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Trademark’s “likelihood of confusion” test not a bright line

Yes, there is a litmus test under federal law for assessing trademark infringement claims.

And, no, it does not provide for a certain outcome in every litigated matter.

That reality was firmly evidenced in a decision recently rendered by the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board in a case involving two doctors.

One of those doctors is likely familiar to many of our readers, being a famed icon and entrepreneur of the music world. Dr. Dre commenced the cited litigation by filing an opposition to a trademark registration and competing use of a name by a third party. He quite likely thought his case was a slam dunk and that he would easily prevail.

In fact, he lost. The board determined via the time-honored “likelihood of confusion” analysis it applied in the case that the claimed mark infringer was not liable for any wrongdoing and could continue to use his registered mark.

That individual is Dr. Draion M. Burch, a gynecologist. Burch seized upon the idea to register a mark for “Dr. Drai” a few years back, believing it would help promote his practice and brand him as a prominent practitioner. Burch reportedly never sought any link or association with the widely known Dr. Dre in any respect, noting that a perceived connection could actually harm his professional image.

Nonetheless, Dr. Dre acted. One media report of the litigation notes that, while the confusion standard is the barometer under American law for assessing trademark infringement claims, it is a subjective test that can lead to differing conclusions across the country. In Dr. Dre’s case, the tribunal was apparently influenced by the wide chasm between the musical industry and specialized medicine, as well as by the fact that the actual physician’s registration reflected his actual name.

The bottom line: no likelihood of confusion between the two marks in any reasonable consumer’s mind.

Again, every case will differ, especially given the multi-factor assessment that informs the confusion standard. Questions or concerns regarding trademark protection or infringement can be directed to a proven intellectual property attorney.

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