On May 3rd, the Trademark Trial and Appeal Board (TTAB) issued a decision in a trademark opposition proceeding which was petitioned by Andre Young, the rapper and record producer better known as Dr. Dre. The rap mogul filed the trademark opposition to challenge the registration of federal trademarks filed by Draion Burch, an obstetrics and gynecology (OB/GYN) medical specialist who had filed applications to protect trademarks related to his nickname, Dr. Drai. The TTAB’s found that, although Dr. Dre’s name has sufficient fame for trademark protection, the opposer did not prove a likelihood of consumer confusion or false suggestion of a connection.
The opposition was filed to challenge two of Dr. Drai’s trademark registrations: a standard character mark covering “DR. DRAI” for use on motivational speaking services provided by a doctor in the OB/GYN field; and an illustration mark with the wording “DOCTOR DRAI OBGYN & MEDIA PERSONALITY” on audio books, written articles, non-downloadable webinars, online instruction and a website, all in the field of men’s and women’s health. Two separate opposition proceedings were filed and the TTAB consolidated both into one case in March 2016.
“What I think is most important is that, normally when someone’s name or trademark is considered famous, it may be likely that there would be a false connection with the famous person, for example, since it is likely they would license that famous name on goods or products,” said Andrea H. Evans, founder of The Law Firm of Andrea Hence Evans and counsel representing the OB/GYN Dr. Drai in this case. “This case is unique because my client’s services were in the medical industry, which requires credentials and education. The Board noted that Dr. Dre was well-known for musical production but we agree that it is not likely that he would license his name for medical services.”
The unique nature of Dr. Drai’s trademark registration led to a different outcome than a trademark applicant would typically see when using a mark that could be suggestive of a famous name, Evans noted. “One example would be if someone started using the word ‘Oprah’ on tennis shoes,” Evans said. “Even though Oprah doesn’t make shoes, there’s a strong likelihood of a false suggestion. This is really one of the first cases ever where someone challenged a mark for a false suggestion of a connection for services that required a certain amount of education, skills and credentials.” Although the TTAB did not mark its decision in this opposition proceeding as precedential in any way, Evans said that it could be precedent setting for trademark holders who are challenged on a mark in a field that requires credentials, like medical services or other professional fields.
Briefs provided to the TTAB by opposer Dr. Dre to support its trademark challenge included printouts from Internet websites including Wikipedia. Citing to a previous TTAB decision issued in 2007, the panel of administrative trademark judges in this case found that the Wikipedia sources wasn’t admissible as Wikipedia is a collaborative website permitting anyone to edit dictionary entries and thus had inherent issues of reliability. The TTAB similarly dismissed an urbandictionary reference submitted by applicant Dr. Drai, finding that while slang dictionaries with fixed printed forms and online forms are appropriate for judicial notice, urbandictionary was a collaborative source to be treated like the opposer’s Wikipedia reference.
There was no question about the famous nature of Dr. Dre’s name in this TTAB proceeding. Having read magazine and newspaper articles subject to an exception on the hearsay rule as the articles are 20 years old or more, the TTAB derived several facts: that Dr. Dre is considered “the single most important force behind L.A. hip-hop” who has discovered several rappers and launched record labels and that the first use of the Dr. Dre stage name was found in the solo rap album The Chronic, which achieved double platinum status by the end of 1993.
In its analysis on likelihood of consumer confusion, the TTAB noted that “Dr. Dre” and “Dr. Drai” both included the same beginning term and that both terms were phonetic equivalents as both “Dre” and “Drai” end with a long “a” sound. Although there were obvious differences between the marks, the similar pronunciation of both names and analysis of other du Pont factors weighed in favor of a finding that there was a reasonable likelihood of confusion and that Dr. Dre’s mark was strong because the mark had achieved a degree of renown in the music field. However, the TTAB concluded that there was no likelihood of confusion because the factors which make the marks similar were outweighed by the differences in goods and services.
In analyzing grounds of false suggestion of a connection with Dr. Dre, the TTAB panel found that the Dr. Drai mark was a close approximation of Dr. Dre’s identity and that the name Dr. Dre refers unmistakably to the opposer. However, although the opposer Dr. Dre argued that celebrities often use their names on a variety of goods and services, leading to a consumer’s presumption of connection to that celebrity, the TTAB found that it wasn’t likely that consumers would recognize Dr. Drai’s marks as referring to Dr. Dre as the latter is not a medical doctor nor was he qualified to offer medical services. Further, the trademark applicant’s testimony to the board indicated that there was no intent to trade on the goodwill of Dr. Dre’s name because “it’s a bad reflection on [him] as a doctor.”
“Dr. Drai the gynecologist is not interested in being associated with Dr. Dre the rapper,” Evans said. “He’s a doctor who helps women, especially those who are underprivileged, and cares about LGBTQ issues.” Evans noted that this flies in direct contrast to the Dr. Dre persona that has been shaped by the rap songs produced by the artist, which is a major factor why the two marks wouldn’t confuse a consumer even if both release audio recordings to the market. “My client is definitely a professional. He is not trying to put a beat behind his medical advice on any recordings or provide any services in the music industry that would be likely to cause confusion with any of the goods and services provided by Dr. Drai,” Evans said. “Even if he were to play music as background underneath tips on how to have a baby, people would still expect him to be Dr. Drai and not the music producer.”