Rapper Dr. Dre and the company he co-founded, Beats Electronics, LLC, are on the offensive at the US Trademark Trial and Appeal Board challenging a multitude of third-party applications for marks which consist of or contain the word “Beat”. The company owns a number of trademark registrations for use of its various BEATS marks on headphones, speakers, headsets, and other related electronic products and has applications pending for future use on clothing and other items. As reported in the WSJ Law Blog last week, the targets of this campaign are mix of smaller, little-known companies as well as big players such as Sony.

The company claims a “likelihood of confusion” between its alleged rights in its various BEATS marks and the various “BEAT” marks applied for by third parties. It also claims for “dilution” of its rights by the proposed uses of these various marks. The goods and which are the subject of some of the opposed applications include clothing, software, electronic greeting cards, music production services, audio and video recordings, digital music, CDs, DVDs, electronic greeting cards, and the like.

In a “likely confusion” analysis, the issue is whether consumers are likely to confuse the source of the goods and/or services provided by two different parties under particular marks, assuming them to come from the same source even if that source is unknown. Factors that are used in such an analysis to come to a conclusion include the civil similarity of the trade marks, the similarity of the goods and’s/or services provided under each, the similarity of the target customers, as well as the similarity of marketing methods and venues and channels of trade for the respective product/services, the notoriety of fame of the respective marks, the strength and uniqueness of the marks, whether any actual confusion has occurred, and such other factors as may be relevant the particular situation. Determination of this issue can be very fact specific and is decided on a case-by-case basis. Sony, for example, has applied to register the mark “BEATS” for computer games, toy figures, and online gaming services, none of which are incorporated in any of the registrations or applications owned by Beats Electronics.  Does that mean that Dr. Dre’s company may be overreaching a bit in arguing confusing similarity with Sony’s products? Since the parties are currently engaged in ongoing discovery in the pending administrative litigation, the answer to that question may not be available for some time. Whatever the answer, the company’s strategy may be successful if some of the smaller companies simply back off rather than face expensive administrative litigation against a well-funded company, regardless of the merits of the “likely confusion” claims.

The second claim asserted by Dr.  Dre’s company is a dilution claim. Although noted in the papers filed at the TTAB, this claim is not expounded upon in the pleadings. For a dilution claim to succeed it is not necessary to prove competition, likely confusion, or any overlap in the goods and services between the parties issue. However, in order for a dilution claim to succeed, the proponent must own a “famous” and” distinctive” mark. In most cases, it takes a fairly lengthy amount of time, sales, marketing, and recognition to become a “famous” mark. We all know unquestionably famous marks when we see them, such as MICROSOFT, FACEBOOK, NIKE and COKE. Dr. Dre’s BEATS trademark has, according to its Trademark Office filings, only been in use for a little under five years on headphones and for less time than that on other of the products it sells. Whether the company can prove that in this short period of time its  ”BEATS” mark has become famous enough to successfully assert a claim for dilution remains to be seen.

Until such time as a definitive decision is issued by the TTAB or a civil court, Dr. Dre’s “BEATS” challenges, presumably, will go on.