Federal Circuit says Will.i.am not allowed to trademark I AM

By Gene Quinn
August 8, 2017

Will.i.am. CC SA 2.0.

William Adams is the well-known front man for the music group The Black Eyed Peas and is known as will.i.am. Adams’ company – i.am.symbolic, llc – already owns trademarks on WILL.I.AM for certain goods and services, and also the mark I AM (typed drawing) for clothing in class 25. The trademark examining attorney refused registration of the standard character trademark I AM on the ground of likelihood of confusion with existing registered trademarks. The Trademark Trial and Appeal Board affirmed. Because the TTAB did not err in its likelihood of confusion conclusion, earlier today the Federal Circuit affirmed in an opinion by Judge Lourie (joined by Chief Judge Prost and Judge Schall). See In re: i.am.symbolic, llc.

The examining attorney refused registration on the ground of likelihood of confusion with previously registered I AM marks pursuant to 15 U.S.C. § 1052(d) for the same or similar goods. As a result, the applications (in classes 3, 9 and 14) were amended during prosecution to include with the identification of goods the statement “associated with William Adams, professionally known as ‘will.i.am’.” The examining trademark attorney remained unconvinced and continued to refuse registration based on the likelihood of confusion.

The Board found that the record did not establish that Adams is “widely known by ‘i.am’ (as opposed to ‘will.i.am’), or that ‘i.am’ and ‘will.i.am’ are used interchangeably by either Mr. Adams or the public,” and rejected Symbolic’s arguments. Addressing the DuPont Factors relating to the likelihood of confusion, the Board found that the identity of the marks; the similarity or the identity of the goods; and the identity of the trade channels and purchasers, as well as the conditions of sale, favored a likelihood of confusion conclusion.

With respect to the so-called will.i.am restriction, the Federal Circuit agreed with the TTAB, explaining that Symbolic failed to show reversible error in the determination that the will.i.am restriction failed to impose a meaningful limitation in this case for purposes of likelihood of confusion analysis. More specifically, the Federal Circuit explained: “It is well established that the Board may not read limitations into an unrestricted registration or application.”

The Federal Circuit likewise agreed with the TTAB’s likelihood of confusion analysis under the first of the DuPont Factors, saying when analyzing the first factor that “the Board’s finding that Adams is not known by I AM or i.am is supported by substantial evidence.” Still further, the Federal Circuit agreed with the PTAB under the second, third and fourth DuPont Factors that “the goods are identical or related and the channels off trade are identical.” Again, the Court pointed out that “the will.i.am restriction does not impose a meaningful limitation and the registrations at issue do not contain any express limitations.”

Symbolic also argued the TTAB erred in not considering the sixth, eighth, and twelfth DuPont factors in light of recent Federal Circuit precedent. The Federal Circuit, however, explained that those cases were distinguishable because they involved composite marks that were not identical to the opposers’ trademarks. In this case the I AM applied for trademark was identical to trademarks already registered.

Finally, of note was Symbolic’s argument relating to the trademark examining attorney acceptance of the will.i.am restriction. The Federal Circuit explained that the acceptance of the restriction on the file is not dispositive, saying:

Additionally, the PTO’s mere acceptance of the will.i.am restriction in the identification of goods does not render it meaningful to likelihood of confusion. Contrary to Symbolic’s suggestion, not all language in an identification of goods that is “specific, definite, clear, accurate, and concise,” Appellant’s Br. 25 (quoting TMEP § 1402.01), imposes a meaningful limitation for purposes of likelihood of confusion analysis. Similarly, the PTO’s alleged allowance of similar limitations in other registrations does not dictate the outcome in this case.

 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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