William Adam , the famous singer goes for the failure of acceptance trademark on Will.I.am as the rejection was on grounds of likelihood of confusion on registered trademark I. AM. which falls under the class 25; by the trademark examining attorney.
15 U.S.C, § 1052(d) :- According to the grounds of likelihood of confusion with already registered I AM marks pursuant to 15 U.S.C, § 1052(d) for the same or similar goods which resulted in amending at the time of prosecution to include with identification of goods, the statement “associated with William Adam, professionally known as ‘will.i.am’”; but though the examination control was unconvinced.
Dupont factors :- In relevance to Dupont factors relating to the likelihood of confusion ; the identity or similarity of goods & trade channels and condition of sale, favored for confusion conclusion as the board found that ‘will.i.am’ mark was used interchangeably by Mr. Adam or publically and thus rejection of Symbolic arguments.
Verdict of Federal circuit :- The Federal circuit explained that the board is not responsible for judging a limitation for an unregistered registration or application. The federal circuit also agreed with the TTAB in accordance with the symbolic failure of will.i.am which was unable to impose a meaningful limitation for purposes of likelihood of confusion.
Second, third and fourth Dupont factors :- The Federal circuit approved with PTAB under the second, third and fourth Dupont factors that – the goods are identical or related and the channels off trade are identical but under the terms and conditions of the court -the william restriction do not show any evidential limitation regarding registration ; as the board did not find any substantial evidence.
Finding a likelihood of reserved confusion :- the PTO says that the board did not find an evidential proof for likelihood of reserved confusion as argued by the symbolics as the board failed to give substantial proof for that ; hence the 5th Dupont factor was said neutral according to the above circumstances.
Board’s opinion :- the board suggested that both ; Adam and the mark (will.i.am) are both famous and in such case no registration or filing an application will be required to be registered by the applicant as the board also refused the symbolic argument in case of the marks likelihood of reserved confusion as both were famous and well known to the public domain.
Will.i.am Adam was incapable to register his mark as will.i.am as identical mark registration for similar products or goods creates a point of confusion of likelihood as i.am is symbolic and already registered as before.
