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Entertaining Name Game But i.am Is No Winner

Scott J. Slavick & Arturo Ishbak Gonzalez

Click here to read the article on American Bar Association.

Fame, as we all know, has its privileges—and its drawbacks. One of the latter? You have to wear sunglasses virtually everywhere, or you'll be hounded for your autograph, and have flashbulbs constantly popping in your face.

The counteracting privilege? People think you're cool. That your sunglasses are cool. And you can bank on that—literally—because they'll buy them.

William James Adams Jr. certainly gets this. Better known by his stage moniker will.i.am, he's a multi-faceted entertainer and creative innovator, a seven-time Grammy Award winner, and the founder of I AM and Beat Electronics. Known for his work with hip hop group The Black Eyed Peas, who have sold 31 million albums and 58 million singles worldwide, will.i.am also has worked with some of the entertainment industry's biggest names, including Michael Jackson, Rihanna, Usher, Nicki Minaj, Britney Spears, David Guetta, and film composer Hans Zimmer. He's also a songwriter, actor, record producer, and philanthropist.

But while a name means a lot, and can carry significant weight, it's no guarantee of success at the United States Patent and Trademark Office. In three separate opinions last fall, in In re i.am.symbolic, llc, Serial Nos. 85/044,494, 85/044,495 [precedential], and 85/044,496 (October 7, 2015), the USPTO's Trademark Trial and Appeal Board (TTAB) affirmed confusion rejections to register the applied-for mark I AM for cosmetics and personal products; sunglasses and sunglass cases; and jewelry, watches, and bracelets, all associated with Adams.

The USPTO examiner refused to register Adams' marks based on a likelihood of confusion with three separate prior registrations: I am for perfume, I am for sunglasses, jewelry, and fashion jewelry, and I am for wristbands.
In response to the examiner's rejection, i.am.symbolic llc had argued to the TTAB that there was no likelihood of confusion between the sought-for marks and the registrations cited. Adams argued that his marks identified him, that his goods were exclusively associated with him, that the goods under the cited marks are marketed differently, and that the cited marks are not famous. To support his contentions, Adams filed excerpts of the cited registrations owners' websites and copies of his own previously registered I AM and WILL.I.AM marks.

The TTAB's Opinion

The TTAB was not persuaded, determining that the language in Adams' applications stating that the goods are to be "associated with William Adams, professionally known as ‘will.i.am,'" did not represent a meaningful limitation on the goods, the trade channels, or Adams' products' classes of consumers. The TTAB held instead that the language was merely "precatory" and not binding on consumers when they encountered the applied-for marks in actual commerce. In addition, the TTAB pointed out that consumers would be unlikely to know of the statement in the federal trademark registration that Adams' goods are limited to only those associated with him.

In response, Adams argued that the applied-for marks would be perceived as identifying him. But the TTAB responded that the applied-for marks are I AM, not WILL.I.AM, and that this distinction was very important. Adams' evidence did not prove, the TTAB held, that the pop star was widely known as i.am, or that i.am and will.i.am are used interchangeably by him or by the public to refer to him. Moreover, the TTAB concluded that the record fell far short of establishing that Adams is widely known by i.am as opposed to will.i.am.

The TTAB went on to explain that even if Adams were known as "i.am" and even if the applied-for marks had gained notoriety, the Lanham Act still protects the senior user (the owner of the cited registrations) from "adverse impact due to use of a similar mark by a newcomer"—i.e., reverse confusion.

While consumer confusion is held to occur when a second user of a mark capitalizes on the goodwill generated by the first user of that same mark, reverse confusion occurs when the senior user is a small business that has adopted and used a trademark on a relatively small scale. The junior user, typically a much larger business, thereafter begins using the same mark or one confusingly similar and begins advertising it on a massive 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. Reverse confusion thus refers to an alleged infringer's saturation of the market with its mark so that consumers come to believe that the alleged infringer, rather than a senior user of the same mark, is the source of the senior user's product.

In this regard, the TTAB noticed that in three different trademark registrations for WILL.I.AM, owned by Adams and subsequently transferred to i.am.symbolic, llc, and in Classes 9, 41, and 25, the marks included a declaration stating "the name shown in the mark identifies a living individual whose consent to register is of record," while in the I AM marks such a statement was not included. The TTAB held that even if Adams had included such a statement, the statute would still have protected the senior user from reverse confusion.

Therefore, the TTAB held that Adams' limiting language in the identification of goods simply was not a reasonable basis to assume that purchasers would be able to distinguish the source of Adams' goods from those of the owner of the cited registrations. The TTAB explained that it viewed Adams' precatory language as essentially a distinction without a difference for purposes of determining likelihood of confusion. Instead, the TTAB concentrated its analysis on the actual differences in the way Adams' goods and those of the owner of the cited registrations were to be marketed. Here, the TTAB felt, there were no material limitations in that regard with respect to Adams' goods.

In addition, in the appeal for the I AM mark in Class 14, Adams also argued that the coexistence of the two cited marks on the register was evidence of the lack of likelihood of confusion between each of them and Adams' own. The TTAB, however, considered that third-party registrations should not assist an applicant in registering marks that were likely to cause confusion with previously registered ones. Therefore, the TTAB concluded it was not bound by the prior decisions of examining attorneys in allowing marks for registration, since each case must be decided on its own facts.

Finally, as to the asserted lack of fame of the cited registrations, 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. The Board went on to explain that in an ex parte context, the factor of fame of the cited registrations is normally treated as neutral. Thus, balancing the pertinent factors from the oft-cited du Pont case addressing likelihood of confusion, the TTAB found confusion likely and affirmed the refusal.

Notwithstanding the above, the I AM mark in Class 9 proceeded to publication for the goods for which no refusal was made (i.e., the entire Class 9 identification, except "sunglasses and sunglasses cases associated with William Adams, professionally known as ‘will.i.am‘").

The Cited I AM Trademark Registrations

The owner of the cited I AM marks in Class 3 (Registration No. 2,045,626) is Danica Aromatics, Inc., a company run by Danica A. Siegel, who alleges to be an artist, student, and homemaker. Danica Aromatics sells a variety of beauty products, including perfume, hand crème, hand and body lotion, hand and body wash, travel candles, and fragrance sets. The goods are sold online via Danica Aromatics' website.

Danica Aromatics' mark was filed on November 20, 1995 as an actual use application with a claimed first use date anywhere of September 1, 1994 and in commerce of September 11, 1995. The mark was registered on March 18, 1997.

The cited I AM registration identifying goods in Classes 9 and 14 (Reg. No. 3,188,447) is owned by Beeline GmbH, a leading German supplier for jewelry and accessories with stores all over the world, including in the U.S. I AM is the company's costume jewelry brand for women. I AM's label YSTRDY completes its core jewelry collection with textile accessories, watches, and sunglasses, among other products.

Beeline's I am mark was initially filed on April 10, 2003 with a foreign filing basis, which then was amended to add an intent-to-use basis. During prosecution, Beeline's I am mark was initially rejected on the grounds of likelihood of confusion with registered trademark No. 2,433,68—I AM owned by Adams in Class 25.

Beeline overcame the rejection, and the PTO registered Beeline's mark on December 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, lapel buttons, all not of precious metal, in Class 26.

The other cited I AM registration in Class 14 (Reg. No. 3,935,952) is owned by an individual named Justin Finch, who presumably—that is, from the specimen submitted along with the statement of use—runs the website www.enjoyitlife.com. The site is owned by Enjoy It, LLC, a Florida company dedicated to capturing through photography and video "the beauty and joys life has to offer." The company sells wristbands with the legend "I AM..." and stainless steel spinner rings with the legend "I am grateful for..." Finch's mark was filed on June 12, 2009, as an actual use trademark application with a claimed first use date anywhere and in commerce of May 1, 2009.

Finch's I AM mark was initially rejected by the PTO as being merely a decorative or ornamental feature of the goods because of its size and location on them; thus, it did not function as a trademark to identify and distinguish Finch's goods from those of others and to indicate the source of his goods. Finch amended his application and sought registration on the Supplemental Register, which was ultimately granted on March 22, 2011.

will.i.am and Merchandise Sold Under Brands I AM and WILL.I.AM

William Adams' music career began in the summer of 1987, when as an eighth-grader he met fellow rapper Allan Pineda Lindo (known under the stage name apl.de.ap) and fellow student Dante Santiago (not known as da.sa.go!). Adams and Pineda Lindo began performing together around Los Angeles as the Black Eyed Pods. Later, Adams replaced Santiago with Jaime Gomez, better known under his stage name of Taboo. In 1997, the band changed its name to The Black Eyed  Peas, and began recording their first album, Behind the Front. They were soon signed to Interscope Records, and released their debut single, "Joints & Jam," in early 1998. The album was successful enough for the group's contract to be renewed, and in 2000, a second album, Bridging the Gap, was released.

Following the release of Bridging the Gap, Adams began recording his first solo release, Lost Change, the official soundtrack to the film of the same name. Featuring collaborations with Medusa, Planet Asia, and Terry Dexter, the album was a critical success. It was released on October 2, 2001 by Atlantic Records, and includes the song "I Am," co-written with Koliyah White. The album was supported by the release of the singles "I Am" and "Lay Me Down."

Before co-founding The Black Eyed Peas, Adams attended the Fashion Institute of Design & Merchandising in Los Angeles. In 2001, he began designing his own signature clothing line, i.am, which made its official debut in 2005 at the Magic apparel trade show in Las Vegas.

Adams sells online through his company several products under the marks I AM, WILL.I.AM, WILLPOWER, and ILL.I, including wristbands, t-shirts, hats, watches, stickers, posters, sweatshirts, and sunglasses, among others.

The I AM and WILL.I.AM Trademark Registrations

i.am.symbolic, llc, owns trademark registration No. 2,433,688 for the mark I AM, filed on May 3, 2000 as an actual use trademark application with a claimed first use date anywhere of March 1, 1999 and in commerce of June 15, 2000. The mark was registered on March 6, 2011, and covers clothing, namely hats, caps, socks, shirts, t-shirts, sweatshirts, tank tops, shorts, pants, sweatpants, and jeans, and footwear, namely shoes and boots, in Class 25.

i.am.symbolic, llc, owns trademark registration No. 3,678,106 for the mark WILL.I.AM, filed on February 6, 2009, with a claimed first use date anywhere and in commerce of October 2, 2001. The mark was registered on September 1, 2009, and covers a series of pre-recorded phonograph records, CDs, and audio cassettes featuring music, and a series of pre-recorded video tapes and DVDs featuring music videos and musical performances in Class 9.

i.am.symbolic, llc, owns trademark registration No. 3,707,981 for the mark WILL.I.AM, filed on February 9, 2009, with a claimed first use date anywhere and in commerce of June 30, 1989. The mark was registered on November 10, 2009, and covers entertainment services, namely live musical performances by a male artist and fashion designer in Class 41.

i.am.symbollic, llc, also owns several trademark applications for the word "I am" that have been published for opposition or allowed for registration subject to the filing of statements of use. These marks are I AM PLUS, I AM +, and WILL.I.AM in Class 9.

Alternative Argument: Tacking for I AM Mark in Class 9

In sewing, tacking is the step where a dressmaker will create dummy stitching of the full garment to check its fit before sewing the seams. So, fittingly enough for a pop star who once studied fashion and clothing, we arrive at the intriguing concept that could have offered an alternative avenue for argument to i.am.symbolic, llc: that of trademark tacking.

The facts of the case make the TTAB's decision predictable, since it is clear that all of the conflicting marks are identical to Adams' marks, and the parties' goods are similar or at least related to Adams' goods. Thus, Adams' arguments to overcome the alleged lack of likelihood of confusion between the marks were unpersuasive.

An alternative course of action—though only applicable for the I AM mark in Class 9—would have been to bring a cancellation action against Beeline's I AM mark, arguing priority rights over the mark in light of the previous existence of registered mark WILL.I.AM. In such case, Adams could try to rely on the tacking doctrine to argue that he has priority rights to the I AM mark over Beeline. Let's examine whether such a hypo¬thetical argument might have been successful.

It is important to recall that even though the registered WILL.I.AM mark (No. 3,678,106) in Class 9 was filed after Beeline's I AM mark, it was used two years before Beeline's.

In order to tack the I AM mark with the registered WILL.I.AM mark, Adams would have had to admit the likelihood of confusion between the I AM marks, to demonstrate that the I AM mark has the same commercial impression as the registered WILL.I.AM mark, and to show that the goods identified by both marks are the same, similar, or related.

In connection with the commercial impression factor, Adams would have had to demonstrate that the I AM mark conveys to prospective purchasers the same idea as the WILL.I.AM mark. In this regard, the TTAB found that Adams sought to register the mark I AM (no periods) and not WILL.I.AM. This alteration, among other considerations, made the TTAB conclude that the marks are significantly different.

In the past, the TTAB has advised that the general test of whether alterations are material is whether, if the mark were published in an application to register, the change "would require republication in order to present the mark fairly for purposes of opposition."

The Trademark Manual of Examining Procedure provides that punctuation such as periods generally does not significantly alter the commercial impression of a mark. See, e.g., In re Litehouse, Inc., 82 U.S.P.Q.2d 1471 (T.T.A.B. 2007). As a result, the applicant could argue that the alleged deletion of the periods in the I AM mark would not alter the commercial impression of the WILL.I.AM mark.

In Fifth Ave. of Long Island Realty Assocs. v. Caruso Mgmt. Co., the Court held that it may be easier to find a continuing commercial impression in registered trademarks where words are deleted as compared to when words are added. Thus, Adams could have argued that the deletion of the word "Will" and of the periods in the I AM mark should not be considered a substantial alteration of the mark for the commercial impression factor of the tacking test.

Regarding the relatedness of the goods identified by the marks, both of them protect musical sound recordings and musical video recordings, DVDs, and other audiovisual recordings. Consequently, both marks are used to identify similar or at least related goods.

Nevertheless, the tacking doctrine as an alternative course of action would only work for Adams' I AM mark in Class 9, because the other two WILL.I.AM registrations owned by Adams were granted for Classes 25 and 41; i.e., they identify goods and services not related with the goods identified by the I AM marks in Classes 3 and 14, and the tacking doctrine only applies for marks that protect identical or related products or services.

Alternative Argument: Right of Publicity Claim Against Owners of Cited Marks

Another alternative Adams might have considered is a state-based right-of-publicity claim against the owners of the cited registrations.

The right of publicity is the right of a person to control the commercial use of his or her name, visual likeness, vocal likeness, signature symbol, or other personal characteristics. No one else may use these personal characteristics for commercial purposes without the person's permission. The right may be assigned, licensed, and, in some jurisdictions, inherited.

In the United States, the right of publicity is a state-based right; each state can determine the parameters of recognition of the right of publicity. Most importantly, in more than half of states, celebrities can control the use of their image based on state common law and state statutory rights of publicity even when there is no consumer confusion.

A related justification recognizes that the celebrity not only loses any hypothetical license fee that he or she should have been paid for the use of his or her likeness. It also recognizes that he or she may suffer a harm similar to dilution: if the market is saturated with a celebrity image connected to a wide variety of products, the image loses value. In Hart v. Electronic Arts, Inc., the Court held "[T]he goal of maintaining a right of publicity is to protect the property interest that an individual gains and enjoys in his identity through his labor and effort."

Notwithstanding the above, courts have held that corporations do not have a cause of action for the right of publicity. Therefore, since corporations are not covered by most state statutes and common law publicity doctrines, in order to be able to file the right of publicity actions against the owners of the cited marks, Adams would have to assign the I AM marks from i.am.symbolic, llc, back to himself.

Based on past precedent, celebrity names are a valuable symbol. For instance, in Apple Corps Ltd. v. A.D.R.P. Inc., the Court found that the names John, Paul, George, and Ringo had, in combination, acquired secondary meaning. To succeed in a right-of-publicity action based on use of a name, Adams must demonstrate that the public is reasonably likely to identify him with the name he uses, an association akin to secondary meaning in trademark law.

Adams would have to claim the violation of his stage name, will.i.am, and not his birth name, William James Adams Jr. Nicknames are covered under the right of publicity, such as "The Greatest," for boxing legend Muhammad Ali, and "Spanky," for the actor who played that character in The Little Rascals television program. Courts have long held that if a celebrity's nickname or stage name is used without permission in a manner that implies endorsement of a product, or when the name is used to take advantage of the goodwill associated with the celebrity, relief is ordinarily available.

For this alternative right-of-publicity claim, the law of Adams' state of domicile would apply because the accused goods are sold in various states. In the record, when the application was originally filed by Adams, he declared Beverly Hills, California as his domicile. California is the source of many right of publicity cases; § 3344 of the California Civil Code prohibits "the unauthorized commercial use of name, voice, signature, photograph or likeness." As explained above, for this case the stage name will.i.am will be treated as the name of the celebrity.

The elements of state publicity claims vary, but some elements are common to most of the statutes and common law. A right-of-publicity plaintiff will likely need to show that the defendant used a name or likeness without authorization or consent; that the public associates the name or likeness with the plaintiff; that the use was commercial; and that the use caused the plaintiff harm.

For this hypothetical right-of-publicity claim under the California common law specified in Eastwood v. Superior Court, the following elements are applicable: "(1) the defendant's use of the plaintiff's identity; (2) the appropriation of plaintiff's name or likeness to defendant's advantage, commercially or otherwise; (3) lack of consent; and (4) resulting injury." The California Civil Code added the element of intent and requires that the defendant "knowingly" use plaintiff's name, voice, signature, photograph, or likeness on products or for purposes of advertising without consent.

First, Adams would have had to demonstrate successfully that the public associates him with the nickname I am, in order to satisfy the requirement of defendant's use of his identity. In this regard, the TTAB had considered that the record fell short of establishing that Adams is widely known by "i.am," or that "i.am" and "will.i.am" are used interchangeably by Adams or by the public to refer to him. Therefore, Adams would have had to submit some kind of new evidence—possibly a consumer survey that shows how much the public associates I am or i.am with the celebrity's stage name will.i.am.

Second, if Adams could have successfully shown that he is also widely known by i.am, he would then have been able to argue that the defendants appropriated his identity for commercial advantage in selling their products, misleading consumers to think they are somehow associated with will.i.am.

Third, the lack of consent from Adams to the owners of the cited registrations to use his stage name could be proved with the filing of the lawsuits and with the absence of any license agreement in the record of the registered cited marks. The resulting injury could be proved with the refusal of the PTO and the TTAB to registered applicant's marks.

The California statute requirement of intent might be the most difficult element for Adams to prove because there is nothing that seems to confirm a connection between him and the owners of the cited marks. However, for this element, Adams could rely on the fact that since the late 1980s he was known as will.i.am., when he began performing with the Black Eyed Pods. (One has to wonder: Would a song played on the radio back them have counted as a Pod.cast?) The oldest I AM cited registration (Danica Aromatics' mark) declared a date of first use anywhere and in commerce of 1994, a few years after Adams used the stage name "will.i.am." Therefore, though based on an analysis of relative fame it could be a stretch, Adams could then have argued that the owners of the cited registrations "knowingly" tried to take advantage of his fame by associating the goods identified with the cited I am marks with him.

Moreover, the WILL.I.AM registered mark (No. 3,707,981) stated a claimed first use date anywhere and in commerce of June 30, 1989; it predates by at least five years Danica Aromatics' alleged first use of the I am mark. Adams could argue that when conducting a trademark clearance search to secure the availability of the I am marks, the owners of the cited registrations could have clearly found the previous existence of the WILL.I.AM mark and tried to take advantage of its fame.

At this point it is important to remember that proving a violation of any particular state's right-of-publicity law differs significantly from proving infringement of a trademark or a false sponsorship claim under the Lanham Act. To prove infringement, a trademark owner must demonstrate likelihood of confusion as to the source of the product or service in connection with which the mark is used. Similarly, to prove false endorsement under the Lanham Act, a plaintiff must show that consumers would likely believe that the plaintiff sponsored the product.

On the other hand, if a celebrity's name or likeness is used without permission, a state right-of-publicity remedy may be afforded even without proof that confusion is likely. Indeed, it is the plaintiff's economic right to be remunerated that the legal right of publicity protects, not the equivalent of the trademark goodwill of a manufacturer or even the public's right not to be confused. Adams would not even have had to demonstrate any likelihood of confusion between his nickname will.i.am and the cited I am marks, as long as he could have shown the existence of the elements of a right of publicity claim in California.

In sum, state right of publicity law does not require a showing of consumer confusion and is not based on protecting consumers. Instead, such laws are designed to protect an individual's right to remuneration and prevent misappropriation and unjust enrichment from the theft of goodwill. In Zacchini v. Scripps-Howard Broadcasting Co., the Court held "[T]he rationale for [protecting the right of publicity] is the straightforward one of preventing unjust enrichment by the theft of good will. No social purpose is served by having the defendant get free some aspect of the plaintiff that would have market value and for which he would normally pay." Thus, in this hypothetical right of publicity claim, Adams would have to show only that the owners of the cited registrations tried to take advantage of his stage name by associating their goods with it.

Alternative Argument: Cancellation on Grounds of False Suggestion of Connection

The Lanham Act also protects publicity rights by providing statutory bars to registration. Section 2(a) prohibits registration of trademarks that "falsely suggest a connection with persons." The protection extends to famous people whether or not they have used or registered their name, portrait, signature, or identity as a trademark.

Consequently, Adams could have also considered filing a cancellation action against the owners of the cited registration for falsely suggesting a connection between their I am marks and him. In this course of action, Adams would have again faced the issue of the lack of similarity between his I AM application and his stage name WILL.I.AM. In this regard, the trick here would be that Adams could rely on his single "I AM," released in 2001 with his first solo album, instead of on his stage name WILL.I.AM.

According to past precedents of the TTAB, under § 2(a) a party acquires a protectable interest in a name (or its equivalent, such as a song) where the name claimed to be appropriated points uniquely and unmistakably to that party's personality or "persona." A party's interest in such a name or designation does not depend for its existence on the adoption and use of a technical trademark. Thus, an opposer or petitioner in a proceeding of this character may prevail even if the name claimed to be appropriated has never been commercially exploited by the opposer or petitioner in a trademark or trademark-analogous manner. Similarly, though there may be no likelihood of confusion as to the source of the goods, even under a theory of sponsorship or endorsement, an opposer's or petitioner's right to control the use of its identity may nevertheless be violated.

The TTAB requires that a plaintiff asserting a claim that a mark falsely suggests a connection with persons, living or dead, or institutions, demonstrate (i) that the defendant's mark is the same or a close approximation of the plaintiff's previously used name or identity; (ii) that the mark would be recognized as such; (iii) that the plaintiff is not connected with the activities performed by the defendant under the mark; and (iv) that the plaintiff's name or identity is of sufficient fame or reputation that when the defendant's mark is used on its goods or services, a connection with the plaintiff would be presumed.

To meet the aforementioned requirements, Adams could argue that (i) the cited marks are the same as the "I AM" song; that (ii) since the famous song was released before the filing date and date of first use of all the cited I am marks (except Danica Aromatics' mark), the public would recognize them as the song; that (iii) he is not connected with the activities performed by the owners of the cited registrations; and that (iv) the "I AM" song was the first solo single of celebrity will.i.am., thus it is famous enough to prove that when it is used as a trademark for the goods identified by the cited registrations, a connection with will.i.am is easily presumed.

To support his contention, Adams could rely on Jimmy Buffett v. Chi-Chi's Inc., where singer Jimmy Buffett was able to contest a trademark for MARGARITAVILLE filed by a Mexican restaurant chain. "Margaritaville" was the title of Buffett's most famous song, and he offered evidence that the public associates it with him and that he had previously licensed the name.

In Jimmy Buffett, the singer submitted evidence that provided specific factual support for his allegations that the song "Margaritaville" and that Buffett himself were well-known. There was also evidence in the record in support of the singer's claim that the public mind, in fact, associated the term "MARGARITAVILLE" with the public persona of Jimmy Buffett. In addition, the singer submitted affidavits where each of the affiants attested to the fact that he regarded "MARGARITAVILLE" as so closely associated with the singer as to be considered "synonymous with" and "almost a nickname of" Jimmy Buffett. Such evidence was sufficient to raise a genuine issue of material fact as to whether the term "MARGARITAVILLE" was so uniquely and unmistakably associated with Buffett as to constitute his name or identity, that when applicant's mark was used in connection with its services, a connection with him would be assumed.

Conceivably, this strategy could work against the owners of all the cited I AM registrations—notably, excepting Danica Aromatics'—because it is the only mark that predates use anywhere and in commerce the release of the "I AM" song.

It is tempting to offer conjecture about the potential outcomes of different legal strategies, and because of its complex tangle of I AM registrations and the relative fame of the marks, this case is ripe for such conjecture. While no one knows how any of these possibilities might have played out, when a case involves a famous singer with an intriguing stage name who is trying to extend that name into other marketing channels, the legal situation is full of possibilities.


Copyright 2016 © by the American Bar Association. Reprinted with permission. All rights reserved. This information or any or portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar.

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