Monday, May 07, 2018

TTAB Dismisses Rapper DR. DRE's Opposition to DR. DRAI for Health-Related Services

The Board dismissed this opposition to registration of the mark DR. DRAI, in standard character form, and the word + design mark shown immediately below, for educational, entertainment, and consulting services, and audio books and electronic publications, in the field of women's and men's health. Opposer Andre Young claimed a likelihood of confusion with his registered mark DR. DRE for musical sound recordings and entertainment services, as well as false association under Section 2(a). Although the Board found the marks to be more similar than dissimilar, Opposer failed to provide any evidence that the goods/services are related, and failed to prove that consumers would presume a connection between applicant's goods and services and Dr. Dre. Andre Young v. Draion M. Burch DO, Oppositions Nos. 91224580 and 91226572 (May 3, 2018) [not precedential]. (Opinion by Judge Cheryl S. Goodman).

Evidentiary issues: The Board first dealt with a number of evidentiary issues. For example, it overruled a hearsay objection to certain publication on the ground that they were more than twenty years old and therefore fell within the exception of FRE 803(16). The Board took judicial notice of certain definitions from the Merriam-Webster Online Dictionary, but refused to do so for excerpts from Wikipedia and the Urban Dictionary because those websites have no counterpart print editions and are collaborative sources.

Likelihood of Confusion: Although the marks DR. DRE and DR. DRAI differ in spelling, they are "phonetic equivalents and are capable of being pronounced so as to sound similar," and both have the connotation of a name. As to applicant's word + design mark, DOCTOR DREI is the dominant portion portion and, like DR. DREI, is the phonetic equivalent of DR. DRE and has the same connotation.

Dr. Dre

Turning to the fifth du Pont factor, the strength of opposer's mark, the Board found DR. DRE to be inherently distinctive, but as to commercial strength there was no evidence of sales or advertising expenditures by opposer. Much of opposer's evidence was hearsay, but the record did show significant public exposure of DR. DRE as a result of widespread media attention. The Board found that the DR. DRE mark "has achieved a degree of renown in the music field and is strong."

There was no evidence of significant third-party use of Dr./Doctor marks, Dre marks, or Dr. Dre marks in opposer's field that would weaken the DR. DRE mark vis-a-vis its scope of protection. DR. DRE is a strong mark, but its strength does not reach the level "fame" for Section 2(d) purposes.

Turning to the goods and services, Opposer feebly argued that applicant's services are related to those of opposer due to the entertainment nature of both. The Board, however, found no evidence that the involved services are related. Opposer asserted that because well-known persons often license use of their names for various goods and services, consumers would consider applicant's services as being licensed by opposer. But there was no evidence that opposer has done any licensing, nor that applicant's goods and services are of a type for which owners of merchandising marks would license their marks.

The Board accorded very little weight to the fact that both applicant and opposer offer their services through the same channels of trade: television, radio, and social media. The Board noted that, although applicant's and opposer's services are costly, their sound recordings, audio books, and electronic publication may be purchased with less care, a factor that favored opposer.

Weighing the relevant du Pont factors, the Board concluded that there is no likelihood of confusion, and so it dismissed opposer's Section 2(d) claim.

False Suggestion of a Connection: The Board found that "Dr. Dre" is a name or identity of opposer and that applicant's marks are a close approximation of "Dr. Dre." It also found that "Dr. Dre" has come to be associated with and refers uniquely to opposer. There was no actual connection between applicant and opposer such that applicant would be entitled to use its marks. Opposer established that the name "Dr. Dre" is well-known. The question, then, was this:

whether consumers of Applicant’s motivational and educational speaking services or goods and services relating to the subject areas of osteopathic medicine, obstetrics and gynecology, and men’s and women’s health would think only of the well-known Dr. Dre name when the marks DR. DRAI and [the logo mark] are used on or in connection therewith. We do not require proof that the name Dr. Dre is famous in the health or medical field or even that he offers goods or services in these fields. *** Rather, the question is whether Opposer’s reputation as a musician and producer is of such a nature that when Applicant’s DR. DRAI marks are used in connection with its applied-for goods and service consumers will understand the mark to refer to Dr. Dre.

The Board again pointed out there was no evidence that opposer has done any licensing, nor any evidence that it is commonplace for celebrities to sell or license the goods or services of the type provided by applicant. In short, there was no evidence that, due to opposer's reputation in the music industry, consumers would presume a connection with Applicant’s educational and motivational speaking services or its medical and health care products and services when applicant's DR. DRAI marks are used on such goods and services.

Finally, there was no evidence that applicant intended to trade on the goodwill associated with opposer's name. Applicant's principal testified that "Dr. Drai" is his nickname and that he would not want to be associated with Dr. Dre because "it's a bad reflection on me as a doctor."

And so the Board dismissed opposer's Section 2(a) claim.

Read comments and post your comment here.

TTABlog comment: How would you pronounce Dr. Drai?

Text Copyright John L. Welch 2018.


At 10:49 AM, Anonymous Anonymous said...

I can see how the Board got to this outcome, given what was in front of them, but it seems wrong---definitely feels like the applicant is trying to take advantage of the goodwill in the DR DRE name.

At 3:32 PM, Anonymous Anonymous said...

Wow. 49 Page opinion. Blah blah blah.

I think they got it wrong or Opposer's evidence maybe did not convince the Board of the fame of Dr. Dre? Or Board not into hip-hop? He is arguably hip-hop's greatest producer?

I think the page limit on "briefs" should be reduced.

At 12:33 PM, Anonymous Anonymous said...

It is questionable as to why Dr. Dre “elected not to pursue the dilution claim.” Regardless if he did, Dr. Dre would likely not have won with a dilution by blurring claim. Such a claim requires that the mark is famous and that it satisfy 15 USC §1125(c)(b)(i)-(vi). Dr. Dre probably could have provided evidence sufficient to prove that his mark is famous. While he is a rapper and music producer, he founded Beats Electronics, which sells the famous “Beats by Dr. Dre” headphones. Apple acquired Beats Electronics and continues to use “Beats by Dr. Dre” for the indicia of its products. This has taken Dr. Dre’s name beyond the music industry, into technology and Apple consumers. Most, even all, consumers in the U.S. know the Apple corporation and have been further exposed to Dr. Dre’s mark after the acquisition. Dr. Dre’s mark is thus famous throughout the U.S.
As for the six statutory factors of dilution by blurring, Dr. Dre probably could have satisfied four and had trouble satisfying two. The TTAB found that Dr. Dre’s mark was inherently distinctive and that his mark and Dr. Drai’s mark were more similar than dissimilar, satisfying the first two factors. Additionally, though Apple acquired Beats Electronics, Dr. Dre still is part of the subsidiary. He would need further evidence showing that he engages in substantially exclusive use in the mark for proving the third factor. Furthermore, Dr. Dre could prove the degree of recognition of Dr. Dre’s mark through other evidence, such as surveys. The surveys would probably support this fourth factor for the reasons stated earlier regarding the nationwide scope and expansion of Dr. Dre’s mark through the acquisition into the Apple corporation. However, Dr. Dre probably would have issues showing that Dr. Drai intended to create an association of the famous mark and actual association. First, Dr. Drai said that any association with Dr. Dre would be a “bad reflection on [him] as a doctor”. Second, the TTAB found there was “no evidence to establish that Opposer’s reputation in the recording or entertainment industry is of such a nature that a connection (sponsorship, approval, support or the like) with Applicant’s [services] would be presumed when Applicant’s DR. DRAI marks are used on such goods and services”.
Without evidence of Dr. Drai’s intention to create an association between the marks and evidence of actual association of the marks, Dr. Dre could not win on a dilution claim. The lack of evidence contributed to the dismissal of Dr. Dre’s opposition and the same would probably happen with a dilution by blurring claim. Yet, it is interesting that Dr. Dre waived that claim.

At 12:54 PM, Blogger Unknown said...

Any idea why Dre dropped the dilution claim?

At 9:38 PM, Anonymous Nik said...

This decision appears to have gone viral, which tells you a good amount in regard to Dr. Dre's fame. In terms of likelihood of confusion, I do not think that the relevant consumer will be confused by the two individuals and who provides what service or good. However, I wonder if the widespread publication of this decision may in fact create some confusion between the two parties, ironically, as a result of it being picked up by various medias and the publicity that Dr. Drai will receive as a result.

I think where there is potentially some overlap is that I see both individuals as entertainers as Dr. Dre argues. Dr. Drai appears to be attempting to emulate a Dr. Oz or Dr. Phil type persona in the OB/GYN field. The TTAB, however, does not find this point of similarity to be enough to support a finding that the parties' specific services are related. I disagree with this to an extent. A quick Google search of Dr. Drai's advertising and published works show that the two individuals may have more in common than the TTAB appears to find. Further social media searching indicates a clear and aggressive use of the name Dr. Drai, which to me may indicate that the intent is to capitalize off the already established goodwill of the Dr. Dre name (regardless of Dr. Drai's testimony that he does not want to be associated with the Dr. Dre name).

Dr. Dre, as another commentator has noted, is one of hip-hop's most well-known and greatest producers of all time. His work in the industry has led him to enter multiple industries such as the headphone industry. I think the Board may not have fully recognized the strength and fame of his name and image.

At 1:51 PM, Anonymous Anonymous said...

The Opinion notwithstanding, if Opposer could not stop Applicant from using the mark (which I think is the case here), should he be able to stop him from registering?

At 4:29 PM, Blogger Stephanie Berland said...

The Andre Young v. Draion M. Burch DO aka the Dr. Dre v. Dr. Drai TTAB decision is a very interesting one. The Board dismissed the oppositions on the ground that there would be no likelihood of confusion and no false association with Dr. Dre despite the fact that the TTAB found that Dr. Dre’s mark is both strong mark and well known.
In terms of likelihood of confusion, the Board seemed to rely on the idea that the strength of the Dr. Dre mark did “not reach the level of playing ‘a “dominant” role in the process of balancing the du Pont factors” regardless of the fact that Board found that the Dr. Dre and Dr. Drai marks were similar enough to “weigh in favor” of finding a likelihood of confusion between the two marks given that they are pronounced the same way, the difference in spelling being insufficient to “distinguish the marks.” The Board cites that the Opposer failed to provide evidence of expenditure for advertising of musical sound recordings, for which the Opposer is registered in International Class 41. This is clearly a mistake on Dr. Dre’s legal team. Anyone who knows anything about music understands that hundreds of thousands of dollars, if not more, has certainly gone into the advertising of Dr. Dre’s musical works. The Board decided that although the Dr. Dre mark did not seem to have enough “fame” generally, it had enough renown in the music field to be strong. However, the Board mostly made their decision on the basis of the difference of the goods and services being offered by the Applicant and the Opposer. Again, it appears that the Dr. Dre legal team failed to show that there could be any sort of cross over between Dr. Dre’s “entertainment services” and those of Dr. Drai. Because Dr. Drai’s application narrowed his entertainment services to motivational speaking specifically regarding medical issues, there was not enough evidence to show that consumers would confuse the products. That being said, the Board also points out another fault of the Dr. Dre legal team by noting that Opposer did not show evidence that he had licensed the name Dr. Dre for goods and services not related to those for which he had registered his mark. Dr. Dre has created a line of speakers and headphones and has endorsed several products such as Dr. Pepper, Chrysler, Coors Light and St. Ides (the manufacturer of Pabst Blue Ribbon beer). The Board finds that the consumers of both Dr. Dre’s and Dr. Drai’s goods are those that are not necessarily sophisticated and may be quickly purchasing an .MP3 file, yet finds this factor neutral in the analysis of the du Pont factors. In the end the Board determined that the difference between the goods and services of the two parties outweighed any potential confusion between consumers.

At 4:30 PM, Blogger Stephanie Berland said...

(continuation of previous comment)
Despite the Board’s decision regarding likelihood of confusion, part VII “False Suggestion of a Connection” of the decision is the most interesting part of the decision, and the easiest part to disagree with. Section 2(a) of the Lanham Act, as referenced in the decision, “prohibits registration of ‘matter which may . . . falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols.’” The Board analyzed four elements: “Whether Applicant’s mark (or part of it) is the same as or a close approximation of Opposer’s previously used name or identity”, “Whether Applicant’s mark or part of it points uniquely and unmistakably to Opposer”, Whether Opposer is connected with Applicant’s activities performed under its marks DR. DRAI and [Dr. Drai’s design mark]”, and “Whether the fame or reputation of Dr. Dre is such that a connection with Opposer would be presumed.” For each one of these elements, the TTAB found in favor of the Opposer. The Board found that Dr. Drai is a “close approximation” to Dr Dre (they are both pronounced the same way, despite the different phonetic spellings), that the mark “Dr. Dre” undoubtedly refers to the Opposer, that the Opposer has no connection with Dr. Drai’s goods and services, and that the “Dr. Dre” mark is well-known. Yet, the Board still finds that there is no potential for consumers to falsely believe that Dr. Drai’s products are somehow connected to Dr. Dre.
Additionally, the Board’s decision that there is no evidence that Dr. Drai uses and registered the mark in an attempt to “trade on the goodwill generated by Opposer’s name” fails to take into account the fame of the “Dr. Dre” mark. Regardless of whether or not Dr. Drai, the person, would “want” to be associated with Dr. Dre, the person, Dr. Drai, knowing that his name is pronounced the same way as the “famous” Dr. Dre continued to use Dr. Drai as his mark despite the typical use of a last name in association with the title of Doctor.
The Board, in this section, separates educational and motivational speaking and medical goods and services provided by Dr. Drai, claiming that there is no evidence to indicate that there would be any kind of misunderstanding of the source of Dr. Drai’s products. It is not beyond the scope of possibility that Dr. Dre may move into the space of educational or motivational speaking – providing “master classes” in music production or even motivational speaking about “making your dreams come true.” While there is obviously a fault of Dr. Dre’s legal team to make this clear, the Board fails to fully grasp the fame of the “Dr. Dre” mark and the likelihood that, upon hearing an ad for “Dr. Drai’s motivational speaking,” may believe that the product is endorsed by Dr. Dre (based on the same pronunciations of both names). These things together lead me to believe that the Board’s decision that, despite the “fame” of the Dr. Dre mark there would be no connection in the minds of the general public between the two parties and the services provided, is a mistaken one.


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