Doctor! Doctor! My trade mark opposition has been dismissed!

A Doctor of Law, a Doctor of Rap Music and a Doctor of Medicine walk into a bar trade mark case... 

Dr Dre

This Kat had to study for her Dr title, unlike Andre Romelle Young who gave himself the stage name Dr Dre. The world- famous rapper and producer, recently failed to oppose the application of a trade mark filed by medical Doctor Draion M. Burch. Here's what happened:

Pop Rap Culture

Dr Dre, otherwise known by the US Patent and Trade Mark Office as a “hip hop cash king” (seriously), is considered to be the third wealthiest rapper in the world, with an estimated net worth of $740 million. He is known for hit songs such as No Diggity and I Need a Doctor; and is credited as a key figure in the elevation of a particular style of rap music called West Coast G-funk, which involes synthesizer-based music with slow, heavy beats. As well as those headphones all the cool kats are wearing; Beats by Dre (which he sold to Apple for $3bn).

The Marks

Dr Drai

Dr Dre has registered trade marks of (1) the standard characters “DR. DRE” (2) a “series of musical sound recordings” in International Class 96; “posters, art prints and stickers” in International Class 16; “clothing, namely, T-shirts, sweatshirts, caps” in International Class 25; and “entertainment services by a musical artist and producer, namely, musical composition and production of musical sound recordings” in International Class 41.7.

So, everything was going well for Dr Dre, until he came up against an actual Doctor of medicine; Draion M. Burch DO, LLC. Dr Drai, as so referred to by his family, professors, medical colleagues, and his patients, provides obstetrics and gynecological medical services, as well as, speaking services on women’s health and transgender health, authoring books, made television and radio appearances and online videos all relating to women’s health and transgender health topics. Dr Drai was trading under this name for 10 years and recently filed applications to register the following trade marks:

1: DR. DRAI (standard characters) in International Class 41 (educational and entertainment services) and International Class 44 health care consulting in the field of osteopathic medicine) and 2:

In International classes 41, 44, 9 (Audio books in the field of women’s health and men’s health); and 16 (Books, written articles, handouts and worksheets in the field of men’s health and women’s health).

Dr Dre opposed the registration on the grounds of:

1) likelihood of confusion [Trademark Act Section 2(d), 15 U.S.C. § 1052(d)]    

2) false suggestion of a connection [TMA S. 2(a), 15 U.S.C. § 1052(a)] and,

3) dilution [TMA S. 43(c), 15 U.S.C. § 1125(c)] (although this claim was not pursued).

Dr Dre was probably feeling confident, as he submitted in his evidence of his previous victories over similar marks, including marks: DIAMONDDRE, and Dre Spitz. But the first hurdle in the matter was to be the form of evidence submitted by both parties.

Evidence Issues

Both parties submitted evidence which included printouts of websites, such as pages purporting to show the notoriety, strength, and fame of Dr Dre and his trade marks, and Internet printouts from Amazon.com regarding Applicant’s principal Draion Burch’s book sales. This evidence is admissible [Trademark Rule 2.122(e)(2), 37 C.F.R. § 2.122(e)(2)]. 

However, the parties were reminded by the US Patent and Trade Mark Office that it only constitutes hearsay and may not be relied upon for the truth of the matters asserted unless a competent witness has testified to the truth of such matters [Fed. R. Evid. 801(c) and 803; Safer, Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1040 (TTAB 2010)]. But, Board goes on, where a party acknowledges as fact any portion of the evidence, those portions are submitted to the record as truth.

Furthermore, Dr asked the Board to apply the ‘hearsay exception’. This provides an exception for the hearsay rule where a “statement in a document that is at least 20 years old and whose authenticity is established” under the Federal Rule of Evidence 803(16). The Board agreed to apply the exception to the magazine and newspapers.

Just prepping my evidence...
Photo credit: Stuart Rankin

However, it declined to apply the exception in relation to printouts relating to Dr Dre’s awards lists, chart history, sales statistics. This was because Dr Dre had not shown that these Internet pages are generally used or relied upon by the public. In addition, Dr Dre had included printouts from Wikipedia, Genius.com, IMDB.com, biography.com and allmusic.com as “online reference works.” But the Board stated that it had not been shown that any online sources constituted a standard reference work or are were authoritative material. Previously, in re IP Carrier Consulting Grp., 84 USPQ2d 1028, 1032 (TTAB 2007) it had been determined that Wikipedia was unreliable due to its collaborative nature that “permits anyone to edit the entries.” So the Board determined the website printouts as hearsay.

From the Applicants side, the Board agreed to apply the exception to definitions (of “Thai,” “bonsai,” and “chai” – more on this later) from the Merriam‐Webster Online Dictionary. 

However, Dr Drai also requested the exception for the term “dre” as defined in urbandictionary.com. The Board noted that slang dictionaries can be appropriate only when they have a print edition, and since Urban Dictionary is a collaborative source, it is treated the same as Wikipedia, so they declined.

So, with half the evidence in-tow, we proceed with the claims against the DR DRAI marks; (2) likelihood of confusion and (2) false suggestion of connection.

Claim 1: Likelihood of Confusion

Similarity of Marks

The Board decided that the marks are similar in appearance in that both are two words with each mark having as the first word an identically pronounced abbreviation for doctor (Dr.), and the second word in each mark beginning with the letters dr. The Applicant attempted to claim that Drai might be pronounced “dry” as in “thai”, “chai”, or “bonsai” but the board decided that the words were phonetic equivalents and capable of being pronounced so as to sound similar, with consumers pronouncing the DRE/DRAI portion of each parties’ mark with a “long a” sound. [All those dictionary printouts for nothing!]

As such, the marks are similar as to sound, the words have the same pronunciation and connotation of a name and the Board weighed in favour of a finding of a likelihood of confusion.

Strength of Opposer’s Mark

To determine the conceptual strength of the mark the Board refer to one of my favourite lines which you might think comes from Gradians of the Galaxy, but really it’s from re Davia, 110 USPQ2d 1810, 1814 (TTAB 2014):

“We evaluate its intrinsic nature, that is, where it lies along the generic-descriptive-suggestive-arbitrary (or fanciful) continuum of words.”

Whilst market strength is the extent to which the relevant public recognises a mark as denoting a single source - “the degree of association in the mind of the consumer of the mark with the source of the goods or services based on the exclusivity (and sometimes renown) of the mark."

Dr Dre, evidently argued that his mark was entitled to a broad scope. Interestingly, Dr Drai argued that DR DRE is simply is a combination of “two common elements that are inherently weak.” [Pot kettle black?] In any event, the board found the mark to be inherently distinctive, since it is a personal name that is used in a manner that would be perceived by purchasers as identifying the services in addition to the person. Conceptional strength hurdle thus overcome.

To measure the market strength or fame of a mark, normally the board would consider factors such as volume of sales and advertising expenditures for the goods and services sold under the mark. However, partially due to the mishap with the printouts, Dr Dre didn’t provide any evidence as to this. But the Board don’t trouble themselves with that technicality, since Dr Dre is super famous, so must his mark be… the Board find that the significant exposure to the public, as the result of widespread unsolicited media attention, meant that the DR. DRE mark achieved a degree of renown in the music field and is strong.

Relatedness of Goods and Services and Channels of Trade

Reminding us of the threshold the Broad state that the goods and services do not have to be identical or even competitive in order to determine that there is a likelihood of confusion; rather, it is sufficient that the respective goods and services are related in some manner, or the conditions surrounding their marketing must be such that the goods and services will be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that they originate from the same source. [Coach Servs., 101 USPQ2d at 1722, (quoting 7-Eleven Inc. v. Wechler, 83 USPQ 1715, 1724 (TTAB 2007)); On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000)].

First, the Board finds that the goods and services offered by Applicant in both medical and non-medical settings are unrelated to Opposer’s entertainment services, musical sound recordings or musical composition and musical sound recording production services.

Then, considering the channels of trade, Dr Dre argued that both services are offered through television, radio shows and social media - his evidence included screen shots of Dr Drai’s Facebook page. Stating that this only demonstrates advertising on these channels, the Board decided that this factor is neutral…

However, the Board then note that the level of care exercised by consumers when purchasing musical sound recordings, audio books, electronic publications is low – and therefore confusion  more likely, overall deciding the du Pont factor as neutral.

Overall on the point of confusion, the Board decided that although the similarity of the marks and the strength of the mark favoured Dr Dre, these factors were outweighed by the differences in the goods and services.

Claim 2: False Suggestions of a Connection

As such, this decision came down to the question of whether Dr Dre’s reputation as a musician and producer is of such a nature that when the DR. DRAI marks are used in connection with its applied-for goods and services, consumers will understand the mark to refer to Dr Dre. 

The same. But Different.
Credit: Starleigh

Dr Dre argued (without any evidence submitted) that it is a common practice of celebrities to use their names in connection with a vast array of goods and services and that a connection would be presumed.

However, Dr Drai argued that “it is not likely that consumers will recognize Applicant’s Dr. Drai’s marks as referring to Dr. Dre because Dr. Dre 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.”

Furthermore, the Board found that there was no intent by Dr Drai to trade on the goodwill of Dr Dre, since he testified the that he would not want to be associated with the Dr. Dre name because:

“This guy is known for misogyny and homophobic things, saying - lyrics and stuff like that, which I didn’t know at the time. And being part of the LGBT community, that’s when I said, you know, ‘I cannot be associated with that.’ And being an OB-GYN, I cannot be associated with anyone that has any kind of misogynistic speech because it’s a bad reflection on me as a doctor.”

Therefore, although Dr Dre established that he and his name are of sufficient fame and reputation, he could not show that a connection would be presumed in the mind of the consuming public when the Applicant’s DR. DRAI marks are used in connection with its applied-for goods and services. The fourth element of the test was not met, so Dr Dre failed to prove that Dr Drai’s marks falsely suggest a connection with Opposer.

So, Dre might be a "cash-king" but his “mind-boggling misogyny” [and lack of evidence], lead to the dismissal of his opposition, on the likelihood of confusion and false suggestion of a connection grounds.

PS. The Guardian wrote an article about this case, missing just one minor technicality: “This article was updated on Thursday 10 May to clarify it was a dispute over a trademark, not copyright.”

PPS. - Doctor Doctor Jokes