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Oct. 8 — Pop music artist will.i.am could not register “I Am” as a trademark for cosmetics and other goods because of an existing “I Am” registration for perfume, the Trademark Trial and Appeal Board ruled Oct. 7.
The board found that the two trademarks and their related goods were too similar, creating a likelihood of confusion on the part of consumers.
William J. Adams Jr. is a musical performer and recording artist popularly known as “will.i.am,” who is best known for his work with the musical group the Black Eyed Peas.
In 2010, Adams's company, I.am.symbolic 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.
I.am.symbolic already held a registration for “Will.I.Am” for musical recordings, videos and apparel.
Trademark examiner Timothy J. Finnegan rejected the application after finding “I Am” as an existing registration for the term “I Am” related to perfume, issued in 1997 to Danica A. Siegal of Santa Monica, Calif., who operates a website through which she sells fragrances.
Adams appealed, arguing that because his application specified that the listed goods would be “associated with William Adams, professionally known as ‘will.i.am,' ” there would be no likelihood of confusion with Siegal's trademark.
However, the board concluded that this “associated with” language “simply is not a reasonable basis to assume that purchasers would be able to distinguish the source of such goods from those emanating from” Siegal.
The board then applied a multi-factor test set forth by In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973), to determine that Adams's intended use of “I Am” would indeed create a likelihood of confusion with Siegal's trademark.
The board's ruling was issued by Administrative Trademark Judge T. Jeffrey Quinn and joined by Judges Jyll Taylor and Thomas Shaw.
Adams was represented by Sheppard Mullin Richter & Hampton LLP, Los Angeles.
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