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9 August 2017Trademarks

Will.i.am can’t register ‘I Am’ trademarks: Federal Circuit

The US Court of Appeals for the Federal Circuit has held that singer  Will.i.am isn’t allowed to register ‘I Am’ trademarks for cosmetics and accessories.

In a  unanimous ruling handed down yesterday, August 8, the Federal Circuit affirmed a 2015 decision by the Trademark Trial and Appeal Board (TTAB) that refused to register the mark because of likelihood of confusion with other registered marks.

I.am.symbolic (Symbolic), a company owned by the former Black Eyed Peas singer, owns the mark ‘I Am’ for class 25, which covers clothing, hats and shoes.

It also owns the mark ‘Will.i.am’ for certain goods in class 9 (which includes phone accessories, CDs and headphones) and services in class 41 (including entertainment and song-writing services).

Will.i.am had filed applications to register the ‘I Am’ mark for goods in classes 3, 9, and 14 , but the examining attorney refused registration.

The class 3 application, which covers cosmetics, was denied because of a likelihood of confusion with a previously registered third party mark ‘I Am’ for perfume.

Will.i.am’s class 9 application, for sunglasses, was denied based on the prior mark ‘I Am’ for sunglasses, while registration in class 14, covering accessories, was denied because of two prior marks for jewellery.

The applications were amended during prosecution to include the statement “associated with William Adams, professionally known as ‘will.i.am’” with the identification of the goods.

But this was not enough for the TTAB, which said that it viewed the statement as “merely high- lighting an association with Symbolic’s presumed principal, Mr. Adams”.

It added: “Contrary to Symbolic’s assertion, we do not see the language as imposing a meaningful limitation on Symbolic’s goods in any fashion, most especially with respect to either trade channels or class of purchasers.”

The board found that the record didn’t establish Adams as being “widely known by ‘i.am’ (as opposed to ‘Will.i.am’)” or that the names are used interchangeably.

Using the Du Pont factors (the test for establishing whether there has been trademark infringement), the board found that the “legal or literal 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, favoured a likelihood of confusion conclusion”.

Symbolic appealed to the Federal Circuit, claiming that the TTAB had erred in its analysis on likelihood of confusion.

The company claimed that the Will.i.am statement is a “meaningful limitation that negates any likelihood of confusion” and that the board had erred in holding that it is “precatory” and “meaningless”.

According to the Federal Circuit, with respect to the Du Pont factors, the restriction “does not distinguish the mark sufficiently from the registrants’ marks to overcome the evidence of likelihood of confusion”.

It added that the TTAB’s finding that Will.i.am is not known by ‘i.am’ was supported by substantial evidence.

“The websites and media coverage pointed to by Symbolic consistently show that Adams is known as Will.i.am, not I Am or i.am,” said the court.

It conclusion, the Federal Circuit held: “The board’s factual findings were supported by substantial evidence and its legal conclusions were not erroneous as a matter of law.”

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