CAFC agrees with the Board that will.i.am restriction in the identification of goods is meaningless

Kumiko Ide | September 19, 2017

In re I.AM.SYMBOLIC, LLC

August 8, 2017

Before: Prost, Lourie, and Schall. Opinion by Lourie.

Summary:

The Board held, and the CAFC agreed that the will.i.am restriction in the identification of goods, which stated “all associated with William Adams, professionally known as “will.i.am” did not impact on the meaning or the overall commercial impression of the mark.  Further, the will.i.am restriction provided no limitation on the nature of the goods, trade channels, or potential purchasers.  Where the marks are identical, and substantial evidence supports the goods are identical or closely related, the trade channels are identical, and classes of purchasers overlap, the CAFC upheld the Board’s decision affirming the examining attorney’s refusal to register the marks of the Appellant.

Details:

This is an appeal from the Trademark Trial and Appeal Board, which affirmed the Examining Attorney’s refusal to register the mark “I AM” in standard characters for goods in International Classes 3, 9, and 14 (Serial Nos. 85/044,494, 85/044,495, 85/044,496) on the ground of a likelihood of confusion with prior registered marks.

The appellant’s application recited the following identification of goods for Class 3:

Cosmetics; artificial eyelashes; body powder; incense; nonmedicated lip balm; non-medicated hair care preparations; non-medicated nail care preparations; nonmedicated skin care preparations; makeup remover; massage oils; essential oils for personal use; shaving creams and gels and depilatory creams and gels; shower and bath gels, bath crystals, milks, oils, bubble bath, powders and salts; soaps and detergents; sun screen and sun tanning preparations; toothpaste and mouthwash, all associated with William Adams, professionally known as “will.i.am” (in International Class 3).

The Examining Attorney refused registration based on a likelihood of confusion with the previously registered mark “I AM” for “perfume” in Class 3.

The appellant’s application recited the following identification of goods for Class 9:

sunglasses and sunglass cases associated with William Adams, professionally known as “will.i.am”

 The Examining Attorney refused registration based on a likelihood of confusion with the previously registered mark “I AM” for “sunglasses” in Class 9.

Finally, the appellant’s application recited the following identification of goods for Class 14:

Brass wrist cuff bracelets; clocks; jewelry, namely, dog tags for wear by humans for decorative purposes; jewelry; jewelry boxes; jewelry sets, namely, necklaces, earrings and bracelets; key holders, rings and chains of precious metal; lapel pins; medals; ornamental pins, rubber wristbands in the nature of bracelets; silver wrist cuff bracelets; sun dials; watch bands; watch bracelets; watch cases; watches; wrist bands of imitation leather; wrist bands of leather; and jewelry made of resin, namely, wrist cuffs of resin, all associated with William Adams, professionally known as “will.i.am.”

The Examining Attorney refused registration based on a likelihood of confusion with the previously registered mark “I AM” for “jewelry and fashion jewelry, bracelets, anklets, necklaces, pendants, earrings, ear clips, broaches, finger rings, arm rings; watches, wrist watches, pocket watches, watch chains and watch fobs” in Class 14 and “I AM” for “silicone stretchable wrist band in the nature of a bracelet” in Class 14.

On appeal, the Board affirmed the Examining Attorney’s refusal to register based on a likelihood of confusion.  The appellants appealed to the CAFC by arguing that the Board erred by 1) holding that the will.i.am restriction in the identification of goods is “precatory” and “meaningless”; 2) ignoring third-party use and the peaceful coexistence of other “I AM” marks; and 3) finding a likelihood of reverse confusion.

With regard to the holding that the will.i.am restriction in the identification of goods is “precatory” and “meaningless”, the CAFC agreed with the Board that the will.i.am restriction provides no impact on the meaning or the overall commercial impression of the mark.  In addition, there was substantial evidence to support that William Adams, known as will.i.am, is not known or identified by the term i.am or I AM.  Moreover, the will.i.am restriction imposed no limitation on the nature of the goods, trade channels, or potential purchasers.

With regards to the appellants argument on concurrent use by third-parties without evidence of actual confusion, the CAFC found that the appellant’s evidence of third-party use is limited, and considering the strength of other DuPont factors weighing heavily toward finding of a likelihood of confusion, there was no reversible error in the Board’s determination that “the will.i.am restriction does not impose a meaningful limitation in this case for purposes of likelihood of confusion analysis.”

Finally, with regard to Appellant’s argument that the Board found a likelihood of reverse confusion which was not supported by substantial evidence, the CAFC held that the Board did not find a likelihood of reverse confusion.  Reverse confusion occurs when a larger or more prominent junior user, who is a newcomer “saturates the market” with a trademark that is similar to a smaller, senior registrant for related goods and services, creating a situation where the senior user may experience diminution or loss of its market identity and goodwill as a result of the junior user.  In this case, the Board’s statement, “[t]o the extent that Mr. Adams and [Symbolic’s] mark are well-known, such fact supports refusal of [Symbolic’s] application, because when confusion is likely, it is the prior Registrant which must prevail,” was made in response to Symbolic’s arguments regarding the alleged fame of Adams and the mark, and did not amount to finding of reverse confusion.

Thus, the CAFC upheld the Board’s decision affirming the examining attorney’s refusal to register the marks of the Appellant.

Takeaway:

  • Noting that the goods will be associated with a famous person in the identification of goods will not provide any impact on the meaning or the overall commercial impression of the mark

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