How similar is too similar when filing for a trademark?

Written by Cassidy Patnoe, Law Clerk, Gleam Law PLLC.

How closely does an entity need to guard its name and image? While “a rose by any other name would smell as sweet,” it is easy to see the confusion that could stem from two different flowers with the same, or even a similar, name.

Should someone worry when they see a business applying for a trademark similar to their own? How close is too close? The US Patent & Trademark Office addressed this recently in a conflict between a gynecologist and a rapper.

In 2015, Dr. Draion M Burch applied to trademark the name “Dr. Drai.” Dr. Burch, self-described as an “OBGYN and media personality,” gives seminars and has authored books such as “20 Things You May Not Know About the Vagina” and “20 Things You May Not Know About the Penis.” When Dr. Burch applied for a trademark for the name Dr. Drai, he caught the attention of a well-known performer that also trades on his name and reputation: Andre Romelle Young, also known as Dr. Dre.

Dr. Dre was concerned because the trademark Dr. Drai applied for is so similar to both the eye and ear. Additionally, as a media personality, seller of audiobooks, and giver of seminars, Dr. Dre worried that Dr. Drai could cause confusion among consumers about which Dr. performer might be on stage at a given event. Dr. Dre argued that the names were simply too similar to allow the competing OBGYN’s trademark.

Dr. Drai, unsurprisingly, disagreed. He argued that Dr. Dre is not a medical doctor and thus was not qualified to sell services in the medical or healthcare field and people would not look to him for such services. Confusion, he contended, was unlikely given the subject matter broached by each personality. Dr. Drai further argued that Dr. Dre’s lyrics and personality were substantially different in both scope and meaning from his, going as far as to claim that association with Dr. Dre would be “a bad reflection on me as a doctor.” The trademark office agreed and dismissed Dr. Dre’s case. The trademark office acknowledged the similarity of the names, but ultimately found that Dr. Dre had failed to show that people would be misled by that similarity.

A recognizable trademark is undoubtedly an important component of standing out in a crowded market. Proper application and careful protection of copyright assets is key for many businesses, but the process can be complex. Gleam Law offers comprehensive assistance in applying for, and fighting for your trademark rights and protecting the trademarks of our clients. With more than 400 successful trademarks and patents filed, Gleam Law is confident we can help you protect your Intellectual Property.