IP Law Daily Applications’ restriction to goods associated with entertainer will.i.am did not dispel confusion
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Tuesday, August 8, 2017

Applications’ restriction to goods associated with entertainer will.i.am did not dispel confusion

By Thomas Long, J.D.

A company founded by Black Eyed Peas front man William Adams—known popularly as "will.i.am"—has failed to persuade the U.S. Court of Appeals for the Federal Circuit that the Trademark Trial and Appeal Board had erred in determining that the mark I AM, as used in connection with cosmetics, sunglasses, jewelry, and other goods, was likely to be confused with previously registered and similar marks for the same or similar goods. The court upheld three Board decisions affirming the USPTO’s rejection of the company’s applications to register the I AM mark. The marks at issue were legally identical, and the goods, trade channels, and classes of consumers were closely related. A purported restriction on the goods covered by the applied for marks—stating that the goods were "associated with" Adams—did not meaningfully limit the marks in a way that would eliminated the likelihood of confusion, according to the court (In re i.am.symbolic, llc, August 8, 2017, Lourie, A.).

Appellant i.am.symbolic, llc ("Symbolic") applied to register the mark I AM in standard characters for goods in International Classes 3, 9, and 14. The examining attorney refused registration due to a likelihood of confusion with a previously registered stylized "I AM" mark, which had been registered for "sunglasses" in class 9, as well as stylized and standard character "I AM" marks that had been registered for various jewelry items in class 14.

Restriction on goods. In response to an initial refusal by the examining attorney, Symbolic amended the applications to include with the identification of goods the statement "associated with William Adams, professionally known as ‘will.i.am.’" However, in the Board’s view, this restriction did not meaningfully limit the goods in any way, especially with respect to trade channels or classes of consumers. The language of the restriction, according to the Board, was "precatory language"—that is, expressing a wish or request—and not binding on consumers when they viewed the applicant’s mark.

The Federal Circuit agreed with the USPTO that the Board did not err in determining that the will.i.am restriction did not impose a meaningful limitation for purposes of a likelihood of confusion analysis. In this case, the cited registrations did not contain an express limitation, and the will.i.am restriction did not distinguish the applicant’s I AM mark sufficiently from the registered I AM marks to overcome the likelihood of confusion. Examples of the registrant’s mark use supplied by the applicant did not reflect any actual limitation in the registrations.

The court rejected Symbolic’s argument that the will.i.am restriction affected the meaning and commercial impression of the mark. The Board found that Adams was the well-known front man for the musical group The Black Eyed Peas and was known as will.i.am. However, in the Board’s view, the record did not establish that Adams was widely known as "i.am" or that "i.am" was used interchangeably with "will.i.am" to refer to Adams. The court affirmed the Board’s findings, holding that the Board correctly determined that the similarity of the registered and applied-for marks weighed heavily in favor of a likelihood of confusion determination. There was no dispute that the marks were legally identical in appearance, pronunciation, meaning, and overall commercial impression. There was no indication from the language of the restriction of goods that Adams would be named or otherwise identified in the promotion of the products. The likelihood of confusion had to be determined by comparing the relevant marks, and whether the applied-for mark would be used along with another mark, "will.i.am," was not controlling. The Board’s finding that Adams was not known by I AM or i.am was supported by substantial evidence, the court said.

Nor did the purported limitation affect the analysis of the similarity of the goods, trade channels, and purchaser care. The applicant argued that consumers would purchase the relevant goods because they were associated with Adams; however, in the court’s view, the restriction did not alter the intrinsic nature of the goods or trade channels. The Board had substantial evidence from which to conclude that the goods were identical or closely related, the trade channels were identical, and the classes of purchasers overlapped.

Other registered I AM marks. Symbolic argued that the Board had erroneously failed to consider the number and nature of similar marks in use on similar goods; the length of time during and conditions under which there had been concurrent use without evidence of actual confusion; and the extent of potential confusion. According to Symbolic, the Board was obligated to consider third-party use and the peaceful coexistence on the Registers and in the marketplace of a prior registration held by Symbolic (for clothing) with the registrants’ marks for at least 10 years. The court disagreed. Symbolic did not provide evidence that the existence of the I AM registration for clothing made the registered marks weak with respect to the goods named in the current applications. The evidence of third-party use fell short of the "ubiquitous" or "considerable" use found to exist in cases cited by Symbolic in support of its argument.

Likelihood of reverse confusion. Finally, Symbolic argued that the Board had found a likelihood of reverse confusion that was not supported by substantial evidence. The term "reverse confusion" refers to a situation in which a significantly larger or prominent party adopts a mark that that is confusingly similar to that of a smaller, senior registrant for related goods or services. The Board did not find a likelihood of reverse confusion, the court said. The Board determined that the DuPont factor of "fame of the prior mark" was neutral, and it explained that the "purported lack of fame" of the registrants’ marks was of "little consequence." The Board did not make findings regarding the fame of Adams and Symbolic’s I AM mark. A footnote in the Board’s decision merely explained that, to the extent the Board agreed with Symbolic that Adams or the mark were famous, such a finding would not support registration of the mark, in light of the likelihood of confusion with the prior marks.

The case is Nos. 2016-1507, 2016-1508, and 2016-1509.

Attorneys: Jill Maria Pietrini (Sheppard Mullin Richter & Hampton LLP) for i.am.symbolic, llc. Christina Hieber for the USPTO.

Companies: i.am.symbolic, llc

MainStory: TopStory Trademark FedCirNews

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