In Re: I.am.symbolic, LLC
866 F.3d 1315
| Fed. Cir. | 2017Background
- i.am.symbolic, LLC (Symbolic) applied to register the standard-character mark I AM for goods in Classes 3, 9, and 14; applications included the phrase "associated with William Adams, professionally known as 'will.i.am'" (the "will.i.am restriction").
- PTO examining attorney refused registration under 15 U.S.C. § 1052(d) as likely to cause confusion with earlier I AM registrations (Siegel, Beeline, Finch) for related goods.
- The Trademark Trial and Appeal Board affirmed the refusals, finding the will.i.am restriction did not meaningfully limit the goods, and that key DuPont factors favored likelihood of confusion (identical marks, related/identical goods, same trade channels/purchasers).
- Symbolic argued the will.i.am restriction negated confusion, that third-party use and coexistence weakened registrants’ marks, and that the Board misapplied reverse-confusion principles.
- The Federal Circuit reviewed legal conclusions de novo and factual findings for substantial evidence and affirmed the Board, holding the will.i.am restriction did not change the mark’s commercial impression or limit goods/channels for DuPont analysis.
Issues
| Issue | Plaintiff's Argument (Symbolic) | Defendant's Argument (PTO/Registrants) | Held |
|---|---|---|---|
| Whether the will.i.am restriction is a meaningful limitation for likelihood-of-confusion analysis | Restriction ties goods to will.i.am and changes commercial impression, channels, and purchasers, negating confusion | Restriction is precatory and does not limit goods, channels, or consumers; Board properly relies on application text | Restriction not meaningful; Board’s finding supported by substantial evidence; compare marks as applied-for |
| Similarity of marks (First DuPont factor) | will.i.am association alters meaning so I AM is distinct | Applied-for I AM and registrants’ I AM are legally identical in appearance, sound, connotation | Marks deemed legally identical; factor weighs heavily for confusion |
| Relatedness of goods, trade channels, and purchasers (Second–Fourth DuPont factors) | Celebrity association makes goods distinct and marketed differently | Goods and channels are identical or related absent limitations; cannot import unpled real-world restraints | Goods/channels presumed overlapping; factors favor likelihood of confusion |
| Effect of third‑party registrations and coexistence (Sixth/Eighth/Twelfth DuPont factors) | Multiple I AM uses and coexistence (including Symbolic’s class 25 use) show weakness of registrants’ marks | No voluminous/ubiquitous third‑party use shown here; coexistence on register doesn’t allow confusing registration | Limited third‑party evidence insufficient to overcome dispositive factors; any omission harmless |
Key Cases Cited
- In re E. I. duPont deNemours & Co., 476 F.2d 1357 (CCPA 1973) (sets out multi‑factor likelihood‑of‑confusion framework)
- Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012) (compare commercial impression, not side‑by‑side styling)
- In re Majestic Distilling Co., Inc., 315 F.3d 1311 (Fed. Cir. 2003) (fame/lack of fame has limited probative value in some contexts)
- SquirtCo v. Tomy Corp., 697 F.2d 1038 (Fed. Cir. 1983) (courts may not read limitations into unrestricted registrations)
- M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378 (Fed. Cir. 2006) (limitations in identifications may be considered when actually present)
- Viterra Inc. v. voluntarily., 671 F.3d 1358 (Fed. Cir. 2012) (absent restrictions, goods presumed to travel through all normal trade channels)
- Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317 (Fed. Cir. 2014) (registrability decided on the written identifications, not real‑world conditions)
- Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334 (Fed. Cir. 2015) (extensive third‑party use can show a mark component is weak)
- Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363 (Fed. Cir. 2015) (similar: abundant third‑party use may weaken portion of mark)
- In re Shell Oil Co., 992 F.2d 1204 (Fed. Cir. 1993) (explains reverse‑confusion concept)