TRADEMARK LAW: Patent and Trademark Office Delivers Just What the Doctor Ordered

Andre Young, popularly known as Dr. Dre, is many things: hip hop legend, famed producer, powerful music executive, wildly successful entrepreneur, and philanthropist. He was a founding member of N.W.A., one of the most influential rap groups of all time, and has been called the “single most influential producer in hip-hop history” by Rolling Stone magazine. Dr. Dre Bio. RollingStone. [online] Available at: https://www.rollingstone.com/music/artists/dr-dre/biography [Accessed 11 May 2018].

Dre also founded multiple record labels and is credited for discovering and introducing artists such as Snoop Dogg, Eminem, and 50 Cent. Dre was behind the development of the “Beats” headphone brand, which was recently acquired by Apple for a reported $3 billion, following which he and his partner donated a $70 million endowment to the University of Southern California to create the “USC Jimmy Iovine and Andre Young Academy for Arts, Technology and the Business of Innovation.”

One thing Dre is not: a doctor.

Draion M. Burch, D.O., on the other hand, is a doctor—a board certified osteopathic doctor and OB/GYN—whose nickname “Dr. Drai” is used by his family, professors, medical colleagues, and patients. Dr. Drai provides obstetric and gynecological medical services and speaking services on women’s health and transgender health. Describing himself as “America’s OB-GYN,” Dr. Drai has also authored books (including 20 Things You May Not Know About the Vagina), made appearances on television, radio, and social media platforms, published online videos, and given presentations relating to men’s and women’s health.

In 2015, Dr. Drai applied to federally register the trademark and name “DR. DRAI” with the United States Patent and Trademark Office (USPTO) for use in educational and entertainment services, and health care consulting in the field of osteopathic medicine, obstetrics, and gynecology (Application Serial No. 86590205). Drai also applied to register a logo, the text of which reads, “DOCTOR DRAI,” below which are the words “OBGYN & MEDIA PERSONALITY” (Application Serial No. 86730410). Drai applied to use these marks broadly in connection with printed and online materials, and educational services, all in the area of men’s health and women’s health.

To the popular producer and hip-hop icon, Drai’s proposed marks were unacceptable, prompting the DJ to oppose the doctor’s applications on the basis that the they created a likelihood of confusion with Dre’s “DR. DRE” mark, a false suggestion of connection between Dre and Drai’s products, and dilution of Dre’s mark. On May 3, 2018, after a three-year fight between the two, the Trademark Trial and Appeal Board (TTAB) of the USPTO issued a 49-page ruling denying Dre’s opposition to the applications.

Likelihood of Confusion

To evaluate Dre’s likelihood of confusion claim, the TTAB analyzed several factors, including the similarity of the marks, the strength of Dre’s mark, and the relatedness of goods and services covered by the marks.

Similarity of Marks

The likelihood of confusion is viewed in the context of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In this regard, the TTAB concluded that Dre successfully demonstrated that 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. As to the “DR. DRAI” name, the TTAB pointed out that it was phonetically equivalent to Dre’s. Furthermore, notwithstanding that the logo proposed by Drai had several stylized elements—including design elements in the letters spelling the word “doctor,” a representation of a heart rate element through the middle of the logo, and also included the designation “OBGYN AND MEDIA PERSONALITY”—the TTAB found that Drai’s mark was more similar than dissimilar, indicating a likelihood of confusion.

Strength of Prior Mark

The TTAB also found that the “DR. DRE” mark—which predates the “DR. DRAI” mark—has achieved a degree of renown in the music field and is viewed as strong and distinctive in connection with musical sound recording and musical sound recording production services. The “DR. DRE” mark has come to be associated with and refers uniquely and unmistakably to Dre. Thus, this factor also weighed in favor of the DJ.

Relatedness of Goods and Services

In the likelihood of confusion evaluation, the TTAB pointed out that the issue is not whether purchasers would confuse the goods or services, but whether there is a likelihood of confusion as to the source of the goods or services. Dre argued that Drai’s proposed use of marks in connection with educational and entertainment services, namely, providing motivational and educational speaking, are related to Dre’s musical composition and production services in light of the entertainment nature of both types of services.

The TTAB rejected this argument, concluding that the only similarity between the respective services is that they both fall under the broad category of entertainment services, and such general point of similarity is not enough to support a finding that the parties’ specific services are related. Therefore, because Dre could offer no evidence as to how musical composition, musical production, and educational motivational speaking services are related, the fact that the services fall within the general category of entertainment is insufficient to show relatedness.

Also, critical for the TTAB’s conclusion was the conditions of sale of the products and services in connection with the marks. Because Drai’s typical fee for a speaking engagement is $5,000 and he charges between $1,000 and $5,000 for medical services, the TTAB found that the consumers of Drai’s services would exercise a high degree of care, such that they would not mistakenly confuse his services with those of Dre.

Thus, although the similarity of the marks and the strength of the “DR. DRE” mark favor Dre, those factors are outweighed by the differences in the goods and services provided under the marks, and there is no likelihood of confusion.

False Suggestion of Connection

Dre also argued that Drai’s proposed marks falsely suggested a connection with the well-known DJ. While acknowledging that “DR. DRE” is associated with and refers uniquely and unmistakably to the musician, the TTAB concluded that Drai was not attempting to appropriate Dre’s fame or reputation such that purchasers would mistakenly presume a commercial connection exists between the two.

Examining whether consumers of the “DR. DRAI” marks would think only of the well-known Dr. Dre name, the TTAB questioned whether Dre’s reputation as a musician and producer is of such a nature that when the “DR. DRAI” marks are used, consumers will understand them to refer to Dre. The TTAB accepted Drai’s argument that it is not likely consumers would recognize the proposed marks as referring to Dre because he is not a medical doctor nor is he qualified to provide any type of medical services or sell products specifically in the medical or healthcare industry. As a result, there was no evidence to establish that Dre’s reputation in the recording and entertainment industry is of such a nature that a connection with Drai’s educational and motivational speaking services or his medical and healthcare products and services would be presumed.

In concluding its analysis and rejecting Dre’s claims, the TTAB also noted that it was apparent that there was no actual intent by Drai to trade on the goodwill generated by Dre’s name. The proposed marks were filed by Drai because, simply, that is his name. More importantly, as the medical professional testified, Dre is known, in part, for misogynistic and homophobic lyrics; as an OB-GYN and member of the LGBT community, an association with Dre would reflect poorly on Drai as a doctor. Indeed, Drai testified that, as someone who actually went to medical school, he was appalled that Dre would think that he wanted to be like him.