will.i.am fails in his attempt to use his fame as a way to differentiate I AM mark

United States of America

But for the notoriety of the applicant, will.i.am, the US Trademark Trial and Appeal Board (TTAB)’s three similar In re i.am.symbolic llc (Serial Nos 85044494, 85044495 and 85044496, October 7 2015) may not have been notable, However, the applicant’s attempt to use his fame as a way to differentiate his mark from the cited registrations proved novel, though ultimately unsuccessful.

William Adams, better known as will.i.am, is most well known as a member of The Black Eyed Peas, a hip hop group successful enough to headline the halftime performance of Super Bowl XLV. Beyond his affiliation with the group, Adams released solo albums and a new lifestyle brand under the marks WILL.I.AM and I AM. For the latter mark, Adams owns a registration in connection with clothing. To further protect his brand, Adams filed three one-class applications for I AM in connection with:

  • cosmetics, bubble baths, soaps, sunscreen and related items in Class 3;
  • handheld devices such as cell phones and cameras in Class 9; and
  • jewellery, watches and related items in Class 14.

Each application was refused registration by examiners due to a likelihood of confusion with pre-existing registrations for I AM. Adams appealed and argued that his personal fame and the effort he would put forth to promote his I AM brand would be enough to differentiate the registered marks from his own I AM brand. He argued that those familiar with his identity as will.i.am would know that the I AM brand is a natural extension of his WILL.I.AM and I AM marks, which had already been registered for music and clothing. Further, he argued that I AM encapsulated “the synthesis of his artistry, expression and activism”.

In addition to these arguments, and perhaps more interestingly to trademark lawyers, Adams sought to differentiate his applications for the registered marks by inserting into the application a statement regarding what he believed to be the likely connotation of his mark. The statement read “all [of the aforementioned goods] associated with William Adams, professionally known as will.i.am”, and was placed in the goods description where limitations are normally placed, such as those made to limit the channels of trade or class of purchasers. Limitations as to the channels of trade or class of purchasers can help overcome a likelihood of confusion refusal by making a clear differentiation between the nature of the goods at issue. Adams thought his “associated with” language would assist him as well, but the TTAB was not persuaded by the tactic.

The TTAB concluded:

We do not see the language as imposing a meaningful limitation on the applicant’s goods in any fashion… The language does not, in any meaningful way, alter the nature of the goods identified; nor does it represent that the goods will be marketed in any particular, limited way, through any particular, limited trade channels, or to any particular class of customers. It does not even represent that Adams will be named or otherwise identified in the promotion of the goods.”

Further, the TTAB wrote that consumers would not be necessarily aware of the assertion in the application made by Adams when encountering his I AM brand or the same brand of the registrant.

Further frustrating his argument, the TTAB noted that, even if the evidence pointed to fame acquired in the WILL.I.AM mark, Adams was unable to show that he was widely known as I AM or that I AM and WILL.I.AM were used interchangeably. Further still, even if Adams could show that he had acquired fame in I AM, the fact that he was a more famous user of a mark did not mean that registration was proper because the office has a duty to protect registrants with priority from situations where a junior user gains notoriety and causes a loss or diminution of a senior user’s rights, commonly referred to as reverse confusion.

Having dispensed with the applicant’s arguments as to fame and his “associated with” statement, the TTAB applied the traditional DuPont likelihood of confusion factors and, on balance of the factors, decided that the applicant’s mark was confusingly similar to the registrations and affirmed all three refusals.

Steve Abreu, Sunstein Kann Murphy & Timbers LLP, Boston

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