from the United States Patent and Trademark Office, Trademark
Trial and Appeal Board in Nos. 85/044, 494, 85/044, 495,
Maria Pietrini, Sheppard Mullin Richter & Hampton LLP,
Los Angeles, CA, argued for appellant. Also represented by
Christina Hieber, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Joseph Matal. Also represented by Nathan K. Kelley,
Thomas L. Casagrande, Mary Beth Walker, Marynelle W. Wilson.
Prost, Chief Judge, Lourie and Schall, Circuit Judges.
Lourie, Circuit Judge.
llc ("Symbolic") appeals from decisions of the U.S.
Patent and Trademark Office ("the PTO") Trademark
Trial and Appeal Board ("the Board") affirming the
examining attorney's refusal to register the mark I AM
("the mark") in standard characters for goods in
International Classes ("classes") 3, 9, and 14 on
the ground of a likelihood of confusion with registered
marks. See In re i.am.symbolic, llc, 116 U.S.P.Q.2d
1406 (T.T.A.B. Oct. 7, 2015) (Symbolic I); In re
i.am.symbolic, llc, No. 85044495, 2015 WL 6746544 (Oct.
7, 2015) (Symbolic II); In re i.am.symbolic,
llc, No. 85044496, 2015 WL 6746545 (Oct. 7, 2015)
(Symbolic III). Because the Board did not err in its
likelihood of confusion conclusion, we affirm.
owns the mark I AM (typed drawing) for "clothing,
namely, hats, caps, socks, shirts, t-shirts, sweatshirts,
tank tops, shorts, pants, sweatpants, jeans, swim wear,
swimsuits, beachwear and footwear, namely, shoes, athletic
footwear, boots, clogs, sneakers and sandals" in class
25 ("class 25 registration"). Symbolic I,
116 U.S.P.Q.2d at 1408. It also owns the mark WILL.I.AM
(standard characters) for certain goods in class 9 and
services in class 41. Id.
Applications and Rejections
predecessor-in-interest, William Adams ("Adams"),
filed trademark applications for registration of the mark for
goods in classes 3, 9, and 14 on an intent-to-use basis under
15 U.S.C. § 1051(b). The examining attorney refused
registration on the ground of likelihood of confusion with
previously registered I AM marks pursuant to 15 U.S.C. §
1052(d) for the same or similar goods. The applications were
amended during prosecu- tion to include with the
identification of goods the statement "associated with
William Adams, professionally known as
'will.i.am'" (the "will.i.am
identification of goods for class 3, as amended, recites:
Cosmetics; artificial eyelashes; body powder;
incense; nonmedicated lip balm; non-medicated hair care
preparations; non-medicated nail care preparations;
nonmedicated skin care preparations; makeup remover;
massage oils; essential oils for personal use;
shaving creams and gels and depilatory creams and gels;
shower and bath gels, bath crystals, milks, oils, bubble
bath, powders and salts; soaps and detergents; sun
screen and sun tanning preparations; toothpaste and
mouthwash, all associated with William Adams,
professionally known as "will.i.am" (in
International Class 3).
Symbolic I, 116 U.S.P.Q.2d at 1408 (emphases added).
The examining attorney refused registration due to a
likelihood of confusion with the previously registered mark I
AM (typed form) for "perfume" in class 3
("Siegel Registration"). Id.
identification of goods for class 9, as amended, recites, in
relevant part: "sunglasses and sunglass cases
associated with William Adams, professionally known as
will.i.am." Symbolic II, 2015 WL 6746544,
at *1 (emphasis added). The examining attorney refused
registration due to a likelihood of confusion with the
previously registered mark ¶ for
"sunglasses" in class 9 ("Beeline
Registration"). Id. at *2.
identification of goods for class 14, as amended, recites:
Brass wrist cuff bracelets; clocks; jewelry, namely, dog tags
for wear by humans for decorative purposes; jewelry;
jewelry boxes; jewelry sets, namely, necklaces, earrings
and bracelets; key holders, rings and chains of precious
metal; lapel pins; medals; ornamental pins, rubber
wristbands in the nature of bracelets; silver wrist cuff
bracelets; sun dials; watch bands; watch bracelets; watch
cases; watches; wrist bands of imitation leather; wrist
bands of leather; and jewelry made of resin, namely,
wrist cuffs of resin, all associated with William Adams,
professionally known as "will.i.am" (in
International Class 14).
Symbolic III, 2015 WL 6746545, at *1 (emphases
examining attorney refused registration on the ground of a
likelihood of confusion with the previously registered marks
'**«_ for "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 (Beeline Registration) and I AM
(standard character form) for "silicone stretchable
wrist band in the nature of a bracelet" in class 14
("Finch Registration"and, collectively with the Siegel
Registration and Beeline Registration, "registrants'
appeal, the Board affirmed the examining attorney's
refusals to register the mark based on a likelihood of
confusion. The Board first rejected Symbolic's arguments
based on the will.i.am restriction. It explained:
[W]e view the language "associated with William Adams,
professionally known as 'will.i.am'" in
[Symbolic's] identification of goods as merely
highlighting an association with [Symbolic's] presumed
principal, Mr. Adams. Contrary to [Symbolic's] assertion,
we do not see the language as imposing a meaningful
limitation on [Symbol-ic's] goods in any fashion, most
especially with respect to either trade channels or class of
purchasers. The language does not, in any meaningful
way, alter the nature of the goods identified; nor does it
represent that the goods will be marketed in any particular,
limited way, through any particular, limited trade channels,
or to any particular class of customers. It does not even
represent that Mr. Adams will be named, or otherwise
identified, in the promotion of the goods. The language
"associated with William Adams, professionally known as
'will.i.am'" is precatory language, and
not binding on consumers when they encounter Applicant's
Symbolic I, 116 U.S.P.Q.2d at 1409-10 (emphases
added); Symbolic II, 2015 WL 6746544, at *4
(emphases added); Symbolic III, 2015 WL 6746545, at
*4 (emphases added).
Board found that Adams is the well-known front man for the
music group The Black Eyed Peas and is known as will.i.am.
The Board also found, however, that the record did not
establish that Adams is "widely known by 'i.am'
(as opposed to 'will.i.am'), or that 'i.am'
and 'will.i.am' are used interchangeably by either
Mr. Adams or the public, " and rejected Symbolic's
arguments based on its ownership of the class 25
registration. Symbolic I, 116 U.S.P.Q.2d at 1410;
Symbolic II, 2015 WL 6746544, at *4; Symbolic
III, 2015 WL 6746545, at *4.
Board then addressed the DuPont Factors. See In
re E. I. duPont deNemours & Co., 476 F.2d 1357 (CCPA
1973). The Board found that the legal or literal identity of
the marks; the similarity or the identity of the goods; and
the identity of the trade channels and purchasers, as well as
the conditions of sale, favored a likelihood of confusion
conclusion. Symbolic I, 116 U.S.P.Q.2d at 1411-12;
Symbolic II, 2015 WL 6746544, at *5-8; Symbolic
III, 2015 WL 6746545, at *5-7. The Board also found that
the "purported lack of fame" of registrants'
marks was of "little consequence" and noted that
"[t]o the extent that Mr. Adams and [Symbolic's]
mark are well-known, such fact supports refusal of
[Symbolic's] application, because when confusion is
likely, it is the ...