TTAB gives doctor positive diagnosis in Dr Dre dispute
US rap artist Dr Dre has failed in his opposition against two trademarks filed by a gynaecologist, with one lawyer suggesting an appeal would be unsuccessful too.
The Trademark Trial and Appeal Board (TTAB) delivered its decision on Thursday, May 3.
In 2015, Draion Burch, a gynaecologist based in the US, applied to the US Patent and Trademark Office to register ‘Dr. Drai’ as a word mark in international classes 41 and 44, covering educational and entertainment services related to healthcare.
He also filed to register a figurative mark featuring the words ‘Doctor Drai, OBGYN & Media Personality’ in international classes 9, 16, 41, and 44, covering educational material related to health.
Andre Young, better known by his stage name Dr Dre, opposed the applications on the basis that the applied-for marks could cause confusion with his own entertainment services.
Dr Dre owns numerous trademarks featuring the words ‘Dr. Dre’. His first marks was filed in 1997 in international classes including 9, 16, 25, and 41, covering music recordings, clothing, souvenirs, and entertainment services.
Confusion is likely due to Burch’s services being “offered in non-medical settings to the general public”, Dr Dre argued.
On Burch’s website, drdrai.com, the gynaecologist is described as the “go-to media expert on women’s health”. He has written books including “20 Things You May Not Know About The Vagina”.
Burch said there would be no likelihood of confusion as “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”.
The TTAB said “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 goods or services”.
It said there is no evidence to suggest that consumers would think the parties’ goods and services share the same origin.
Jonathan Steinsapir, partner at media and entertainment firm Kinsella, Weitzman, Iser, Kump & Aldisert, said he is surprised that Dr Dre “chose to have this fight in the TTAB, which is not the best forum for this”.
Steinsapir suggested that a better but more expensive option for the rapper would have been to sue Burch in a federal district court for trademark infringement. He explained that to claim trademark dilution and the violation of Dr Dre's right to publicity does not require proof of a likelihood of confusion.
To sue Burch in a district court would have increased the financial expense and risk for Burch, which would have increased the chances of Dr Dre obtaining a positive settlement, according to Steinsapir.
The TTAB said “it is apparent that the only thing these respective services have in common is that they both are identified as ‘entertainment services’”, which is not sufficient to support a finding of confusion. The board dismissed Dr Dre’s opposition to both trademarks.
Speaking to WIPR, Jon Schiffrin of Schiffrin & Longo, who represented Burch, said: “Trademark law doesn’t extend the rights of a music producer to affect the practice of a gynaecologist. If it did, we’d be getting dangerously close to trademark rights in gross, and that has never been deemed acceptable.”
He added: “The judges on the board are trademark experts. I knew they would take a thorough look at the issues and make the correct determination.”
Steinsapir explained that Dr Dre could appeal against the TTAB’s decision but the US Court of Appeals for the Federal Circuit would be limited to reviewing the TTAB’s decision, rather than assessing any new claims or evidence, and an appeal is therefore unlikely to be successful.
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