Drai beats Dre over Dre v. Drai

Sorry, all the other clever Dr. Dre related titles were already taken so I settled with this. That’s what I get for waiting a month to write this.

To the post!

There is an OBGYN name Dr. Draion M. Burch who applied to have 2 trademarks registered with the USPTO (here and here). Well the problem, he goes by “Dr. Drai” and registered to have DR. DRAI registered as a word mark and the design mark below.

Both marks are for books, seminars, websites, etc. all related to the medical industry and medical education. The famous—well at least to me—Dr. Dre opposed registration claiming that consumers would be confused by the use of DR. DRAI in light of his mark DR. DRE which is registered for a range of music related goods and services, among other things not relevant here (Opposition).

A mark is not supposed to be registered if it’s likely to cause confusion with a mark that’s already registered. There’s a list of factors examining attorneys, the Trademark Trial and Appeal Board (TTAB) or a court uses to determine if two marks are likely to cause confusion, but the two most important and most often cited factors are the similarities between the marks themselves and the goods/services underlying the marks. There are other important factors, and depending on the facts of the given case, they might be relevant. But those two factors are without a doubt the ones most often discussed.

So, similarity of the marks. That goes not only to appearance but to sound, connotation, and commercial impression. I think it’s clear with the word marks, they look mostly similar (DR. DRE/DR. DRAI) and they sound identical. As to connotation and commercial impression, the TTAB found that the use of DR. is likely to lead consumers to believe that the mark reference someone or something with a high level of expertise, so not much difference there and thus the impression they create are highly similar.

The design mark (above) and the DR. DRE mark aren’t nearly as similar in appearance, although for the most part trademark law doesn’t care about the differences of design if a design mark mostly consists of words (which is the case here). Now, there’s the entire term DOCTOR rather than the abbreviation, and the addition of OBGYN & MEDIA PERSONALITY, but, as the TTAB rightly noted, DOCTOR DRAI is the prominent portion—the remaining portion is merely descriptive and thus not too memorable—so when compared against DR. DRE, the design mark carries many of the same similarities of the word mark.

Surprisingly (to me), is that the TTAB didn’t find the DR. DRE mark to be famous. Now, were are procedural reasons for that, related to relying on the evidence of record and the goods/services identified in the registrations, but even still it seems weird. I don’t know enough about the background of this opposition, but it seems to me that with more evidence (or at least evidence properly entered) a high level of fame could have been shown. The TTAB did, however, determine that Dr. Dre “has achieved a degree of renown in the music field” but that based on the evidence of record the fame of the mark didn’t play “a dominant role in the process of balancing the [] factors.”

Lastly, and what proved to be most important, the TTAB didn’t find the goods/services similar enough to cause confusion. The DR. DRE mark is related to music and music services and the DR. DRAI mark is related to medical services. The court considered the “entertainment services” in general that were common between the two but ultimately decided that without proper evidence showing similarity, “entertainment services” is too broad and that alone doesn’t render the services similar.

In addition, the TTAB found there was no false suggestion of a connection between the DR. DRAI mark and Dr. Dre himself. This analysis was very similar to the above, but that it was related to Dr. Dre the individual as opposed to his trademarks. Essentially, the TTAB found that although Dr. Dre is fairly famous, there would be no suggestion of a connection or endorsement by Dr. Dre because the services offered under the DR. DRAI mark have no relation to Dr. Dre and are too far removed from what he does.

Considering the evidence, this was probably the right decision. The services are so different that Dr. Dre’s only real argument was that he is so famous that essentially anyone in an industry at all ancillary to his (I guess any type of entertainment) should not be able to use a mark that similar to his. The problem was he didn’t have strong evidence. Had he submitted evidence of record sales for music he has produced, sold, etc. this might have come out differently. I’m sort of perplexed as to why such evidence wasn’t submitted. However, I still think the TTAB got it right. Will there be confusion/false suggestion between DR. DRE and DR. DRAI? Doubtful. Remember, similarity in the marks themselves is usually not enough.