Music Artist will.i.am Cannot Trademark “I Am”

CC SA 2.0

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.

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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.

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The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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