By Loreal Rock and Ivie Baker IV
October 27--Musical giant Will.I.Am will not be able to register “I Am” as a trademark for cosmetics and other goods because of its likelihood of confusion with registered mark “I Am” for perfume in International Class 3. The registered mark is owned by Danica A. Siegal of Santa Monica, California, who obtained registration of the mark in 1997.
On her website for I Am fragrance, Danica proclaims that in 1993 she began “blending essential oils as personal prayer-fumes for friends and loved ones to inspire, empower and sometimes mend a broken spirit.”
In 2010, Will.I.Am’s company, I.am.symbollic, LLC, filed an intent-to-use application with the Patent and Trademark Office to register “I Am” as a trademark for cosmetics, skin care, health, hygiene, grooming and beauty products. The application was refused registration for likelihood of confusion with Siegal’s mark, andon October 7, 2015, the Trademark Trial and Appeal Board affirmed the refusal. In re I.am.symbolic, LLC, T.T.A.B., No. 85044494, 10/7/15.
On appeal, I.am.symbollic argued that there was not a likelihood of confusion because the application contains language in the identification of the goods stating that the goods are “associated with William Adams, professionally known as ‘will.i.am.’” Such language, however, does not represent that Will.I.Am will be named, or otherwise identified, in the promotion of the goods to prevent a likelihood of confusion amongst consumers. I.am.symbollic also argued that the Siegal’s registered mark is not famous. Admirably, the TTAB held that “the purported lack of fame of Registrant’s mark...is of little consequence.”
The TTAB’s decision to refuse registration prevents an instance of reverse confusion where a less acclaimed senior user would appear to be infringing on the more acclaimed junior user, which was likely to occur in this case. In reverse confusion cases consumers may believe that the original trademark holder (“senior user”) is an unauthorized infringer, and that a subsequent user’s (“junior user”) usage of the mark may in a way injure the senior user’s reputation and impair its good will. Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013). Reverse confusion usually occurs when a senior user of a mark seeks to protect its business identity from being overwhelmed by a larger junior user that has saturated the market with publicity and/or advertising. Visible Systems Corp. v. Unisys Corp., 551 F.3d 65 (1st Cir. 2008). Reverse confusion was the likely outcome if the TTAB failed to refuse registration to Will.I.Am.
Staying true to the DuPont factors of likelihood of confusion set forth in In re E. I. Du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), the TTAB found that the similarity of the goods, and the identity of the trade channels and purchasers, as well as the conditions of sale, were factors weighing in favor of a likelihood of confusion.