Intellectual Property

The Fog Of Confusion: 3 Things Not To Do When Assessing Likelihood Of Confusion

How did Dr. Drai, the gynecologist, beat Dr. Dre, the rapper, on this trademark claim? It all comes down to confusion.

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Dr. Dre

When it comes to trademarks, what you see is not always what you get.  In a greatly interconnected world (thank you, Internet), the potential reach of your brand has never been greater. That said, the ability to police those trademarks has never been more difficult.  From the use of trademarks within secondary-level domain names to addressing common law use on the web, the scope and reach of trademarks in an online world presents significant challenges.  Of course, assessing any likelihood of confusion underpins any such determination of infringement, but if approached incorrectly or haphazardly, the confusion may seem to rest with the trademark owner.

A recent skirmish between recording artist and entrepreneur Dr. Dre and a gynecologist from Pittsburgh, Pennsylvania, named Dr. Draion M. Burch help illustrate this point. Seeking to brand himself for speaking engagements and other healthcare consulting services (beyond his apparent branding as “America’s gynecologist”), Dr. Burch filed a federal trademark application for the phrase “Dr. Drai” in 2015.  Perhaps for the similarly in pronunciation, or perhaps for the play on words that appears directly correlated to similar pronunciation, Dr. Dre took exception to the trademark and filed an opposition to its registration.  After attempts at settlement, the parties litigated the opposition and, lo and behold, Dr. Dre lost.  Why?  It all comes down to confusion, so to speak.

In addressing trademark infringement, a trademark owner must prove that the offending trademark is likely to cause confusion in the marketplace.  This determination is made by applying a multi-factor analysis that varies depending upon the federal circuit. Notwithstanding the variation in these multifactor likelihood of consumer confusion tests, there is a commonality to many of the elements, such as the similarity of the marks, similarity of the goods and/or services between the marks and the market channels in which the mark is being used.  In applying many of these factors in this case, the USPTO Trademark Trial and Appeal Board was swayed by the differences in services (entertainment and educational services limited to “osteopathic medicine, obstetrics and gynecology” being “far removed from music”), as well as the fact that the applied-for trademark reflected the doctor’s actual name.  When combined with the fact that the applicant himself did not want to be associated with the well-known rapper and producer (as it would ostensibly hurt his own image in the medical profession), the TTAB found no likelihood of confusion.

Obviously, educated minds can question with the applicant’s motivations as well as the application of these factors, but the point is that likelihood of confusion is a very inexact “test.”  In sum, these factors are more akin to guidelines to apply to the facts presented in each case rather than hard-line factors.  So how can a company lift the confusion away from its brand when it sees potential threats to it (similar to Dr. Dre)?  Although there are a number of ways to approach the problem, addressing three things that a company should not do when presented with such circumstances is helpful and worth noting:

Don’t Ignore the Problem.  Trademark owners have a duty to protect their trademarks and overall brand in the marketplace under trademark law.  This includes not only traditional advertising uses, but must account for digital media and uses as well.  Ignoring the problem will not make it go away — for this reason, Dr. Dre took the appropriate action in policing his trademark by filing an opposition.  Although practitioners can disagree on the steps taken thereafter in litigating the matter, the point being made here is that action was taken in the first place.

Don’t Treat the Factors As a Bright-Line Test.  It is easy to get caught-up in the multi-factor test(s) and the application of the applicable factors to the facts at hand.  The problem is that the factors are really guidelines, and how a tribunal will weigh such factors is ultimately anyone’s guess.  For example, the similarity in sight and sound between marks may be a no-brainer, but whether this factor will be weighed more heavily as opposed to differences in markets or sophistication of consumers is never a given.  No matter how clear a factor may apply to the facts at hand, how that factor may be weighed in an overall determination of confusion is anything but certain.

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Don’t Take Anything for Granted.  This point is the most obvious but also the most ignored.   It is easy to get blinded by your perception of facts in a case and assume that likelihood of confusion factors will automatically weigh in your favor.  In practice, it is rarely so straightforward.  Worse, making such assumptions can lull you and your comany’s (or client’s) brand into a false sense of security when legitimate questions regarding the factors require uncomfortable analysis to get the answers. Approaching each potential case of confusion with fresh eyes is not only helpful, but indeed necessary.

Approaching likelihood of confusion from the perspective of what not to do may seem counterintuitive, but is a great lamp to cut through the fog of confusion that may (or may not) be occurring with your brand.  Although the likelihood of confusion analysis is rarely an easy one, being proactive and engaged in the analysis while maintaining a reasonable perspective is a great way to approach each situation with clarity and focus.  Doing so will help avoid getting caught up in the fog of confusion yourself — believe me, in the long run, your company (or client) will thank you for it.

Tom Kulik is an Intellectual Property & Information Technology Partner at the Dallas-based law firm of Scheef & Stone, LLP. In private practice for over 20 years, Tom is a sought-after technology lawyer who uses his industry experience as a former computer systems engineer to creatively counsel and help his clients navigate the complexities of law and technology in their business. News outlets reach out to Tom for his insight, and he has been quoted by national media organizations. Get in touch with Tom on Twitter (@LegalIntangibls) or Facebook (www.facebook.com/technologylawyer), or contact him directly at tom.kulik@solidcounsel.com.

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