The US Court of Appeals for the Federal Circuit affirmed a refusal to register the mark I AM for various goods based on a likelihood of confusion with registered marks, concluding that the pseudo applicant’s trade moniker was “precatory” and not relevant to the DuPont factors. In reI.AM.Symbolic, LLC, Case No. 2016-1507 (Fed. Cir., Aug. 8, 2017) (Lourie, J). 

William Adams, the lead singer of the Black Eyed Peas who is professionally known as “will.i.am,” filed trademark applications for the mark I AM on an intent-to-use basis under 15 USC § 1051(b) for goods in class 3 (cosmetics), class 9 (sunglasses) and class 14 (jewelry). The applications were later assigned to Symbolic. During prosecution, the applications were amended to include with the identification of goods the statement “associated with William Adams, professionally known as ‘will.i.am’” (will.i.am restriction). The examining attorney refused the registration, finding a likelihood of confusion with the previously registered marks, including I AM for “perfume” (class 3), I am for “sunglasses” (class 9), I am for jewelry (class 14), and I AM for bracelets (class 14). The TTAB agreed, and Symbolic appealed.

Symbolic argued to the Federal Circuit that the TTAB erred by (1) holding that the will.i.am restriction was “precatory” and not a meaningful limitation, and thus not considering it in its DuPont analysis; (2) ignoring third-party use and the peaceful coexistence on the primary and supplemental registers and in the marketplace among other I AM marks; and (3) finding a likelihood of reverse confusion. The Federal Circuit agreed with the TTAB, however.

First, the Federal Circuit concluded that the will.i.am restriction was precatory, imposing no meaningful limitation because it neither altered the nature of the goods identified in any meaningful way nor represented that the goods would be marketed in any particular way, through any particular trade channels or to any particular class of customers. Indeed, the Court observed that the TTAB “may not read limitations into an unrestricted registration or application.” Moreover, the record did not establish that the artist will.i.am was also “widely known as ‘i.am’” or that the names were used interchangeably by him or the public. 

Second, the Federal Circuit found that the first DuPont factor weighed heavily in favor of a likelihood of confusion, because the I AM mark and the registered marks are at least legally and literally identical in appearance and pronunciation, have the same meaning and engender the same commercial impression—findings that Symbolic did not and could not dispute. The Court was not persuaded that the will.i.am restriction changed the overall commercial impression of the mark, especially since the will.i.am mark itself was not part of the applied-for mark. As such, it should not factor into the similarity of the mark analysis. Moreover, substantial evidence supported the finding that the goods and channels of trade are identical or related enough to cause confusion under the first, second and third DuPont factors.

Third, contrary to Symbolic’s argument, the Federal Circuit found that the TTAB was not obligated to consider third-party use and/or the peaceful coexistence of existing I AM marks on the registers and in the marketplace when considering the sixth, eighth and twelfth DuPont factors, because “third-party registrations cannot assist an applicant in registering a mark that is likely to cause confusion with a previously registered mark.”

Finally, Symbolic argued that the TTAB erred in finding a likelihood of reverse confusion—a situation where a significantly larger or prominent newcomer “saturates the market” with a mark that is confusingly similar to a smaller but senior registrant for related goods/services. As the Federal Circuit noted, the TTAB found that the fame of the marks (the fifth DuPont factor) is neutral because the “purported lack of fame” was of “little consequence” in the likelihood of confusion analysis.