i.am.symbolic, llc

Trademark Trial and Appeal Board

Oct 7, 2015

No. 85044495 (T.T.A.B. Oct. 7, 2015)

This Opinion is not a
Precedent of the TTAB

Hearing: Mailed:
January 15, 2015 October 7, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
________

In re i.am.symbolic, llc
________

Serial Nos. 85044495
_______

Jill M. Pietrini of Sheppard Mullin Richter & Hampton,
for i.am.symbolic, llc.

Timothy J. Finnegan, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
_______

Before Quinn, Taylor, and Shaw,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
i.am.symbolic, llc (“Applicant”), by way of assignment from William Adams, filed
an application to register the mark I AM (in standard characters) for the goods
ultimately identified as (emphasis added)1:
Cameras; cell phones and accessories therefor, namely,
decorative charms, hands-free headsets, batteries and
chargers, power adapters, face plates, belt clips and
holsters, and mounting devices; cases or fitted plastic
skins for scratch protection for cameras, cell phones,

1 After the appeal was filed the application was assigned in a document executed on July
19, 2013; the assignment document was recorded on July 25, 2013 in the Assignment
Branch records of the Office at reel 5078, frame 0946.
Application Serial No. 85044495

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laptop computers, PDAs, portable music players,
handheld gaming devices, and handheld global
positioning devices; PDAs; portable global positioning
devices; portable music players; mobile radios; computer
and video games, namely, cartridges, discs, software,
controllers, and consoles for use with an external display
screen or monitor; backpacks adapted for holding laptop
computers; computer storage devices, namely, flash
drives; computer hardware and computer peripherals;
computer storage devices, namely, high-speed storage
subsystems for storage and backup of electronic data
either locally or via a telecommunications network;
downloadable electronic, digital or computer games,
graphics, ring tones and multi-media files; downloadable
audio and video files featuring music, dramatic and
comedic performances; digital trading cards in the nature
of multimedia software recorded on magnetic media
featuring musical, dramatic and comedic content;
answering machines; baby monitors; decorative magnets;
electric door bells; electric hair dryers, irons and curlers;
electronic diaries; eyeglasses and eyeglass cases;
headphones and earphones; juke boxes; lighted displays
for outdoor use in the nature of LED displays; mouse
pads; neon signs; safety eyewear; slot machines; sporting
helmets; sunglasses and sunglass cases associated with
William Adams, professionally known as “will.i.am”;
switch plate covers; educational software featuring
instruction in health and well-being; motion picture films,
downloadable television programs, and documentary
motion picture films featuring dramatic, comedic and
musical performances; musical sound recordings; musical
video recordings; and pre-recorded DVDs, videotapes, and
other audiovisual recordings featuring musical, dramatic
and comedic performances (in International Class 9).2

The Trademark Examining Attorney refused registration under Section 2(d) of
the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when

2 Application Serial No. 85044495, filed May 21, 2010, alleging a bona fide intention to use
the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).
Applicant, in its Supplemental Brief filed on April 21, 2014, requested that its application
be amended as highlighted above. (Supplemental Brief, p. 3, 17 TTABVUE 3). The
Examining Attorney, in his brief filed on June 8, 2014, accepted the amendment. (Brief, pp.
3, 6, 19 TTABVUE 4, 7).
Application Serial No. 85044495

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applied to Applicant’s goods (“sunglasses and sunglass cases”), so resembles the
previously registered mark shown below

for “sunglasses” in International Class 9,3 as to be likely to cause confusion.4
The crux of Applicant’s position centers on the purported dissimilarity of its
goods and the goods of Registrant due to the specific language highlighted above in
Applicant’s identification of goods (namely, the language “associated with William
Adams, professionally known as ‘will.i.am’”). After a final refusal issued, Applicant
appealed. Applicant’s counsel and the Examining Attorney filed briefs, and both
appeared at an oral hearing. We affirm the refusal of registration. See In re
i.am.symbolic, llc, ___USPQ2d___, S.N. 85044494 (TTAB Oct. 7, 2015).
Background
William Adams is an American musician known by his stage name “will.i.am” as
the front man of the music group The Black Eyed Peas. The evidence shows that

3 Registration No. 3188447, issued December 26, 2006; Section 8 affidavit accepted. The
registration is owned by Beeline GmbH.
4 The Examining Attorney, in the final refusal dated October 6, 2013 (as shown in the
USPTO’s TSDR database), indicated that Applicant’s options included deletion of
“sunglasses and sunglass cases” from the identification or a request to divide out the other
goods in Class 9 to which the refusal did not pertain, pursuant to Trademark Rule 2.87. See
generally TMEP §§ 1110 et seq. (July 2015) (regarding the requirements for filing a request
to divide). However, Applicant did not file a request to divide. See TBMP §§ 1202.05,
1205.02 (2015). Nevertheless, it is clear from both the Examining Attorney’s final refusal
and appeal brief that the refusal to register pertains to only “sunglasses and sunglass
cases” in the application. TBMP § 1202.05 provides, in pertinent part, that if no request to
divide is filed, after the appeal is decided, the application, containing only those goods for
which no refusal was made (and any goods for which the refusal has been reversed), will be
published for opposition. Accordingly, the application will proceed with the remaining goods
in Class 9.
Application Serial No. 85044495

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Mr. Adams became well-known as a member of that highly successful group, and
that he has embarked in expanding his career beyond music, to acting, fashion and
political advocacy. Applicant, by way of assignment from Mr. Adams, owns the
following registrations: WILL.I.AM (in standard characters) for “series of pre-
recorded phonograph records, CDs and audio cassettes featuring music; series of
pre-recorded video tapes and DVDs featuring music videos and musical
performances” in International Class 9;5 and for “entertainment services, namely,
live musical performances by a male artist; and fashion designer” in International
Class 41;6 and I AM (typed drawing) for “clothing, namely, hats, caps, socks, shirts,
t-shirts, sweatshirts, tank tops, shorts, pants, sweatpants, jeans, swimwear,
swimsuits, beachwear and footwear, namely, shoes, athletic footwear, boots, clogs,
sneakers and sandals” in International Class 25.7 As discussed further below,
Applicant contends that its I AM mark now sought to be registered is a natural
extension of its registered WILL.I.AM and I AM marks, and “conveys the synthesis
of [Mr. Adams’] own artistry, expression, and activism.” (Response, March 14,
2011).
Discussion
Applicant contends that there is no likelihood of confusion because its mark
identifies Applicant’s founder “will.i.am”; Applicant’s goods are exclusively

5 Registration No. 3678106, issued September 1, 2009 on the Supplemental Register.
6 Registration No. 3707981, issued November 10, 2009.
7 Registration No. 2433688, issued March 6, 2001; renewed. Prior to November 2, 2003,
“standard character” drawings were known as “typed” drawings. A typed mark is the legal
equivalent of a standard character mark. TMEP § 807.03(i).
Application Serial No. 85044495

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associated with Applicant’s founder “will.i.am”; the goods under the respective
marks are marketed differently; and the cited mark is not famous.
Applicant filed excerpts of Registrant’s website. The Examining Attorney
introduced copies of numerous third-party registrations.
Our determination under Section 2(d) is based on an analysis of all of the facts
in evidence that are relevant to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). “In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods.” In re SL&E
Training Stable, Inc., 88 USPQ2d 1216, 1217 (TTAB 2008). See also Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)
(“The fundamental inquiry mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods and differences in the
marks.”).
In determining the issue of likelihood of confusion, we are guided by the
following legal principles that pertain to the first and second du Pont factors. With
respect to the first du Pont factor, we must compare the marks in their entireties as
to appearance, sound, connotation and commercial impression to determine the
similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting In re E. I. du Pont de Nemours & Co., 177 USPQ at 567). “The
proper test is not a side-by-side comparison of the marks, but instead ‘whether the
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marks are sufficiently similar in terms of their commercial impression’ such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Inter IKEA Sys. B.V. v. Akea, LLC, 110
USPQ2d 1734, 1740 (TTAB 2014); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975).
With respect to the second du Pont factor regarding the relatedness of the goods,
we must look to the goods as identified in the application and the cited registration.
See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1162 (Fed. Cir. 2014), (quoting Octocom Sys., Inc. v. Houston
Computer Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re
Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
“Associated With” Language in Identification of Goods
We first address Applicant’s main argument against the refusal, that is, that the
language “associated with William Adams, professionally known as ‘will.i.am’” in its
identification of goods ensures that consumers are unlikely to be confused as to the
source of the goods. Applicant contends that its goods represent a creative extension
of Mr. Adams’ growing commercial interests beyond music. However, we view the
language “associated with William Adams, professionally known as ‘will.i.am’” in
Applicant’s identification of goods as merely highlighting an association with
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Applicant’s presumed principal, Mr. Adams.8 Contrary to Applicant’s assertion, we
do not see the language as imposing a meaningful limitation on Applicant’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 mark. Cf.
M2 Software Inc. v. M2 Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944
(Fed. Cir. 2006) (based on restrictions to specific industries in both of the
identifications of goods in Opposer’s registration and Applicant’s application, the
goods are unrelated and travel in different trade channels to different purchasers).
Purchasers are unlikely to know of the assertion in a registration issued to
Applicant that Applicant’s goods are limited to those associated with Mr. Adams.
Applicant also argues that its mark will be perceived as identifying Mr. Adams,
and that this perception will, in some way, affect the marketing of the goods and the
customers to whom they are directed. It should be noted, however, that Applicant is
seeking to register the mark I AM, not WILL.I.AM. The record falls short of
establishing that Mr. Adams is widely known by “i.am” (as opposed to “will.i.am”),

8 As indicated earlier, Mr. Adams transferred his rights in the applied-for mark and
ownership of the application to Applicant. In the appeal brief, Mr. Adams is referred to as
Applicant’s “founder and manager.” (12 TTABVUE 4).
Application Serial No. 85044495

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or that “i.am” and “will.i.am” are used interchangeably by either Mr. Adams or the
public; Applicant’s registration for the mark I AM (which it acquired by assignment)
does not persuade us to the contrary. In this connection, we note that Applicant’s
registration for the mark WILL.I.AM includes a statement that “[t]he name shown
in the mark identifies a living individual whose consent to register is of record.”
Although the lack of such a statement is not proof that a mark does not identify a
particular living individual, we note Applicant’s registration for the mark I AM for
clothing does not include such a statement.
Applicant is seeking to register the mark I AM (no periods), and not WILL.I.AM.
Even if we were to accept Applicant’s contention that Mr. Adams is known by “i.am”
and that this brand has gained notoriety, the statute still “protects the registrant
and senior user from adverse commercial impact due to use of a similar mark by a
newcomer.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir.
1993). As the Federal Circuit stated:
The term “reverse confusion” has been used to describe
the situation where a significantly larger or prominent
newcomer “saturates the market” with a trademark that
is confusingly similar to that of a smaller, senior
registrant for related goods or services. Sands, Taylor &
Wood Co. v. Quaker Oats Co. , 978 F.2d 947, 957 & n.12,
24 USPQ2d 1001, 1010 & n.12 (7th Cir. 1992), cert. denied,
61 U.S.L.W. 3621 (U.S. Apr. 19, 1993) (No. 92-1400). The
junior user does not seek to benefit from the goodwill of
the senior user; however, the senior user may experience
diminution or even loss of its mark's identity and goodwill
due to extensive use of a confusingly similar mark by the
junior user. Banff, Ltd. v. Federated Department Stores,
Inc., 841 F.2d 486, 490, 6 USPQ2d 1187, 1191 (2d Cir.
1988); Ameritech, Inc. v. American Information
Application Serial No. 85044495

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Technologies Corp., 811 F.2d 960, 966, 1 USPQ2d 1861,
1866 (6th Cir. 1987).
The avoidance of confusion between users of disparate
size is not a new concept; however, the weighing of the
relevant factors must take into account the confusion that
may flow from extensive promotion of a similar or
identical mark by a junior user. See DeCosta v. Viacom
International Inc., 981 F.2d 602, 607-10, 25 USPQ2d
1187, 1191-93 (1st Cir. 1992).
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.
We now turn to consideration of the relevant du Pont factors. We state, at the
outset, that we have carefully considered all of the evidence made of record
pertaining to the issue of likelihood of confusion, as well as all of the arguments
related thereto, including any evidence and arguments not specifically discussed in
this opinion.
Relatedness of the Goods and Channels of Trade
We begin our analysis with the second du Pont factor, which deals with the
similarity of the goods. Applicant’s goods in Class 9 are identified, in part, as
“sunglasses and sunglass cases associated with William Adams, professionally
known as ‘will.i.am’”; Registrant’s goods are identified in part as “sunglasses.”
Although we have considered the additional language in Applicant’s identification
when comparing these goods, we reiterate that we see it as a distinction without a
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difference for purposes of our analysis. We find the goods to be essentially identical,
and this factor weighs heavily in favor of a likelihood of confusion.
Further, because we do not view the additional language as restricting
Applicant’s identification, we presume that the goods travel through all usual
channels of trade and are offered to all normal potential purchasers. These trade
channels would include optical sections of department stores, online retailers, and
retail stores specializing in sunglasses. See In re Yawata Iron & Steel Co., 403 F.2d
752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the
channels of trade and classes of purchasers are considered to be the same);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith & Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was entitled to rely on this
legal presumption in determining likelihood of confusion). The classes of purchasers
would include ordinary consumers, who would be expected to exercise nothing more
than ordinary care in purchasing sunglasses and sunglass cases and, because
sunglasses can be inexpensive items, may even purchase them on impulse. “When
products are relatively low-priced and subject to impulse buying, the risk of
likelihood of confusion is increased because purchasers of such products are held to
a lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1899 (Fed. Cir. 2000); Specialty Brands, Inc. v. Coffee Bean
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Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1282 (Fed. Cir. 1984). The identity
in trade channels and purchasers and the conditions under which and buyers to
whom sales are made are factors that weigh in favor of a finding of a likelihood of
confusion.
Similarity of the Marks
We now turn to the first du Pont factor, which deals with the similarity of the
marks. We are mindful that where, as here, the goods are legally identical, the
degree of similarity between the marks necessary to find likelihood of confusion
need not be as great as where there is a recognizable disparity between the goods.
Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721; Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed.
Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);
Schering-Plough HealthCare Prods. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323, 1325
(TTAB 2007).
The marks are similar in appearance due to the common element I AM, which
comprises the entirety of each mark. Moreover, because Applicant’s mark is in
standard characters, the marks may be considered to be legally identical. The
stylization of Registrant’s mark is insufficient to distinguish it from Applicant’s
mark. Because Applicant’s mark is presented in standard characters, Applicant is
not limited to any particular depiction of its mark. Thus, if Applicant were to obtain
a registration, Applicant would be entitled to all depictions of its standard character
mark regardless of the font style, size, or color; Applicant’s mark could at any time
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in the future be displayed in a manner similar to Registrant’s mark, that is, the
terminology I AM displayed in the same font style and size. In re Viterra Inc., 101
USPQ2d at 1909-10; Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1259 (Fed. Cir. 2011). See Squirtco v. Tomy Corp., 697 F.2d 1038,
216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument that a mark in standard
character format (typed) is distinct from a mark in a stylized format; “[b]y
presenting its mark in a typed drawing, a difference cannot legally be asserted by
that party”).
The marks are identical in sound. As to connotation, there is also no question
that typical customers know the meaning of the words I AM; accordingly, both
marks would immediately be perceived to have the same literal meaning.
Applicant also refers to excerpts of Registrant’s website in an attempt to show
that the marks are somehow different, with Registrant’s mark representing a
“declaration of love to a modern and feminine lifestyle,” which “is consistent with
the informal and feminine flair conveyed by the highly cursive, lower-case font style
of the mark.” (Brief, p. 11, 12 TTABVUE 14). Regardless of how Applicant or
Registrant currently intends to promote its mark, it is indisputable that the two
marks at issue are legally identical, carry the same meaning, and have the potential
to be used (at least in terms of their grammatical meaning) in exactly the same
manner. Aside from our serious doubts that consumers would consider the website
excerpts as conveying the meanings asserted by Applicant, we do not look to
extrinsic evidence to distinguish the meaning of the mark, since such material can
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be changed at any time. Further, it is not clear to what extent the public would be
aware of the website material when purchasing Registrant’s sunglasses at a bricks
and mortar location. Finally, Applicant has not argued, and we see no basis for
finding that these legally identical marks would have different meanings because of
the nature of the goods. Cf. In re British Bulldog, Ltd., 224 USPQ 854 (TTAB 1984);
In re Sears, Roebuck and Co., 2 USPQ2d 1312 (TTAB 1987); In re Sydel Lingerie
Co., Inc., 197 USPQ 629 (TTAB 1977). Thus, although we acknowledge Applicant’s
intentions in this regard and Registrant’s marketing surrounding the registered
mark, we find that the marks, when used in connection with the goods as set forth
in the identifications of goods, would be perceived similarly.
Given the similarities between the marks, we find that the marks I AM in
standard characters and I AM in a stylized format engender similar overall
commercial impressions. The similarity, if not legal identity, of the marks weighs in
favor of a finding of a likelihood of confusion.
Other Factors
The purported lack of fame of Registrant’s mark, as argued by Applicant, is of
little consequence. See TMEP § 1207.01(d)(ix). Because of the nature of the evidence
required to establish the fame of a registered mark, the Board normally does not
expect the Examining Attorney to submit evidence as to the fame of the cited mark
in an ex parte proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB
2006). And, in an ex parte analysis of the du Pont factors for determining likelihood
of confusion, the “fame of the mark” factor is normally treated as neutral when no
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evidence as to fame has been provided. See id.; see also In re Davey Prods. Pty Ltd.,
92 USPQ2d 1198, 1204 (TTAB 2009) (noting that the absence of evidence as to the
fame of the registered mark “is not particularly significant in the context of an
ex parte proceeding”).9
After considering all of the evidence properly of record and arguments pertaining
to the relevant du Pont likelihood of confusion factors, we find that there is a
likelihood of confusion between Applicant’s mark covering sunglasses and sunglass
cases and Registrant’s mark for sunglasses.
Decision: The refusal of registration is affirmed. However, the application
will proceed to publication for the Class 9 goods for which no refusal was made (that
is, the entire Class 9 identification, except “sunglasses and sunglass cases
associated with William Adams, professionally known as ‘will.i.am’”).

9 Applicant’s fame or renown is another matter. The fame of either mark increases the
likelihood of confusion by making it more likely that purchasers will remember the famous
mark and think of it when encountering similar goods sold under a similar mark. Of course,
such likelihood of confusion is only a reason to refuse a new registration, not grant one. To
the extent that Mr. Adams and Applicant’s mark are well-known, such fact supports refusal
of Applicant’s application, because when confusion is likely, it is the prior Registrant which
must prevail. Even if it eclipses the renown of the prior Registrant, Applicant’s fame does
not entitle it to usurp the cited Registrant’s rights in the mark.