Decisions · 85044494
In re i.am.symbolic, llc
Serial No. 85044494 · Decided 2015-10-07 · Section 2(d) Ex Parte Appeal
What happened
Refusal upheld — the Board found that I AM for cosmetics and personal care products is too similar to the already-registered I AM for perfume, and ruled that adding the phrase 'associated with William Adams, professionally known as will.i.am' to the application did not avoid confusion, so the application was blocked from registering.
The marks
Applicant
I AM
Cosmetics; artificial eyelashes; body powder; incense; non-medicated lip balm; non-medicated hair care preparations; non-medicated nail care preparations; non-medicated skin care preparations; makeup remover; massage oils; essential oils for personal use; shaving creams and gels and depilatory creams and gels; shower and bath gels, bath crystals, milks, oils, bubble bath, powders and salts; soaps and detergents; sun screen and sun tanning preparations; toothpaste and mouthwash, all associated with William Adams, professionally known as "will.i.am" (in International Class 3)
Cited registration
I AM
perfume (in International Class 3)
How the marks compared
| Dimension | Finding | What the Board said |
|---|---|---|
| sound | Similar | Both marks are the same two common words, I AM, and would be pronounced identically. |
| appearance | Similar | The marks are identical in appearance, both being I AM with no stylization. |
| meaning | Similar | Typical customers know the meaning of I AM, so both marks were perceived to have the same literal meaning, and the applicant’s argument that its mark instead refers to the celebrity will.i.am was rejected. |
| commercial impression | Similar | Because the marks are literally identical and carry the same meaning, the Board concluded they engender the same overall commercial impression regardless of each party’s marketing intentions. |
The Board found the marks identical in sight, sound, and meaning, which weighed heavily toward confusion and lowered the degree of similarity needed between the goods.
du Pont factors that bore on the outcome
| # | Factor | Weight | What the Board found |
|---|---|---|---|
| 1 | Similarity of the marks | Dispositive — Favored Refusal | The two I AM marks are identical in appearance, sound, and meaning, which weighed heavily in favor of confusion. |
| 2 | Relatedness of the goods or services | Dispositive — Favored Refusal | Third-party registrations and retailer websites showed cosmetics/personal care products and perfume are commonly sold under one mark, and the registrant herself sold body butter and body wash under I AM, so the goods are related — and the ‘associated with will.i.am’ language did not change that. |
| 3 | Similarity of trade channels | Favored Refusal | With no real limitations in either the application or the registration, the goods are presumed to travel the same retail and online channels to the same purchasers; the applicant’s celebrity-association phrase imposed no channel restriction. |
| 4 | Conditions of sale and buyer sophistication | Favored Refusal | These are relatively inexpensive impulse purchases bought by ordinary consumers, and even sophisticated perfume buyers are not immune from confusion when the marks are identical and the goods related. |
| 5 | Fame of the prior mark | Neutral | The applicant’s claim that the registered mark is not famous carried little weight because fame of the cited mark is treated as neutral in this kind of appeal; the applicant’s own fame actually supported refusal, not registration. |
Why this decision is significant
Precedential and affirmed by the Federal Circuit (866 F.3d 1315); the leading authority that an ‘associated with [a named individual]’ restriction is precatory and does not limit goods, trade channels, or purchasers — cited repeatedly in later 2(d) decisions, including three citing entries in this database.
Research significance is Trademark Valet's editorial rating of how useful a decision is to practitioners. It is not a statement of precedential weight — that is the separate Precedential field, which comes from the Board.
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The original record
Read the opinion and every filing on the Board's own docket. The summary above is our paraphrase, not a quotation from the opinion. The opinion is the authority.
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