Dr Dre loses trade mark case
Dr Dre, a well-known music entrepreneur, has lost a trade mark dispute in the US that has concluded that the trade marks Dr Dre and Dr Drai are not confusingly similar. The decision highlights the importance of assessing the similarity of trade marks not only regarding trade marks as such, but also the use of trade marks.
On 7 April 2015, Draion M Burch DO, LLC, filed applications for the trade mark Dr Drai regarding goods and services relating to men’s and women’s health. While the applications related to the trade mark Dr Drai in word and a logo form, the US Patent and Trade mark Office (USPTO) found that the words Dr Drai formed the dominant element of the logo.
The Dr Drai trade marks were filed at the USPTO with the consent of Dr Draion Burch, a medical doctor specialising in obstetrics and gynaecology in the US. Dr Burch has also authored a number of books, made television and radio appearances and participated in speaking engagements all relating to women’s health and transgender health topics. The Dr Drai trade marks are a play on the doctor’s name – the abbreviation “Dr” refers to the professional title of Dr Burch and the word “Drai” refers to an abbreviated form of the doctor’s first name.
On 28 October 2015, Andre Young (stage name “Dr Dre”), the proprietor of a number of registered trade marks for Dr Dre regarding goods and services that mainly relate to music, opposed the registration of the Dr Drai trade marks on the basis of a likelihood of confusion with his Dr Dre trade marks; a false suggestion of a connection with himself; and a dilution of his trade marks (all grounds of opposition in terms of the US Trade mark Act of 1946). While Dr Dre subsequently abandoned his opposition on the basis of trade mark dilution, he pursued the opposition on the grounds of confusion with his prior registered trade marks and a false connection with himself.
On 3 May 2018, the opposition was dismissed largely due to the dissimilarity between the goods and services regarding which the Dr Dre trade marks are registered and used, and what Dr Dre is known for, and the goods and services regarding which registration of the Dr Drai trade marks are sought.
The USPTO evaluated the likelihood of confusion of the trade marks with reference to a number of factors set out in the case of In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). These factors are similar to those set out in the South African case of Plascon-Evans Paints Ltd v Van Riebeeck Paints (Pty) Ltd 1984 (3) SA 623 (A), in terms of which the comparison of trade marks must be made with reference to the sense, sound and appearance thereof; trade marks must be viewed as they would be encountered in the marketplace and against the background of relevant surrounding circumstances, to name a few considerations.
The similarity or dissimilarity of the proposed Dr Drai trade marks with the prior Dr Dre trade marks were analysed by the USPTO regarding “the marks in their entireties as to appearance, sound, connotation and commercial impression”. Similarly to in South Africa, the USPTO cited case law to indicate that the proper inquiry is not a side by side comparison of the marks, but instead whether the marks were 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. The USPTO found that the trade marks were similar in appearance and sound. As to connotation and commercial impression, the USPTO found that the trade marks were similar. The USPTO indicated further that the minor difference in the spelling of the word “Dre” and “Drai” was not sufficient to distinguish the trade marks, which were more similar than dissimilar.
The USPTO therefore found that a comparison of the trade marks regarding the sense, sound and appearance of the trade marks weighed in favour of a finding of a likelihood of confusion.
The USPTO’s inquiry in this regard was not whether purchasers would confuse the goods or services, but whether there was a likelihood of confusion as to the source of the goods or services. The USPTO compared the relatedness of the goods and services; the trade channels through which the goods or services are made available to the public; as well as the conditions of sale or offer thereof.
When considering the particular services in respect of which the Dr Dre trade marks were registered, namely entertainment services by a musical artist and producer, and the services in respect of which registration of the Dr Drai trade marks were sought, namely educational and entertainment services including the provision of motivational speaking services in the field of osteopathic medicine, obstetrics and gynaecology provided by a doctor, the USPTO held that it was apparent that the only thing the respective services had in common was the overarching category “entertainment services”. The USPTO was of the view that the evidence before it did not provide a context for entertainment services as a general market category, especially considering that Dr Burch’s entertainment and educational motivational speaking services were specifically limited in content to osteopathic medicine, obstetrics and gynaecology, which subject matter the USPTO found to be far removed from music. There was also no evidence before the USPTO that favoured a view that Dr Burch’s educational and motivational speaking services generally related to the music related services of Dr Dre.
The USPTO held that the mere fact that Dr Burch’s goods and some of his services could be offered in non-medical settings is insufficient to warrant a finding that the parties’ goods and services are related.
This case illustrates that it is unlikely that the USPTO will conclude a likelihood of confusion between trade marks which are used in relation to different goods and services. This is so even where a proposed trade mark bears a high similarity with a prior trade mark is found to be rather distinctive.
The USPTO’s approach to the comparison of trade marks illustrated in this case is similar to that in South Africa, and it is likely that a similar outcome would have been reached in South Africa.
This article was first published in Business Day.