USPTO Rejects Will.i.am’s ‘I AM’ Trademark

Will.i.am, otherwise known as William Adams (‘applicant’), was seeking the trademark ‘I AM’ for a collection of cosmetics, beauty and skin care products, and other hygiene related products, among other items. In three decisions released October 7, 2015, the Trademark Trial and Appeal Board affirmed a lower decision and refused to register trademarks for celebrity and entrepreneur on the basis of a likelihood of confusion, Will.i.am. It was argued that the goods would be identified not just with the ‘I AM’ brand but would also include “associated with William Adams, professionally known as ‘will.i.am.’” The Board felt this was not a sufficient distinction from an already registered trademark of ‘I AM’ by two other parties for similar goods and so denied his request.

The judgment denying the applicant’s request was broken down into three separate decisions to analyze the applicant’s trademark request against each of the already existing trademarks. The Board considered the similarities between both the mark and the goods attached to them. To approach the similarities and for guidance on how to assess the trademarks the Board considered the ‘du Pont’ factors stemming from In re E.I. du Point de Nemours & Co. The two factors are, (1) a consideration of the similarities between the marks (in this case the already registered trademarks of ‘I AM’ in comparison to the applicant, ‘I AM’ request) and (2) the similarities between the goods the trademark will be attached to and already existing goods with this trademark. The purpose of this analysis is to consider the likelihood of confusion by a consumer of products with similar trademarks.

The first factor, looking at the similarities of the marks, takes into account their appearance, sound, connotation, and commercial impression. The Board found the marks to be identical in appearance – all of the trademarks are ‘I AM’ – there is no stylization present. The applicant argued that in the case of one of the registrants, who use the trademark for perfume, the trademark is used to refer to philosophy and empowerment, whereas his trademark would be associated with himself. The applicant claims that ‘I AM” is commonly associated with and known to be related to ‘will.i.am.’ The court had a difficult time accepting this as the trademark request had no periods in it the way the applicant’s stage name does and it is written entirely in caps. Despite the arguments brought forward by the applicant, the Board held that the similarities between the marks weigh heavily in favor of finding a likelihood of confusion between them.

The second factor, which looks at the similarities between the goods, is more focused on possible confusion that can result if the products are related or the circumstances surrounding their marketing could give rise to a mistaken belief that they come from the same source. The argument put forward by the applicant that his products would be directed at the more sophisticated consumer and thus less likely to be subject to “impulse buying” was not accepted by the Board. The Board felt that the applicant’s suggested pricing was within a range where the products could be subject to impulse buying, and thus result in confusion with the registrant trademarks. As a result, the Board held that in regards to the second factors, the similarities between the goods and identity of the trade channels and purchasers were all factors that weighed in favor of finding a likelihood of confusion.

The final result, the Board affirmed refusal of the registration by the applicant.

476 F.2d 1357 (CCPA 1973).

In re i.am.symbolic, llc, Serial Nos. 85044494 at *5 (TTAB 2015).

Id. at *10.

Id. at *5-6.

Id. at *15.

The du Pont Factors: A Deeper Analysis

The TTAB’s analysis in the Will.i.am case applied the du Pont factors from In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973), which remain the governing framework for likelihood of confusion analysis before the USPTO. Courts and the TTAB consider up to thirteen factors, though not all will be relevant in every case. The two factors that drove the outcome in the Will.i.am case — mark similarity and goods similarity — are typically the most important.

On mark similarity, the TTAB analyzes appearance, sound, connotation, and commercial impression. Even where a mark has acquired celebrity association, the TTAB evaluates the mark as it appears in the application — not how it might be perceived by consumers already familiar with the applicant. Will.i.am’s argument that consumers would associate “I AM” with his celebrity persona rather than with the registrant’s prior “I AM” mark required the TTAB to find consumer recognition in the mark itself, not in context. That argument failed because the mark as written — “I AM” in plain capital letters, without periods or distinctive stylization — was identical to the prior registrant’s mark and could not be distinguished on appearance or sound alone.

Celebrity Trademarks and the Challenge of Common Words

The Will.i.am case illustrates a fundamental tension in celebrity trademark law: celebrities often want to register marks consisting of ordinary words, phrases, or short expressions that are inherently weak as trademarks. Ordinary words and phrases — “I AM,” “BAM!,” “Be Heard” — can acquire distinctiveness as trademarks through extensive use and promotion, but they are more vulnerable to challenges from prior registrants of similar marks than coined or distinctive marks.

The Lanham Act, 15 U.S.C. § 1052(e), bars registration of marks that are “merely descriptive” without proof of acquired distinctiveness. It also bars registration when there is a likelihood of confusion with a registered mark under § 1052(d). Short, common phrases like “I AM” may face both types of challenges: they may be descriptive or generic (because “I AM” is a standard English phrase), and they may conflict with prior registrants who had the same idea first.

Celebrities seeking trademark protection for their personal brand should work with trademark counsel to develop marks that are more distinctive and less likely to conflict with existing registrations. Options include: using a stylized version of the word or phrase with a distinctive design element; combining the phrase with a distinctive design mark; developing a coined word or distinctive combination that is uniquely associated with the celebrity’s brand; or registering under a stage name that combines the celebrity’s distinctive persona in a more specific way (e.g., “WILL.I.AM” with the distinctive punctuation, rather than “I AM” in plain text).

The Sophisticated Consumer Defense and Its Limits

Will.i.am’s argument that his products would be targeted at sophisticated consumers unlikely to engage in impulse buying reflects a well-recognized du Pont factor: the degree of care exercised by purchasers. Courts and the TTAB consistently hold that more expensive products sold to sophisticated commercial buyers are less likely to cause consumer confusion than inexpensive consumer goods sold to general consumers. A specialized industrial chemical sold to chemists at $10,000 per unit is far less likely to cause confusion with a similarly named product than a $5 shampoo sold at a drug store.

However, the TTAB rejected this argument in the Will.i.am case because the price range of the products — cosmetics and beauty products — placed them in a range where impulse buying is common. The relevant consumer for beauty products is not a sophisticated commercial buyer conducting careful due diligence; it is a general consumer browsing a cosmetics aisle or website who may make a purchase decision quickly and without comparison shopping. That consumer, the TTAB found, was likely to be confused between competing “I AM” branded beauty products.

Protecting a Celebrity Brand: What a Comprehensive Strategy Looks Like

The Will.i.am case is a cautionary tale about what happens when a celebrity brand strategy does not account for the existing trademark landscape. A comprehensive celebrity brand protection strategy includes:

• Pre-clearance search before selecting brand names. A comprehensive trademark search — covering both registered marks and common law uses — identifies potential conflicts before a brand name is selected and invested in. Finding a conflict during the clearance process is dramatically less expensive than fighting a USPTO rejection or TTAB opposition.
• Filing a complete identification of goods and services. Trademark registrations are only as broad as their identification of goods and services. Filing a comprehensive application that covers all current and reasonably foreseeable uses of the mark prevents third parties from registering similar marks in adjacent categories.
• Monitoring for conflicting applications and uses. A trademark monitoring program alerts the rights holder when third parties file applications for similar marks or begin using similar marks in commerce, enabling timely opposition or cease and desist action.
• Filing in all relevant jurisdictions. Trademark rights are territorial. A US registration provides no protection in the EU, UK, Canada, or elsewhere. For celebrity brands with international reach, filing in major markets — through the Madrid Protocol or direct national applications — is essential.
• Building the trademark record through use. Consistent, documented use of the mark in commerce strengthens claims of acquired distinctiveness and provides evidence for future enforcement actions. License agreements that control quality and use further support the mark’s validity.

Talk to an Attorney

Whether you are a public figure seeking to protect your personal brand or a business developing a trademark strategy, the USPTO’s examination process and the TTAB’s opposition procedures require careful navigation. The Will.i.am case demonstrates that even well-resourced applicants face rejection when their marks conflict with prior registrations. Revision Legal’s trademark attorneys conduct pre-filing clearance searches, draft trademark applications, and represent clients in TTAB proceedings and federal court litigation. Contact us through the form on this page or call 855-473-8474.