and Opposer’s marks DUKE and DUKE UNIVERSITY, and variants thereof, for the

in-part identical clothing and retail and mail order services featuring clothing

identified in the registrations.

Decision: The opposition is sustained on the ground of likelihood of confusion.46

46In view of our disposition of this proceeding, we need not and do not decide Opposer’s other
pleaded claims.

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