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3/2016
Entertainment Law & Finance Newsletter, Law Journal Newsletters

i.think Therefore i.am? Not Exactly.

Pop Entertainer will.i.am Fails to Overcome Prior Registration of Mark at TTAB
Scott J. Slavick & Arturo Ishbak Gonzalez

Fame, they say, is fleeting — but the brands and value they create are not. Little wonder the adopted names of certain stars become not only brands in the popular imagination, but also legally defended rights and trademarks.

After all, what would Cherilyn Sarkisian be today had she not assiduously promoted herself as Cher — a brand now attached not only to music and entertainment, but to cosmetics, fragrances and skincare products? What cachet would Paul David Hewson enjoy if he weren't known worldwide as Bono? Popular music stars have long followed this lead, not only to leverage their rights of publicity but securing trademarks even for variants on their own names. This surely was the driving force behind the recent effort of William Adams, professionally known as will.i.am of pop group The Black Eyed Peas, to register the mark "I AM" in standard characters for sunglasses and sunglass cases.

Adams's effort failed. The examiner at the U.S. Patent and Trademark Office (USPTO) rejected the application due to likelihood of confusion, based on a prior registration of I AM for sunglasses. Beeline GmbH, a leading supplier for fashion jewelry and accessories, owns the "I AM" mark cited against Adams' application and "I AM" is its costume jewelry brand for women. Beeline has stores all over the world, including in the U.S. "I AM"'s label "YSTRDY" completes its jewelry core collection with textile accessories, watches and sunglasses among other products.

In In re i.am.symbolic llc, 85/044,495, the Trademark Trial and Appeals Board (TTAB) affirmed the USPTO. A review of pertinent case law suggests not only the complexity inherent in such cases, but also potential avenues appellants might consider in the future, even if those avenues now may not be open to will.i.am.

In attempting to overcome the USTPO's rejection, Adams made three arguments: 1) that the applied-for mark would undoubtedly always be identified with him; 2) that the goods covered under the prior registration were marketed very differently from Adams' own; and 3) that the mark contained in the prior registration was not famous.

The TTAB rejected the first argument, holding that the language in the application that the goods are "associated with William Adams, professionally known as 'will.i.am,'" was not a meaningful limitation on the goods, the trade channels or Adams' products' consumer classes. The TTAB felt that the language was merely "precatory" and not remotely binding on consumers when they would encounter Adams' mark. It further pointed out that consumers are extremely unlikely to know of the statements Adams' made in his federal trademark registration on encountering his goods in the real world.

In response, Adams' i.am.symbolic, llc argued that the applied-for mark would always be perceived as identifying him. But the board responded that the applied-for mark was "I AM," and not "WILL.I.AM." The board went on to explain that Adams' evidence did not prove that he was widely known as "I.AM," or that "I.AM" and "WILL.I.AM" are used interchangeably by Adams or by the public in referring to him. Even if Adams were known as "I.AM" and even if the applied-for mark had gained notoriety, the board explained, the Lanham Act still protects the senior trademark user from "adverse impact due to use of a similar mark by a newcomer" — i.e., reverse confusion.

Consumer confusion is held to occur when a second user of a mark capitalizes on the goodwill generated by the first user. Reverse confusion occurs when a senior user is a small business that has adopted and used a trademark on a relatively small scale, and a junior user — often a much larger business — thereafter begins using the same or a confusingly similar mark and advertises it on a greater scale. The public, conditioned by the latecomer's extensive use, comes erroneously to believe that the senior user's product originates with the junior user.

In will.i.am's case, the TTAB ruled that Adams' limiting language in identifying goods was not a reasonable basis to assume that purchasers would be able to distinguish the source of Adams' goods from those from the owner of the cited registration. It viewed Adams' precatory language as a distinction without a difference for purposes of determining likelihood of confusion. Instead, the board concentrated its analysis on the actual differences in the way Adams' goods and those of the owner of the cited registration were to be marketed. Here, the board felt, there were no material limitations in that regard with respect to Adams' goods.

With respect to i.am.symbolic llc's assertion that the prior registered mark lacked fame, the TTAB held that given the nature of the evidence required to prove fame, an examining attorney is not required to establish the fame of the cited registration: In an ex parte context, it noted, the fame factor of the cited registration is normally treated as neutral. Balancing the pertinent likelihood of confusion factors, the board found confusion likely and affirmed the refusal.

Making a Beeline for Valuable Marks

Lest you think that's all there is to this story, consider this: Opposer Beeline's "I AM" mark was filed on April 10, 2003. Ironically, it was initially rejected as being likely to cause confusion with another of Adams' "I AM" trademarks: Registration No. 2,433,688, including various clothing items. In rejecting Beeline's application, the USPTO's examiner explained that the parties' goods were likely to travel in the same channels of trade and be marketed to the same consumers.

Nonetheless, almost 10 years before the decision in the recent "I AM" case, Beeline convinced the examiner that confusion between its 2003 application and Adams' "I AM" registration was not likely. Beeline successfully registered this application on Dec. 26, 2006, for sunglasses in Class 9; jewelry and fashion jewelry, bracelets, anklets, necklaces, pendants, earrings, ear clips, broaches, finger rings, arm rings, watches, wrist watches, pocket watches, watch chains and watch fobs in Class 14; and hair ornaments, hair bands, hair bows, hair clips, hair pins, ornamental combs, ornamental ribbons made of textile, hair ribbons, elastic hair ribbons, ornamental novelty buttons and lapel buttons, all not of precious metal in Class 26.

At the same time, Adams owns trademark Registration No. 2,433,688 for "I AM," filed on May 3, 2000, as an actual use application with a claimed first-use date as early as March 1, 1999, anywhere, and June 15, 2000, in commerce. The mark was registered on March 6, 2011, and is registered in connection with clothing, namely, hats, caps, socks, shirts, t-shirts, sweatshirts, tank tops, shorts, pants, sweatpants and jeans, as well as footwear, namely, shoes and boots in Class 25.

In addition, Adams owns trademark Registration No. 3,678,106 for "WILL.I.AM," filed on Feb. 6, 2009, with a claimed first-use date anywhere and in commerce as of Oct. 2, 2001. The mark was registered on Sept. 1, 2009 and is registered in connection with series of pre-recorded phonograph records, CDs and audio cassettes featuring music; series of pre-recorded video tapes and DVDs featuring music videos and musical performances in Class 9.

Both marks are in full force and have a filing date and/or date of first use that pre-date the cited "I AM" mark owned by Beeline. In the case of the "I AM" registration in Class 25, it was filed three years before Beeline's mark and used at least four years before it. Although the "WILL.I.AM" mark was filed after Beeline's mark, it was used two years before Beeline's "I AM" mark.

Should Adams Have Taken A Different Tack?

Despite this trail of conflicting marks, the TTAB's decision in the recent appeal was predictable, given that both parties' marks are identical and the goods are similar. But it invites speculation as to whether Adams and his company would have prevailed had they moved to cancel Beeline's cited registration, arguing that it was confusingly similar to Adams' earlier registered "WILL.I.AM" marks. Specifically, one wonders if Adams could have successfully argued that he actually had prior rights over the "I AM" mark as compared with Beeline, relying on the accepted doctrine of "tacking."

Tacking is the principle in trademark law that an evolutionary development of a logo or registered mark enjoys the same protection as the original mark. Notable examples of companies that have developed new variations of a widely known and protected mark include Apple, Pepsi and Quaker Oats.

But the path to proving tacking is fraught with complexity. Adams would have had to first admit the likelihood of confusion between the conflicting "I AM" marks. Second, he would have to demonstrate that his "I AM" mark application creates the same commercial impression as his stage name and registered trademark "WILL.I.AM." Third, he would have to show that the goods identified by his marks are the same, similar, or related.

In Navistar Int'l Transp. Corp. v. Freightliner Corp., 96 C 6922 (N.D.Ill. 1998), the U.S. District Court for the Northern District of Illinois set forth a three-prong test to be applied in tacking disputes: 1) whether the marks make the same commercial impression; 2) whether the two impressions are continuous; and 3) whether the marks are being used on the same or substantially similar goods or services.

The most important and difficult prong is the first: the commercial impression factor. Precedential tacking decisions are silent regarding a definition of commercial impression. However, in the non-tacking decision Spice Islands Inc. v. Frank Tea and Spice Co., 505 F.2d 1293 (C.C.P.A. 1974), the Court of Customs and Patent Appeals decided that two marks conveyed the same overall commercial impression because they conveyed to prospective purchasers "the same idea, same mental reaction, and same meaning." So Adams would have had to demonstrate that his "I AM" mark conveys to prospective purchasers the same idea, mental reaction and meaning as his "WILL.I.AM" mark.

One might think doing this would be easy. In the "I AM" mark, only the word "Will" was deleted and it could be argued should not be considered a substantial alteration of the mark. In this regard, Adams could attempt to rely on the decision in Fifth Ave. of Long Island Realty Assocs. v. Caruso Mgmt. Co., 08- 384 (E.D.N.Y. Feb. 17, 2009), where the court decided: "[T]here is a difference between the deletion of words from a registered mark, and adding to, or changing words of that mark. While it may be easier to find a continuing commercial impression where words are deleted, courts are less likely to conclude that two marks convey the same impression when words are changed or added."

The U.S. Supreme Court's decision in Hana Financial Inc. v. Hana Bank, 135 S. Ct. 907 (2015), held: "Commercial impression … should be resolved by considering a range of evidence, ideally including consumer survey evidence." Therefore, Adams could ideally have submitted strong survey evidence, but such evidence might not have been necessary in this case because deleting the word "Will" in the "I AM" mark might not have been considered a material alteration of the mark. In Navistar, the court held: "[I]f the change to the mark is de minimis (that is, basically unnoticeable), perhaps it would be appropriate for the finder of fact, without being provided evidence on consumers' perceptions, to conclude that there is no genuine issue as to whether consumers perceive the two marks as making the same commercial impression."

Moreover, because the tacking inquiry involves comparing two marks, namely, the original mark and the modified mark, the tacking test mirrors the similarity of marks factor from the now canonical likelihood of confusion test from In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973).

Then, if the USPTO already considered Adams' "I AM" mark confusingly similar to Beeline's "I AM" mark even though Adams' mark stated that the identified goods are "associated with William Adams, professionally known as 'will.i.am,'" Adams could have argued there is no reason not to consider "WILL.I.AM" and "I AM" similar as well.

In this instance, though, is the further consideration that the phrases "I.am" and "will.i.am" in whatever character sets do differ in substance and conceptually in their import, which would attenuate a reliance on the principles of tacking as have been set out in the noteworthy cases.

Alternatively, flexibility in trademark law allows users to modernize their trademarks without losing the years of value and/or goodwill that have accumulated in them. And the tacking doctrine allows trademark owners to modernize marks to reflect changes in marketing trends and popular culture. If one looks at the latest marks Adams filed with the USPTO, it is clear that he has been substituting the "WILL.I.AM" family marks with a series of new "I AM" marks, probably in response to new consumer trends.

In connection with the third prong of the tacking test — which entails regarding the identity or similarity of the goods identified by the marks — the "WILL.I.AM" mark covers series of pre-recorded phonograph records, CDs and audio cassettes featuring music, and series of pre-recorded video tapes and DVDs featuring music videos and musical performances, while the "I.AM" mark protects musical sound recordings, musical video recordings, pre-recorded DVDs, videotapes and other audiovisual recordings featuring musical, dramatic and comedic performances. Therefore, Adams could credibly argue that both marks are used to identify similar or at least related goods.

Finally, Adams could argue that the USPTO in its previous decisions has allowed the coexistence of several trademark registrations owned by different owners with the term "I AM" in Class 9 ("I AM NOT I," "I AM U RECORDS" and design, "ALICIA KEYS AS I AM," "FAN I AM," "I AM I CAN I WILL" and design, "IAM" and "IIAM"), without considering them as confusingly similar to Beeline's "I AM" mark. Therefore, there should be no reason to change its criterion with Adams' mark.

Conclusion

Even so, with the TTAB's decision rendered and because the U.S. Supreme Court in Hana already held that tacking is a question of fact that must be decided by a jury, none of the aforementioned considerations to support the proposed alternative tacking strategy could guarantee Adams the registration of his "I AM" mark. So will.i.am's i.am will, it seems, be.not.

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Reprinted with permission from the March 2016 edition of Law Journal Newsletters© 2016 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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