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Trademark Valet

Decisions · 85916778

PrecedentialLandmarkNot checked

In re i.am.symbolic, llc

Serial No. 85916778 · Decided 2018-08-16 · Section 2(d) Ex Parte Appeal

What happened

The Board refused registration of #WILLPOWER, the clothing mark of will.i.am’s company, finding it likely to be confused with a registered mountain-logo mark featuring WILLPOWER WEAR and the slogan HAVE THE WILL... for hats, jackets, pants, shirts, and shoes, because the hashtag symbol adds no source-identifying meaning to the shared word WILLPOWER.

The marks

Applicant

#WILLPOWER

"Clothing, namely, bandanas, beachwear, blazers, blouses, dresses, earmuffs, formal wear in the nature of bridal dresses, cocktail dresses, evening dresses, gowns, evening tops, wraps, evening slacks, suits, tuxedos, evening jackets, formal shirts, vests, cummerbunds, ties, and formal shoes; gloves, hooded shirts, infantwear, jackets, jeans, jerseys, leggings, loungewear, mittens, neckwear, outerwear in the nature of wraps, pants, ponchos, scarves, shirts, shorts, skirts, sleepwear, socks, sports clothing, namely, bandanas, baseball uniforms, base layer bottoms and tops, footwear, headwear, hooded sweatshirts, jackets, jerseys, pants, polo shirts, scarves, shorts, sports pants, sports shorts, sports shirts, sweatshirts, shirts, t-shirts, trousers, underpants, vests, warm-up suits; suits, sweaters, sweatpants, sweatshirts, swimwear, tank tops, trackpants, track suits, t-shirts, tunics, undergarments, vests, wind resistant jackets, outdoor winter clothing, namely, skiwear, coats, coveralls, ear muffs, gloves, jackets, mittens, overalls, overcoats, pants, parkas, sweaters, vests, and snowsuits; and yoga pants; footwear and insoles for footwear; belts; headwear; and wrist bands made of cloth, leather, or imitation leather" in International Class 25

Cited registration

WILLPOWER WEAR Have the will... (stylized wording with design of two offset, identical mountain peaks)

"Hats; Jackets; Pants; Shirts; Shoes" in International Class 25

How the marks compared

DimensionFindingWhat the Board said
soundSimilarThe dominant element WILLPOWER is identical in sound in both marks.
appearanceSomewhat SimilarThe marks differ visually because of the registered mark’s mountain design and extra wording and the application’s hash symbol, but the Board found the shared word WILLPOWER is what consumers would notice and remember, and even on a clothing label it cannot be missed.
meaningSimilarFor ordinary shoppers unfamiliar with will.i.am’s #willpower album, both marks convey the same dictionary meaning of willpower - strong determination or self-control - and the slogan HAVE THE WILL reinforces that meaning.
commercial impressionSimilarThe hash symbol acts as a social-media search tag rather than a brand signal, so both marks leave the same overall impression centered on WILLPOWER.

Despite the design and wording differences, the marks are similar in connotation and overall commercial impression because they share the dominant word WILLPOWER, and the hashtag adds no source-identifying significance.

du Pont factors that bore on the outcome

#FactorWeightWhat the Board found
1Similarity of the marksDispositiveBoth marks are dominated by the identical word WILLPOWER, and neither the hash symbol nor the registered mark’s design and extra wording changes the overall impression.
2Relatedness of the goods or servicesDispositiveThe application’s jackets and pants are identical to the registrant’s, and many other listed items (shirts, shoes, headwear, sports clothing) legally overlap with the registrant’s hats, jackets, pants, shirts, and shoes.
3Similarity of trade channelsSignificantBecause the overlapping goods have no marketing restrictions, they are presumed to be sold in the same stores to the same shoppers, regardless of will.i.am’s celebrity following.
6Number and nature of similar marks in useNeutralFive third-party WILLPOWER clothing uses were too few, and too thinly documented, to prove the registered mark is weak, so this factor did not help the applicant.

Why this decision is significant

Precedential opinion establishing the Board’s framework for hashtag marks — a hash-symbol prefix generally adds little or no source-identifying distinctiveness (expressly endorsing TMEP § 1202.18) — decided against will.i.am’s company on a crowded Class 25 record; cited by three 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.

Related decisions

The original record

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