Amicus Curiae
By Elena Liliosa Q. Escober
Pronounced a certain way, Doctor Drai does not seem too different from Dr. Dre. However, trademark laws see (or hear) otherwise.
In the case of Andre Young v. Draion M. Burch, DO, gynecologist Dr. Draion M. Burch sought to register the “Doctor Drai” mark for obstetric and gynecology services, among other things. Upon learning of this application, musician Andre Romelle Young, a.k.a. “Dr. Dre” of N.W.A. and Beats-manufacturing fame, opposed the application, arguing that Burch’s mark would confuse consumers and falsely suggest a connection with Dr. Dre’s “Dr. Dre” mark.
The US Patent and Trademarks Office (USPTO) found that while there were indeed similarities between the two marks, the corresponding services associated with the “Doctor Drai” and “Dr. Dre” marks were widely different: “Dr. Dre” is used in musical sound recordings, while “Doctor Drai” is used in “motivational speaking services in the field of osteopathic medicine, obstetrics and gynecology.” Moreover, the USPTO found that Burch did not intend to profit from Dr. Dre, having applied for the registration because “Doctor Drai” is his name and is used in all his books and speaking engagements on women’s and transgender’s health topics. The USPTO further cited that Burch would never want to be associated with Dr. Dre, because, according to Burch, “being an OB-GYN, I cannot be associated with anyone that has any kind of misogynistic speech because it’s a bad reflection on me as a doctor.”
So why so much fuss over a name? In this case, names were used as trademarks. Trademarks are words, phrases, or symbols used to identify the source of goods and/or distinguish them from others. A trademark, once registered, is afforded protection under the law, and grants trademark owners the right to exclude others from using the same or identically similar marks on the same or similar products or services.
In the US, celebrities secure the use of their names over goods and services by applying for trademark registration. In 2017, pop icon Kylie Minogue was involved in a legal tussle with Kim-Karsdashian-kin Kylie Jenner over the use of “Kylie.” This year, Beyoncé and her husband are involved in trademark proceedings over their application for trademark registration of their daughter Blue Ivy’s name.
This may very well provide an insight into Dr. Dre’s insistence in securing his name against that of Burch. In his opposition against the “Doctor Drai” mark, Dr. Dre argued that “consumers would consider the goods and services of Applicant as licensed products and services of Opposer since the names and likenesses of well-known persons frequently are licensed for use on various goods and services.” In a way, there was an attempt to prevent the Dr. Dre mark from being confused with an allegedly similar mark which, in turn, may cause Dr. Dre’s brand and persona to be associated with services outside his “representing all the gangstas all across the world” branding.
William McGeveran, who authored the article “Selfmarks” in the Houston Law Review, views the growing number of applications for trademark registrations of celebrity names and identity as an offshoot of the trend where celebrities’ reputations become the products themselves. Similar to product names protected by trademark registrations, the names of the celebrities “represent a particular source in the mind of the public, albeit one associated with a well-known persona instead of with more traditional goods or services.” To secure trademark registrations over celebrity names then, is to secure the reputation and branding of the celebrity against unauthorized use of the same for goods and services, which may consequently bring detriment to carefully curated personas.
Under the Intellectual Property Code of the Philippines, the name of a living person may be registered as a trademark only if the person consents to the same. Celebrities such as Sharon Cuneta, Manny Pacquiao, and Noli de Castro have secured trademark registrations over their brand. Compared to trademark registrations in other jurisdictions, Philippine celebrity trademark registrations, or “selfmarks,” are considerably scant.
The reluctance of celebrities to register their names or selfmarks may be attributable to several factors. In an interview with Vox, Madhavi Sunder, a professor at the Georgetown University Law Center, surmised that this reluctance may be grounded on the celebrity’s relationship with his or her fans. While some celebrities prefer complete control over their brand, other celebrities consider the fact that fans use celebrities’ names on merchandise, and would rather preserve fans’ adoration than turning them away by suing them.
However, those who do choose to register their names and brands as trademarks, while afforded privileges such as the right to exclude others in the use of the mark, are also required to be vigilant over its protection. The mark has to be used in commerce to maintain its registration, and recurrent registration requirements must be consistently and timely filed with the Intellectual Property Office, lest the trademark be removed from the Trademark Register for failure to submit the same. Most of the very few Philippine celebrity marks have been removed from the register for non-use. Further, whenever the registrant seeks to oppose an application for registration of a confusingly similar mark, the burden is on the registrant to prove such confusing similarity. Otherwise, as the Dr. Dre case has illustrated, the allegedly confusingly similar mark may be allowed for registration.
This article is for general information and educational purposes only.
Elena Liliosa Q. Escober is an Associate of the Intellectual Property Department of the Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALAW).
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