William Adams (aka “will.i.am”) member of the well-known music group, The Black Eyed Peas filed a trademark application for the mark I AM at the United States Patent & Trademark Office. The trademark application identified products in international class 3 including but not limited to cosmetics, fragrances, beauty products and personal care products. The Examining Attorney refused registration on the ground of likelihood of confusion. The cited mark was a prior registration for the identical trademark I AM for perfume in international class 3. William Adams appealed to the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) and after filing the appeal assigned the trademark application to i.am.symbollic, llc (the “Applicant”). See In re i.am.symbollic, llc Serial No. 85044494 (TTAB October 7, 2015).
The Applicant insisted that the language included in the identification of goods distinguished the goods from those cited in the prior registration. Specifically, the identification of goods states that the goods are “associated with William Adams, professionally known as ‘will.i.am.’ “. The Applicant alleges that the marks are marketed differently, the cited mark is not famous, and most importantly the goods identify Applicant’s founder “will.i.am”. The Applicant further argues that since the goods are exclusively associated with the famous front man of the band, The Black Eyed Peas (will.i.am.) there cannot be confusion with the cited mark I AM for perfume.
The primary inquiry with a likelihood of confusion analysis is the cumulative effect of differences in the essential characteristics of the goods and differences between the marks. The test is the recollection of the average consumer. Likelihood of confusion will be found if there is any confusion with any items included in the identification of goods that could possibly cause confusion between the sources of the goods. See Apple Computer v. TVNET.Net, Inc., 90 USPQ2d 1393 (TTAB 2007). In making the determination as to the relatedness of the goods, the evaluation must be based on the language used in the identification of the goods or services.
The Board found the crux of Applicant’s argument regarding the language in the identification of goods to be unpersuasive. Consumers are not privy to the language contained in the identification of goods. The language alone that identifies the goods with William Adams aka will.i.am. does not obviate confusion. In order for the identification of goods to have a meaningful limitation on the goods or services, the language must effectively communicate that the goods will be marketed in a particular way to eliminate a likelihood of confusion, such as limiting trade channels or restricting the goods and or services to particular classes of consumers.
In this case, even though the marks are identical, if the Examiner determined that the goods were not necessarily related, traveled in different trade channels, or were utilized by different classes of purchasers then, perhaps confusion would not be found. Unfortunately for the Applicant, the language he included in the identification of goods did not restrict the marketing channels or classes of consumers. Therefore, the Board assumed that the goods traveled through all the typical channels of trade. This means that the goods at issue, fragrances would be sold by retailers, online retailers and beauty departments of chain stores.
In addition, after review of the evidence, the Board held that the subject products were relatively low priced and subject to impulse purchases. This increases the risk of likelihood of confusion. Moreover, the Board gave little weight to the alleged lack of fame of the cited registration. In the end, the Board concluded that the weighing of the du Pont factors led to a finding of likelihood of confusion between the Applicant’s I AM mark and the registrant’s I AM trademark. We are experienced at making likelihood of confusion determinations, and if you need assistance with an ex parte appeal or with another trademark matter, please contact our office for a courtesy consultation.