Recently, musician and entrepreneur William Adams, a/k/a will.i.am, who was a member of the musical group Black Eye Peas, was denied a trademark registration for the term “I AM”. I.am.symbolic, LLC, a company affiliated with will.i.am, filed the trademark application for “I AM” for use in connection with various goods, including without limitation cosmetics, makeup remover, massage oils, sunscreen, toothpaste and mouthwash. The trademark application states that these goods are “all associated with Willliam Adams, professionally known as will.i.am.”
The trademark examiner rejected the application due to likelihood of confusion with a previously registered trademark of a third party for the term “I AM”, which is used on perfume products. This rejection was appealed by will.i.am, who argued that the goods cited in his company’s application were dissimilar due to the language added to the application stating that the goods are associated with him and that the term “I AM” is a natural extension of previously registered marks owned by his company. The Trademark Trial and Appeal Board (“TTAB”) rejected the argument that the added language “associated with William Adams, professionally, known as ‘will.i.am’” ensures that consumers are not confused as to the source of the respective goods of each party, because such language does not alter the nature of goods or that the goods will be marketed or limited in a particular way to avoid consumer confusion. Further, the TTAB reasoned that such language does not show that will.i.am will be identified in the promotion of the goods or that will.i.am is otherwise known by the term “I AM”.
The TTAB upheld the trademark examiner’s denial based on a finding that the two “I AM” trademarks were too similar and were likely to confuse consumers as to the source of the respective goods. Please contact our office if you have any questions regarding the information in this article.