The Board Lends a Blow to Celebrities
The celebrity known as will.i.am from the musical group the Black Eyed Peas sought to register three marks for “I AM” in connection with cosmetics, cell phones, artificial eyelashes, sunglasses, and brass wrist cuff bracelets, among other goods.
In three precedential opinions,the Trademark Trial and Appeal Board (“Board”) refused to register these marks based on a likelihood of confusion with other registered marks (including, Reg. No. 3,188,447 for the mark shown below, and Reg. No. 2,045,626 for I AM®.)
The entertainer sought to distinguish his “I AM” mark by including the following limitation to the identification of goods: “associated with William Adams professionally known as ‘will.i.am.’” Before other celebrities rush out to file similar trademark applications, they should know that the Board did not find this “associated with celebrity” limitation to be enough to distinguish the mark from the registered marks and allow registration. The Board did not view “the language as imposing a meaningful limitation on Applicant’s goods in any fashion, most especially with respect to either trade channels, or to a particular class of customers.” Further, “[i]t does not even represent that Mr. Adams will be named, or otherwise identified, in the promotion of the goods.” Query what the Board would have thought of the following limitation: “goods promoted by William Adams professionally known as ‘will.i.am.’” Do you think the decision would be any different?
Mr. Adams will also want to be careful when he writes his autobiography, because popular TV evangelist and New York Times Bestselling Author, Joel Osteen has already nabbed “THE POWER OF I AM” title for his popular book.
However, we should not feel too bad for Mr. Adams. Along with his millions of dollars and fame, Mr. Adams owns numerous registrations for the mark WILL.I.AM®. Specifically, he owns this mark in connection with “Musical sound recordings; musical video recordings; audiovisual recordings featuring music and live performances; digital music downloadable from the internet; digital music videos downloadable from the internet” (Reg. No. 4,756,059); “entertainment services, namely, live musical performances by a male artist, and fashion designer” (Reg. No. 3,707,981) and “Series of pre-recorded phonograph records, CDs and audio cassettes featuring music; Series of pre-recorded video tapes and DVDs featuring music videos and musical performances” (Reg. No. 3,678,106). He currently has three additional applications for the WILL.I.AM mark in connection with a large list of goods related to items of clothing, watches, various creams, after-shave lotions, electronic devices including cell phones and computers, and computer services. “I Gotta Feeling” that these applications will likely fare better than the “I AM” applications.