The Board affirmed refusal on likelihood of confusion grounds of will.i.am’s application for the mark I AM for Cosmetics in Class 3 “all associated with William Adams, professionally known as ‘will.i.am’ of the Black Eyed Peas, in light of the prior registered mark I AM for perfume. In re i.am.symbolic, llc, 116 USPQ2d 1406 (TTAB 2015) The Board found the allegedly distinguishing language in the identification of goods that all the goods would be “associated with” will.i.am to be a distinction without a difference. It found that the language stating the goods would be associated with will.i.am merely highlighted an association with Applicant’s presumed principal, Mr. Adams. The Board did not view the language as imposing a meaningful limitation on Applicant’s goods, the relevant trade channels or class of purchasers.
Turning to the du Pont factors, the Board found that the marks are identical in appearance and pronunciation, would be perceived to have the same literal meaning, and have the potential to be used in exactly the same manner. It found the marks to be identical and that they would be perceived similarly. It concluded that they are likely to engender the same overall commercial impression.
Regarding the similarity of the goods, the Board noted that because identical marks are involved, the degree of similarity between the goods that is required to support a finding of likelihood of confusion declines. Based on third party registrations covering, under a single mark, both cosmetics and perfume, the Board found this to be evidence that the goods are of a type which may emanate from a single source. Evidence of third party websites showing online retailers selling both types of goods under the same mark further supported that the goods are related. Because there are no meaningful limitations in the identification of goods in either the application or the cited registration, the Board presumed that the goods travel through all usual channels of trade and are offered to all normal potential purchasers, including ordinary purchasers who would not exercise a high degree of care when purchasing the goods, particularly since the identification of goods was not restricted to a particular price point. The Board found that the similarity of the goods, the identity of the trade channels and purchasers and the conditions of sale all favored a finding of a likelihood of confusion. It affirmed the refusal of registration on Section 2(d) grounds.