Choosing a trademark may be more difficult than you think. You might be focusing on the catchiness of the name, but there are legal considerations that should be considered as well, such as the possibility of infringing some other trademark.
People often think that if they aren’t aware of anyone else using the same trademark, it’s okay. They may rely on a quick search of the US Patent and Trademark Office database for the exact mark.
One problem with relying on a search like this is that a mark is protected by trademark law whether or not it is registered. In addition, a trademark does not need to be identical to another mark in order to be found infringing.
The test for infringement is whether the marks are confusingly similar. This is determined not just by comparing the marks themselves, but by reviewing various other factors, including the types of goods or services and the channels of sale.
The Trademark Trial and Appeal Board (TTAB) recently found that the mark DR. DRAI is not confusingly similar to DR. DRE.
Andre Young, whose stage name is “Dr. Dre,” is a hip hop artist, producer, actor and entrepreneur, well known for not only for his music, but for his “Beats” brand headphones, and the “Straight Outta Compton” biopic.
Dr. Draion Burch, who goes by “Dr. Drai,” is an obstetrician/gynecologist who offers advice through a video series, serves as a motivational speaker, and is the author of not only “20 Things You May Not Know About the Vagina,” but also of “20 Things You May Not Know About the Penis.”
In 2015, Dr. Burch applied to register the mark DR. DRAI for use in connection with “educational and entertainment services, namely providing motivational speaking services in the field of osteopathic medicine, obstetrics and gynecology provided by a doctor,” health care consulting and education services, and products including books, audiobooks, webinars, podcasts and other media featuring men’s health and women’s health topics.
Dr. Dre opposed the registration of the DR. DRAI mark, arguing that it was confusingly similar to his DR. DRE mark, registered in connection with musical sound recordings, posters, art print and stickers, clothing and “entertainment services by a musical artist and producer, namely musical composition and production of musical sound recordings.”
Dr. Dre claimed that consumers would be confused into believing that Dr. Drai’s services were connected with Dr. Dre’s due to the entertainment nature of both types of services, particularly in light of the fact that Dr. Drai’s services are offered in non-medical settings to the general public.
To this, Dr. Drai replied that that there was no likelihood of confusion 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.”
Acknowledging the similarity of the two marks, the TTAB ultimately ruled for Dr. Drai, based in large part on the lack of similarity between the goods and services offered by Dr. Dre and Dr. Drai. The TTAB found “no evidence of record” establishing that “consumers would likely believe the parties’ goods and services would emanate from the same source.”
Although Dr. Drai was the winner in this opposition proceeding, dealing with an opposition proceeding can be expensive and time consuming. Dr. Drai actually filed his trademark applications more than three years ago, and the opposition was filed in October 2015.
To help avoid problems like this when you choose a trademark for your product or service, you should have a thorough trademark search conducted, covering not only the US Patent & Trademark Office’s registrations, but other databases and the Internet.
It would also be prudent to check the Canadian and Mexican registrations, as well as those of other pertinent foreign jurisdictions, particularly if you use your mark online.
Please feel free to contact us if you have any questions about or need assistance with conducting a trademark search or protecting your trademarks.
