Friday, October 09, 2015

Precedential No. 38: Fame of "" Can't Save "I AM" Trademark Applications From 2(d) Bar

In three separate opinions, the Board affirmed Section 2(d) refusals to register the mark I AM for cosmetics and personal products in class 3, for sunglasses and sunglass cases in class 9, and for jewelry, watches, and other goods, including "rubber wristbands in the nature of bracelets" in class 14, "all associated with William Adams, professionally known as," in view of the registered marks I AM for perfume, I AM (Stylized) for sunglasses and jewelry, and I AM for "silicone stretchable wrist band in the nature of a bracelet." In re, llc, 116 USPQ2d 1406 (TTAB 2015) [precedential].

William Adams, known as "," became well-known as a member of the musical group, The Black-Eyed Peas. Applicant, his assignee, maintained that there was no likelihood of confusion because its marks identify its founder, "," its goods are exclusively associated with him, the goods under the cited marks are marketed differently, and the cited marks are not famous.

Regarding the language in the applications that the goods are all "associated with William Adams, professionally known as ','" the Board did not find that to be a meaningful limitation on the goods, the trade channels, or the classes of consumers. The language is merely "precatory" and not binding on consumers when they encounter the applied-for mark. Purchasers are unlikely to know of the statement in the registration that applicant's goods are limited to those associated with Mr. Adams.

Applicant contended that the applied-for mark will be perceived as identifying Mr. Adams, but the Board pointed out that mark is I AM, not WILL.I.AM. The evidence did not establish that Mr. Adams is widely known as "," or that "" and "" are used interchangeably by Mr. Adams or the public.

Moreover, even if Mr. Adams were known as "" and even if the applied-for mark had gained notoriety, the Trademark Act still protects the senior user from "adverse impact due to use of a similar mark by a newcomer" - i.e., reverse confusion.

The language in the identification of goods simply is not a reasonable basis to assume that purchasers would be able to distinguish the source of such goods from those emanating from the prior Registrant. As we view it, the language essentially is a distinction without a difference for purposes of our likelihood of confusion analysis.

The differences in the way applicant's goods and the goods of the cited registrations are marketed are, of course, irrelevant, since the Board must make its Section 2(d) determination based on the goods as identified in the application and the registration. Here there were no limitations in that regard.

Finally, as to the asserted lack of fame of the cited mark, the Board observed that, given the nature of the evidence required to prove fame, an examining attorney is not required to establish the fame of a cited mark. In an ex parte context the factor of fame is normally treated as neutral.

Balancing the pertinent du Pont factors, the Board found confusion likely and it affirmed all three refusals.

Read comments and post your comment here.

TTABlog comment: Applicant's only chance was to sell the "fame" concept, but celebrity fame doesn't work. See, for example, the RINGO case, TTABlogged here, and the KUTT KALHOUN case, TTABlogged here. Some people refer to these as "noisufnoc" cases, i.e., reverse(d) confusion. Just plug "reverse confusion" into the TTABlog search engine and see what you get.

What if applicant's mark had been "I AM by"? Probably same result, I think.

BTW, I'm counting these three decisions as one precedential ruling, since the opinions are to a large extent identical.

Text Copyright John L. Welch 2015.


At 8:34 AM, Blogger RT said...

Preclusive under B&B? I'd think not, but I await further information.


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