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USPTO Rejects’s Application for Trademark Registration

By John DiGiacomo

Will.i.am_in_2012, 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, 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 ‘’” 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 ‘’ 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, llc, Serial Nos. 85044494 at *5 (TTAB 2015).

Id. at *10.

Id. at *5-6.

Id. at *15.

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