Lessons in rejection of will.i.am trademark expansion

Entertainer William Adams, aka will.i.am, of The Black Eyed Peas has marketed and sold goods using the phrase “I AM” in several markets. But he can’t register it as a trademark for sunglasses and jewelry, the U.S. Court of Appeals for the Federal Circuit held on Aug. 8. The lynchpin of the panel’s decision was its agreement with the Trademark Trial and Appeal Board that an amendment to the descriptions of goods for the mark was insufficient.

The case illustrates the need to consider tailoring one’s trademark prosecution strategy, and the sought-after marks themselves, with realistic goals in mind. It also demonstrates the board’s and court’s view of (1) the difference between explicitly limiting or qualifying the applied-for mark itself as distinguished from the identification of goods for which the mark is sought; and (2) the need for specificity, and traditional language, in describing trade channels to distinguish a potential mark’s use from that of an existing mark.

Background

Adams originally obtained registration of the I AM trademark for clothing and footwear and the WILL.I.AM trademark for sunglasses and entertainment services. Although he originally sought these as an individual, they are now owned by i.am.symbolic, LLC. Adams filed applications for “I AM” for cosmetics and perfume, sunglasses (among other things), and jewelry, on an intent-to-use basis pursuant to 15 U.S.C. Section 1051(b). (Those applications were assigned to i.am.symbolic.)

The examining attorney refused to register the applications based on a likelihood of confusion with previously registered I AM marks pursuant to 15 U.S.C. Section 1501(d) for the same or similar goods. Danica Seigal previously registered the I AM mark for “perfume,” and Beeline owned the mark for “sunglasses and sunglass cases” and jewelry. The examiner also cited a third company’s ownership of I AM for “silicone stretchable wrist band in the nature of a bracelet” with respect to jewelry.

During the prosecution process, and in response to these rejections, i.am.symbolic amended the identification of goods in the applications by adding the phrase “associated with William Adams, professionally known as ‘will.i.am.’” The company did not amend the marks themselves with any limitation or file new applications with the mark “I AM by will.i.am” or similarly limiting language after receiving the initial rejections. Nor did i.am.symbolic limit the identifications of goods to specific trade channels in traditional language (e.g., luxury items). The examiner was unconvinced that the amended language distinguished the mark from previously registered marks and maintained the refusal.

On appeal, the board affirmed the examiner’s refusal. The board agreed that the added restriction was not meaningful and that an analysis of the likelihood of confusion (DuPont) factors favored a likelihood of confusion conclusion between the previously registered and sought-after marks. The company appealed the board’s decision to the Federal Circuit.

“will.i.am” Restriction on Goods Insufficient

The Federal Circuit panel rejected i.am.symbolic’s argument that the board erred by finding i.am.symbolic’s added restriction in the identifications of goods “meaningless” and not considering it in its likelihood of confusion analysis. Even though the restriction stated the mark would be “associated with” will.i.am, the panel agreed there was no evidence demonstrating that the restriction actually changed the nature of the goods or trade channels or would be visible to the purchasing consumer. The amended descriptions did not articulate “how Adams will be ‘associated with’ the goods”; nor did the descriptions adequately describe whether the goods would be marketed in any particular way or to any particular class of customers. As to the commercial impression created by the marks, the panel agreed that the attempted restriction had no relevance, and, as to channels of trade, the attempted restriction had no significance.

Importantly, the panel distinguished this situation from others, such as that presented in M2 Software v. M2 Communications, 450 F.3d 1378, 1382 (Fed. Cir. 2006), where channels of trade were clearly delineated in traditional terms. In M2 Software, the sale of CDs was described as in the channel of “music or entertainment,” on the one hand, versus “pharmacy and medicine,” on the other. Essentially the board found that adding the phrase “associated with” an entertainment personality does not adequately alter the commercial impression of a mark or describe a channel of trade. Thus, in the board and court’s view nothing in the restriction limited the buying public’s view of the mark, the nature of the goods, or where the goods would be sold.

Takeaways

Amending the identifications of goods to include the phrase “all associated with William Adams, professionally known as ‘will.i.am’” was insufficient to avoid a likelihood of confusion finding because it did not clearly indicate to the board (1) what, precisely, the consuming public would see with respect to the trademark in question; or (2) meaningfully constrain where the consumer would see the mark (channels of trade or specific types of goods). Modifying the mark itself to include a phrase such as “by will.i.am” would have made clear what the consuming public would see and distinguish it from pre-existing marks. Better yet, prosecution, in parallel, of a modified mark with an additional limitation should be considered under circumstances like these. Though it’s probably not practical in this instance, specifically restricting the channels of trade, for example to “luxury” channels, might have avoided a finding of likelihood of confusion with an existing mark in the same class.