The Trademark Trial and Appeal Board (TTAB) affirmed the examiner’s decision to deny three applications for “I AM” marks filed by i.am.symbolic, LLC (“Applicant”), finding that Applicant’s proposed “I AM” mark was confusingly similar to other previously registered “I AM” marks.
Applicant submitted applications for three different marks containing the component “I AM” for cosmetics and personal products, sunglasses and rubber bracelets “all associated with William Adams, professionally known as ‘will.i.am.’” The examiner refused to register the applications in light of previously registered “I AM” marks for perfume, sunglasses and jewelry.
Applicant argued that there was no likelihood of confusion because its goods were exclusively associated with Applicant’s founder, will.i.am, the goods under the cited marks were marketed differently, and the cited marks were not famous. The TTAB rejected all three arguments.
The TTAB held that the limitation in the identification of goods as being “associated with William Adams, professionally known as ‘will.i.am,’” did not impose a meaningful limit on Applicant’s goods. Rather, the TTAB found that the language was precatory and not binding on consumers because purchasers are unlikely to know about the limitation in the identification of goods. The TTAB also rejected Applicant’s contention that the applied-for mark would be perceived as identifying will.i.am, explaining that the mark is “I AM,” not “WILL.I.AM,” and that the evidence did not show that will.i.am was widely known as “i.am” or that “i.am” and “will.i.am” were used interchangeably.
The TTAB also rejected Applicant’s argument that there is no likelihood of confusion because the goods under the cited marks were marketed differently. The board reasoned that, because Applicant’s identification of goods failed to include any meaningful limitations on the channels of trade, the differences in the way the respective goods might be marketed were irrelevant.
Further, the TTAB accorded little weight to the purported lack of fame of the cited marks. The TTAB reasoned that an examining attorney is not normally expected to submit evidence as to the fame of a cited mark because of the nature of the evidence required to prove fame, and accordingly, the fame of the mark is normally treated as neutral in an ex parte context when no evidence of fame has been provided.
After balancing the relevant likelihood of confusion factors, the TTAB held that confusion was likely and affirmed all three refusals.
In re i.am.symbolic, LLC, Serial Nos. 85044494, 85044495, and 85044496 (TTAB October 7, 2015) [precedential].