In re I.AM.Symbolic, LLC

• Decision Date: 08 August 2017
• Docket Number: 2016-1507,2016-1508,2016-1509
• Parties: IN RE: I.AM.SYMBOLIC, LLC, Appellant
• Court: U.S. Court of Appeals — Federal Circuit

866 F.3d 1315

IN RE: I.AM.SYMBOLIC, LLC, Appellant

2016-1507

2016-1508

2016-1509

United States Court of Appeals, Federal Circuit.

Decided: August 8, 2017

Jill Maria Pietrini , Sheppard Mullin Richter & Hampton LLP, Los Angeles, CA, argued for appellant. Also represented by Paul Bost .

Christina Hieber , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Joseph Matal. Also represented by Nathan K. Kelley, Thomas L. Casagrande, Mary Beth Walker, Marynelle W. Wilson .

Before Prost, Chief Judge, Lourie and Schall, Circuit Judges.

Lourie, Circuit Judge.

i.am.symbolic, llc ("Symbolic") appeals from decisions of the U.S. Patent and Trademark Office ("the PTO") Trademark Trial and Appeal Board ("the Board") affirming the examining attorney's refusal to register the mark I AM ("the mark") in standard characters for goods in International Classes ("classes") 3, 9, and 14 on the ground of a likelihood of confusion with registered marks. See In re i.am.symbolic, llc , 116 U.S.P.Q.2d 1406 (T.T.A.B. Oct. 7, 2015) (Symbolic I ); In re i.am.symbolic, llc , No. 85044495, 2015 WL 6746544 (Oct. 7, 2015) (Symbolic II ); In re i.am.symbolic, llc , No. 85044496, 2015 WL 6746545 (Oct. 7, 2015) (Symbolic III ). Because the Board did not err in its likelihood of confusion conclusion, we affirm.

BACKGROUND

Symbolic owns the mark I AM (typed drawing) for "clothing, namely, hats, caps, socks, shirts, t-shirts, sweatshirts, tank tops, shorts, pants, sweatpants, jeans, swimwear, swimsuits, beachwear and footwear, namely, shoes, athletic footwear, boots, clogs, sneakers and sandals" in class 25 ("class 25 registration"). Symbolic I , 116 U.S.P.Q.2d at 1408. It also owns the mark WILL.I.AM (standard characters) for certain goods in class 9 and services in class 41. Id.

I. The Applications and Rejections

Symbolic's predecessor-in-interest, William Adams ("Adams"), filed trademark applications for registration of the mark for goods in classes 3, 9, and 14 on an intent-to-use basis under 15 U.S.C. § 1051(b).¹ The examining attorney refused registration on the ground of likelihood of confusion with previously registered I AM marks pursuant to 15 U.S.C. § 1052(d) for the same or similar goods.

The applications were amended during prosecution to include with the identification of goods the statement "associated with William Adams, professionally known as ‘will.i.am’ " (the "will.i.am restriction").

The identification of goods for class 3, as amended, recites:

Cosmetics ; artificial eyelashes; body powder; incense; nonmedicated lip balm; non-medicated hair care preparations; non-medicated nail care preparations; nonmedicated 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).

Symbolic I , 116 U.S.P.Q.2d at 1408 (emphases added). The examining attorney refused registration due to a likelihood of confusion with the previously registered mark I AM (typed form) for "perfume" in class 3 ("Siegel Registration").² Id.

The identification of goods for class 9, as amended, recites, in relevant part:³ "sunglasses and sunglass cases associated with William Adams, professionally known as will.i. am. " Symbolic II , 2015 WL 6746544, at *1 (emphasis added). The examining attorney refused registration due to a likelihood of confusion with the previously registered mark I am for "sunglasses" in class 9 ("Beeline Registration").⁴ Id. at *2.

The identification of goods for class 14, as amended, recites:

Brass wrist cuff bracelets; clocks; jewelry, namely, dog tags for wear by humans for decorative purposes; jewelry ; jewelry boxes; jewelry sets, namely, necklaces, earrings and bracelets ; key holders, rings and chains of precious metal; lapel pins; medals; ornamental pins, rubber wristbands in the nature of bracelets ; silver wrist cuff bracelets; sun dials; watch bands; watch bracelets; watch cases; watches; wrist bands of imitation leather ; wrist bands of leather ; and jewelry made of resin, namely, wrist cuffs of resin, all associated with William Adams, professionally known as "will.i.am" (in International Class 14).

Symbolic III , 2015 WL 6746545, at *1 (emphases added).

The examining attorney refused registration on the ground of a likelihood of confusion with the previously registered marks I am for "jewelry and fashion jewelry, bracelets, anklets, necklaces, pendants, earrings, ear clips, broaches, finger rings, arm rings; watches, wrist watches, pocket watches, watch chains and watch fobs" in class 14 (Beeline Registration) and I AM (standard character form) for "silicone stretchable wrist band in the nature of a bracelet" in class 14 ("Finch Registration"⁵ and, collectively with the Siegel Registration and Beeline Registration, "registrants' marks"). Id.

II. The Board Decisions

On appeal, the Board affirmed the examining attorney's refusals to register the mark based on a likelihood of confusion. The Board first rejected Symbolic's arguments based on the will.i.am restriction. It explained:

[W]e view the language "associated with William Adams, professionally known as ‘will.i.am’ " in [Symbolic's] identification of goods as merely high-lighting an association with [Symbolic's] presumed principal, Mr. Adams. Contrary to [Symbolic's] assertion, we do not see the language as imposing a meaningful limitation on [Symbolic's] goods in any fashion, most especially with respect to either trade channels or class of purchasers . The language does not, in any meaningful way, alter the nature of the goods identified; nor does it represent that the goods will be marketed in any particular, limited way, through any particular, limited trade channels, or to any particular class of customers. It does not even represent that Mr. Adams will be named, or otherwise identified, in the promotion of the goods. The language "associated with William Adams, professionally known as ‘will.i.am’ " is precatory language , and not binding on consumers when they encounter Applicant's mark.

Symbolic I , 116 U.S.P.Q.2d at 1409–10 (emphases added); Symbolic II , 2015 WL 6746544, at *4 (emphases added); Symbolic III , 2015 WL 6746545, at *4 (emphases added).

The Board found that Adams is the well-known front man for the music group The Black Eyed Peas and is known as will.i.am. The Board also found, however, that the record did not establish that Adams is "widely known by ‘i.am’ (as opposed to ‘will.i.am’), or that ‘i.am’ and ‘will.i.am’ are used interchangeably by either Mr. Adams or the public," and rejected Symbolic's arguments based on its ownership of the class 25 registration. Symbolic I , 116 U.S.P.Q.2d at 1410 ; Symbolic II , 2015 WL 6746544, at *4 ; Symbolic III , 2015 WL 6746545, at *4.

The Board then addressed the DuPont Factors. See In re E. I. duPont deNemours & Co. , 476 F.2d 1357 (CCPA 1973). The Board found that the legal or literal identity of the marks; the similarity or the identity of the goods; and the identity of the trade channels and purchasers, as well as the conditions of sale, favored a likelihood of confusion conclusion. Symbolic I , 116 U.S.P.Q.2d at 1411–12 ; Symbolic II , 2015 WL 6746544, at *5–8 ; Symbolic III , 2015 WL 6746545, at *5–7. The Board also found that the "purported lack of fame" of registrants' marks was of "little consequence" and noted that "[t]o the extent that Mr. Adams and [Symbolic's] mark are well-known, such fact supports refusal of [Symbolic's] application, because when confusion is likely, it is the prior Registrant which must prevail." Symbolic I , 116 U.S.P.Q.2d at 1412 & n.7 ; Symbolic II , 2015 WL 6746544, at *8 & n.9 ; Symbolic III , 2015 WL 6746545, at *8 & n.10.

For the class 14 application, the Board rejected Symbolic's argument that "the coexistence of the [Beeline and Finch Registrations] on the register is evidence that there is no likelihood of confusion between each of these marks and [Symbolic's] mark" because "third-party registrations cannot assist an applicant in registering a mark that is likely to cause confusion with a previously registered mark." Symbolic III , 2015 WL 6746545, at *8.

Symbolic timely appealed to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).

DISCUSSION

We review the Board's legal conclusions without deference and its factual findings for substantial evidence. In re Pacer Tech. , 338 F.3d 1348, 1349 (Fed. Cir. 2003). "Substantial evidence is ‘more than a mere scintilla’ and ‘such relevant evidence as a reasonable mind would accept as adequate’ to support a conclusion." Id. (quoting Consol. Edison Co. v. NLRB , 305 U.S. 197, 229, 59 S.Ct. 206, 83 L.Ed. 126 (1938) ).

Likelihood of confusion is a question of law based on underlying findings of fact. In re Chatam Int'l Inc. , 380 F.3d 1340, 1342 (Fed. Cir. 2004). We assess a likelihood of confusion based on the factors set forth in DuPont . 476 F.2d at 1361. "The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus ... on dispositive factors, such as similarity of the marks and relatedness of the goods.’ " Herbko Int'l, Inc. v. Kappa Books, Inc. , 308 F.3d 1156, 1164–65 (Fed. Cir. 2002) (quoting Han Beauty, Inc. v. Alberto–Culver Co. , 236 F.3d 1333, 1336 (Fed. Cir. 2001) (alteration in original)). While evidence of actual confusion may be considered in the DuPont analysis, "a showing of actual confusion is not necessary to establish a likelihood of confusion." Id. (citing Giant Food, Inc. v. Nation's Foodservice, Inc. , 710 F.2d 1565, 1571 (Fed. Cir. 1983) ). In the likelihood of confusion analysis "doubts are to be resolved against the newcomer and in favor of the prior user."...