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In re i.am.symbolic, llc

Likelihood of Confusion Analysis Unaffected by Vague, Non-Limiting “Restriction”

In re i.am.symbolic, llc, (Fed. Cir. Aug. 8, 2017) (Prost, LOURIE, Schall) (TTAB) (3 of 5 stars)

Fed Cir affirms Board’s refusal to register mark “I AM” due to likelihood of confusion with registered marks. The Board correctly declined to place weight on Symbolic’s statement, in the identification of goods, that the mark would be used for various goods “associated with” will.i.am, the front man for the Black Eyed Peas. This statement was “precatory language,” and did not meaningfully limit Symbolic’s goods. Applying factor one of DuPont, 476 F.2d 1357 (C.C.P.A. 1973), the Board correctly determined that the proposed mark was literally identical to previously-registered “I AM” marks, and that “the will.i.am restriction” did not change the overall impression of the mark, partly because the restriction was “precatory,” did not specify how will.i.am would be associated with the goods, and did not represent that he would even be named in the promotion of the goods. Per Denney, 263 F.3d 347 (C.C.P.A. 1959), the opinion declines to consider the separate “will.i.am” mark into consideration in evaluating “I AM.” And under the second, third, and fourth DuPont factors, substantial evidence supported the Board’s determinations that identical goods were being proposed, and the channels of trade identical. The “will.i.am restriction” did not change this result, and was not a “meaningful limitation in the identification of goods.” Op. at 15.

The opinion also discusses how the Board committed no error on DuPont factors six, eight, and twelve, noting how, in these facts, “any error in failing to specifically analyze the potential weakness of the registrants’ marks” based on third-party use was harmless. Finally, the opinion rejects Symbolic’s argument that the Board made an unsupported finding of reverse confusion. The Board’s decision included no such finding.

KEYWORDS: LIKELIHOOD OF CONFUSION; DUPONT FACTORS; PRECATORY RESTRICTION