In re i.am.symbolic, llc, (Fed. Cir. Aug. 8, 2017) (Before Prost, C.J., Lourie, and Schall, J.) (Opinion for the court, Lourie, J.)
William Adams, better known by his stage name “will.i.am”, was refused registration of a Trademark for “I AM” on the ground of a likelihood of confusion with registered marks. The Federal Circuit affirmed the Trademark Trial and Appeal Board.
Adams argued that the Board erred by: 1) characterizing the “will.i.am” limitation sought during prosecution as precatory (without legal effect) and therefore omitted from the Board’s DuPont factor analysis; 2) ignoring third-party use and the peaceful coexistence of the primary and supplemental registers; and 3) finding a likelihood of reverse confusion.
The Court found that the Board sufficiently supported its reasoning when it applied the DuPont factors. Regarding the first DuPont factor, the similarity of the marks weighed heavily in favor of confusion because the word marks were identical (both being “I AM”). The analysis considered the applied-for and registered marks, not the “will.i.am” version that Adams argued should have been considered. Any failure to consider third-party use was harmless, given the strength of the evidence supporting a finding of confusion, such as the use of identical marks. , The Court also rejected Adams’ argument that the Board improperly found a likelihood of reverse confusion. Instead, the Board’s opinion “merely explains that to the extent the Board agreed with [Adams] that [he] or the mark are famous, such a finding would not support registration of the mark.”
Identical registrations for the same or similar goods may present overwhelming evidence of likelihood of confusion, regardless of other factors supporting registration.
EDITORIAL NOTE: For more on this case also see Federal Circuit says no to will.i.am.
About Troutman Sanders and the Federal Circuit Review
Founded in 1897, Troutman Sanders LLP is an international law firm with more than 650 lawyers practicing in 16 offices located throughout the United States and Asia. Each week, partners Joe Robinson and Bob Schaffer, succinctly summarize the preceding week of Federal Circuit precedential patent opinions. They provide the pertinent facts, issues, and holdings. This Review allows you to keep abreast of the Federal Circuit’s activities – important for everyone concerned with intellectual property. IPWatchdog.com is pleased to publish these summaries each week.