In Re: I.am.symbolic, LLC , 866 F.3d 1315 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: I.AM.SYMBOLIC, LLC,
Appellant
______________________
2016-1507, 2016-1508, 2016-1509
______________________
Appeals from the United States Patent and Trade-
mark Office, Trademark Trial and Appeal Board in Nos.
85/044,494, 85/044,495, 85/044,496.
______________________
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, Cir-
cuit Judges.
LOURIE, Circuit Judge.
i.am.symbolic, llc (“Symbolic”) appeals from decisions
of the U.S. Patent and Trademark Office (“the PTO”)
2 IN RE: I.AM.SYMBOLIC, LLC
Trademark Trial and Appeal Board (“the Board”) affirm-
ing 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 san-
dals” 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 prosecu-
1 Adams assigned the applications to Symbolic
while they were pending at the PTO. For simplicity, we
refer to the owner of the applications throughout as
Symbolic.
IN RE: I.AM.SYMBOLIC, LLC 3
tion to include with the identification of goods the state-
ment “associated with William Adams, professionally
known as ‘will.i.am’” (the “will.i.am restriction”).
The identification of goods for class 3, as amended, re-
cites:
Cosmetics; artificial eyelashes; body powder; in-
cense; nonmedicated lip balm; non-medicated hair
care preparations; non-medicated nail care prepa-
rations; nonmedicated skin care preparations;
makeup remover; massage oils; essential oils for
personal use; shaving creams and gels and depila-
tory 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, re-
cites, in relevant part: 3 “sunglasses and sunglass cases
2 Registration No. 2,045,626 owned by Danica
Siegel.
3 The examining attorney’s final refusal for class 9
was limited to the goods “sunglasses and sunglass cases
associated with William Adams, professionally known as
will.i.am.” The application with the remaining goods was
allowed to proceed to publication. Symbolic II, 2015 WL
6746544, at *8 n.4. Because the goods in the application
allowed to proceed to publication are not a part of this
appeal, we do not address them.
4 IN RE: I.AM.SYMBOLIC, LLC
associated with William Adams, professionally known as
will.i.am.” Symbolic II, 2015 WL 6746544, at *1 (empha-
sis added). The examining attorney refused registration
due to a likelihood of confusion with the previously regis-
tered mark for “sunglasses” in class 9 (“Beeline
Registration”). Id. at *2.
4
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 pur-
poses; 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 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 char-
acter form) for “silicone stretchable wrist band in the
4 Registration No. 3,188,447 owned by Beeline
GmbH.
IN RE: I.AM.SYMBOLIC, LLC 5
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 attor-
ney’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] pre-
sumed principal, Mr. Adams. Contrary to
[Symbolic’s] assertion, we do not see the language
as imposing a meaningful limitation on [Symbol-
ic’s] goods in any fashion, most especially with re-
spect to either trade channels or class of
purchasers. The language does not, in any mean-
ingful way, alter the nature of the goods identi-
fied; 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 oth-
erwise 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).
5 Registration No. 3,935,952 on the Supplemental
Register owned by Justin Finch.
6 IN RE: I.AM.SYMBOLIC, LLC
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; Symbol-
ic 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; Sym-
bolic III, 2015 WL 6746545, at *8 & n.10.
For the class 14 application, the Board rejected Sym-
bolic’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.
IN RE: I.AM.SYMBOLIC, LLC 7
Symbolic timely appealed to this court. We have ju-
risdiction pursuant to 28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
We review the Board’s legal conclusions without def-
erence 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 (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 con-
siders all DuPont factors for which there is record evi-
dence 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 confu-
sion may be considered in the DuPont analysis, “a show-
ing 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.” San Fernando Elec. Mfg. Co. v. JFD Elecs.
Components Corp., 565 F.2d 683, 684 (CCPA 1977).
Symbolic argues that the Board erred in its likelihood
of confusion analysis by: (1) holding that the will.i.am
restriction is “precatory” and “meaningless” and therefore
not considering it in analyzing certain DuPont factors;
(2) ignoring third-party use and the peaceful coexistence
on the primary and supplemental registers and in the
8 IN RE: I.AM.SYMBOLIC, LLC
marketplace of other I AM marks; and (3) finding a likeli-
hood of reverse confusion. We will address each argument
in turn.
I. The will.i.am Restriction
Symbolic argues that the Board erred by ignoring the
will.i.am restriction because it is a meaningful limitation
that negates any likelihood of confusion. Symbolic con-
tends that the restriction is a “subject matter limitation,”
Appellant’s Br. 24 (citing DuPont, 476 F2d. at 1362; M2
Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382
(Fed. Cir. 2006)), that distinguishes the mark from regis-
trants’ marks by “impact[ing] the connotation and com-
mercial impression of [the] mark, the nature of the goods
identified in the [a]pplications, and the channels of trade
in which said goods move,” id. at 22.
The PTO responds that the Board correctly held that
the will.i.am restriction imposes no meaningful limitation
for purposes of likelihood of confusion analysis and sub-
stantial evidence supports the Board’s factual findings on
the relevant DuPont factors.
We agree with the PTO that Symbolic has failed to
show reversible error in the Board’s determination that
the will.i.am restriction does not impose a meaningful
limitation in this case for purposes of likelihood of confu-
sion analysis. It is well established that the Board may
not read limitations into an unrestricted registration or
application. See SquirtCo v. Tomy Corp., 697 F.2d 1038,
1043 (Fed. Cir. 1983) (“There is no specific limitation
here, and nothing in the inherent nature of SquirtCo’s
mark or goods that restricts the usage of SQUIRT for
balloons to promotion of soft drinks. The board, thus,
improperly read limitations into the registration.”); see
also 15 U.S.C. § 1057(b) (“A certificate of registration of a
mark upon the principal register . . . [is] prima facie
evidence . . . of the owner’s exclusive right to use the
registered mark in commerce on or in connection with the
IN RE: I.AM.SYMBOLIC, LLC 9
goods or services specified in the certificate, subject to any
conditions or limitations stated in the certificate.” (empha-
ses added)). However, where both the applicant’s and the
registrant’s identifications of goods recite limitations,
those limitations may be considered in analyzing the
DuPont factors. See M2 Software, 450 F.3d at 1382–83.
Here, the registrations do not contain an express limita-
tion, and, for the reason discussed in more detail below
with respect to the DuPont factors, the will.i.am re-
striction does not distinguish the mark sufficiently from
the registrants’ marks to overcome the evidence of likeli-
hood of confusion.
A. The First DuPont Factor
The first DuPont factor requires consideration of
“[t]he similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.” DuPont, 476 F.2d at 1361. “The
proper test is not a side-by-side comparison of the marks,
but instead whether the marks are sufficiently similar in
terms of their commercial impression such that persons
who encounter the marks would be likely to assume a
connection between the parties.” Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir.
2012) (internal quotation omitted). We compare the
applicant’s and registrant’s “marks themselves.” Denney
v. Elizabeth Arden Sales Corp., 263 F.2d 347, 348 (CCPA
1959).
Symbolic argues that the will.i.am restriction impacts
the meaning and the overall commercial impression of the
mark. According to Symbolic, “consumers will recognize
the ‘i.am’ portion of will.i.am’s name” because its “goods
must be associated with will.i.am” per the will.i.am re-
striction. Appellant’s Br. 30. Symbolic contends that the
Board’s finding that Adams is not widely known or identi-
fied by the term i.am or I AM is not supported by substan-
tial evidence. Symbolic maintains that the Board erred
10 IN RE: I.AM.SYMBOLIC, LLC
by not considering extrinsic evidence of the connotations
of the registrants’ marks.
The PTO responds that the Board did not err in de-
termining that the first DuPont factor weighs heavily in
favor of a likelihood of confusion conclusion. The PTO
contends that the Board’s finding that Adams is not
identified by i.am or I AM is supported by substantial
evidence. The PTO argues that extrinsic evidence con-
cerning the actual uses of the marks cannot be considered
because the restrictions are not reflected in the four
corners of the application and registrations.
We agree with the PTO that the Board correctly de-
termined that the first DuPont factor “weighs heavily” in
favor of a likelihood of confusion. See In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 1315 (Fed. Cir. 2003)
(explaining that “when word marks are identical but
neither suggestive nor descriptive of the goods associated
with them, the first DuPont factor weighs heavily against
the applicant”). The Board’s findings that the mark and
the registrants’ marks are at least legally identical in
appearance, identical in pronunciation, have the same
meaning, and engender the same overall commercial
impression are supported by substantial evidence.
Symbolic does not, and cannot, dispute that the mark,
I AM in standard character form, and the registrants’
marks, I AM in standard character, typed, or stylized
form, are pronounced the same way and, at a minimum,
legally identical. See In re Viterra Inc., 671 F.3d 1358,
1364 n.2 (Fed. Cir. 2012) (“‘[S]tandard character’ marks
formerly were known as ‘typed’ marks, but the preferred
nomenclature was changed in 2003 to conform to the
Madrid Protocol. . . . [W]e do not see anything in the 2003
amendments that substantively alters our interpretation
of the scope of such marks.”); SquirtCo, 697 F.2d at 1041(“[T]he argument concerning a difference in type style is
not viable where one party asserts rights in no particular
IN RE: I.AM.SYMBOLIC, LLC 11
display. By presenting its mark merely in a typed draw-
ing, a difference cannot legally be asserted by that par-
ty.”).
The Board did not err in holding that the will.i.am re-
striction does not change the meaning or the overall
commercial impression of the mark. The identification of
goods does not specify how Adams will be “associated
with” the goods. And we discern no error with the Board’s
determination that the will.i.am restriction “does not even
represent that Mr. Adams will be named, or otherwise
identified, in the promotion of the goods.” Symbolic I, 116
U.S.P.Q.2d at 1410. In short, there is nothing in the
record that persuades us that the will.i.am restriction
changes the meaning or overall commercial impression of
the mark.
To the extent that Symbolic is advocating that we
consider another mark, will.i.am, that is not part of the
applied-for mark in analyzing the similarity of the marks,
we decline to do so. The correct inquiry requires compari-
son of the applied-for mark, which only includes the words
“I AM,” to the registrants’ marks. See, e.g., Denney, 263
F.2d at 348 (“In determining the applicant’s right to
registration, only the mark as set forth in the application
may be considered; whether or not the mark is used with
an associated house mark is not controlling. Therefore
the likelihood of confusion must be determined by a
comparison of the [applicant’s and registrant’s] marks
themselves.” (internal citations omitted)); In re Microsoft
Corp., 68 U.S.P.Q.2d 1195, 1198 (T.T.A.B. Sept. 11, 2003)
(“To the extent applicant’s argument reflects anticipated
use of the applied-for mark with applicant’s house mark,
it is well-settled that use of a house mark in conjunction
with a product mark will not serve to prevent a finding of
likelihood of confusion when the house mark is not in-
cluded in the mark for which registration is sought.”).
12 IN RE: I.AM.SYMBOLIC, LLC
Similarly, we discern no error in the Board’s treat-
ment of Symbolic’s proffered examples of use of the regis-
trants’ marks. None of the examples of use of the
registrants’ marks pointed to by Symbolic reflect an
actual limitation in the registrations. The Board properly
analyzed likelihood of confusion based on the mark as
applied to the goods recited in Symbolic’s application
compared to registrants’ marks and the goods recited in
their registrations. See In re Dixie Restaurants, Inc., 105
F.3d 1405, 1407–08 (Fed. Cir. 1997); see also In re St.
Helena Hosp., 774 F.3d 747, 751 (Fed. Cir. 2014) (affirm-
ing Board’s determination that applicant’s and regis-
trant’s marks have similar connotations where although
“the [use] specimens refer to days and minutes, respec-
tively, neither identification specifies a certain period of
time or suggests any specific meaning of the word ‘TEN’
or the numeral ‘10’” present in the applicant’s and regis-
trant’s marks).
Moreover, the Board’s finding that Adams is not
known by I AM or i.am is supported by substantial evi-
dence. The websites and media coverage pointed to by
Symbolic consistently show that Adams is known as
will.i.am, not I AM or i.am. See, e.g., J.A. 116, 123, 2011–
12, 2107, 2203, 2214. Additionally, Symbolic’s ownership
of the class 25 registration and use of that mark in pro-
moting and selling Adams’s clothing line does not compel
a finding that Adams is known by I AM or i.am. Indeed,
Adams is identified as will.i.am, not I AM or i.am, in that
context too. See, e.g., J.A. 2024 (“will.i.am of the Black
Eyed Peas launches a creative and unique men’s wear
collection under the i.am clothing label . . . .”).
Furthermore, Symbolic’s reliance on Coach is mis-
placed. Although it is true that word marks identical in
sound and appearance may have different meanings and
commercial impressions, 668 F.3d at 1369, the Board’s
finding that this is not such a case is supported by sub-
stantial evidence. Unlike in Coach, Symbolic did not
IN RE: I.AM.SYMBOLIC, LLC 13
establish that the words “I AM,” which comprise the
totality of the mark, by themselves “ha[ve] many different
definitions in different contexts,” or that I AM when
applied to Symbolic’s goods “brings to mind” something
different from I AM when applied to registrants’ marks.
Id.
B. The Second, Third, and Fourth DuPont Factors
Under the second, third, and fourth DuPont factors,
one must consider “[t]he similarity or dissimilarity and
nature of the goods or services as described in an applica-
tion or registration or in connection with which a prior
mark is in use”; the similarity or dissimilarity of the trade
channels; and “[t]he conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisti-
cated purchasing.” DuPont, 476 F.2d at 1361. In review-
ing the second factor, “we consider the applicant’s goods
as set forth in its application, and the [registrant’s] goods
as set forth in its registration.” M2 Software, 450 F.3d at
1382. Likelihood of confusion “must be resolved on the
basis of the goods named in the registration and, in the
absence of specific limitations in the registration, on the
basis of all normal and usual channels of trade and meth-
ods of distribution.” SquirtCo, 697 F.2d at 1042–43.
Symbolic argues that the Board erred by finding that
its goods and registrants’ goods are the same or related
and move in the same or similar trade channels because
the will.i.am restriction distinguishes its goods and chan-
nels of trade by fundamentally changing them. According
to Symbolic, consumers purchase goods associated with
celebrities, like will.i.am, “because the goods are associat-
ed with the celebrity and to associate themselves with the
celebrity” and “goods associated with celebrities constitute
extensions of the celebrities’ personas and brands.”
Appellant’s Br. 39. Symbolic further argues that the
registrants’ marks are prohibited from drawing a connec-
tion or association with will.i.am, as the mark does,
14 IN RE: I.AM.SYMBOLIC, LLC
because it would violate Adams’s right to publicity under
various state laws and infringe his rights in his identity
and persona under 15 U.S.C. § 1125(a). Symbolic also
contends that the PTO’s acceptance of the will.i.am.
restriction in the applications and the PTO’s registration
of marks containing similar restrictions that “describe
goods that are distinguishable for being related to or
associated with a musician or entertainer” support the
registrability of the mark. Id. at 26.
The PTO responds that substantial evidence supports
the Board’s findings that the goods are identical or closely
related, the trade channels are identical, and the classes
of purchasers overlap. According to the PTO, the
will.i.am restriction does not alter the intrinsic nature of
the goods or trade channels. Even if the will.i.am re-
striction were a meaningful limitation to the goods, the
PTO contends, Symbolic, a later applicant, cannot avoid a
likelihood of confusion with unrestricted registrations,
like the registrants’ marks, merely by restricting the
goods in its application. The PTO further responds that
its acceptance of the will.i.am restriction in the identifica-
tion of goods and prior acceptance of similar wording in
other registrations does not make the will.i.am restriction
significant for likelihood of confusion purposes.
We agree with the PTO that substantial evidence
supports the Board’s findings that the goods are identical
or related and the channels of trade are identical. Sym-
bolic does not dispute that the goods would be related and
the channels of trade would be identical without the
will.i.am restriction. Symbolic, however, points to no
evidence in the record to support its contention that the
will.i.am restriction changes the nature of the goods or
trade channels. The Board thus did not err in holding
that the will.i.am restriction does not: (1) limit the goods
“with respect to either trade channels or class of purchas-
ers”; (2) “alter the nature of the goods identified”; or
(3) “represent that the goods will be marketed in any
IN RE: I.AM.SYMBOLIC, LLC 15
particular, limited way, through any particular, limited
trade channels, or to any particular class of customers.”
Symbolic I, 116 U.S.P.Q.2d at 1410; Symbolic II, 2015 WL
6746544, at *4; Symbolic III, 2015 WL 6746545, at *4.
Symbolic’s reliance on M2 Software is thus misplaced.
In M2 Software, we affirmed the Board’s determination
that the goods were not related and the channels of trade
and purchasers were different where the identification of
goods for both the registrant’s and applicant’s marks were
limited to “CD-ROMs produced for a particular field[,]”
“music or entertainment” and “pharmacy and medicine,”
respectively. M2 Software, 450 F.3d at 1382.
Here, substantial evidence supports the Board’s find-
ings that the will.i.am restriction does not impose a
meaningful limitation and the registrations at issue do
not contain any express limitations. 6 Thus, unlike in M2
Software, the application and registrations here do not
contain meaningful limitations in the identification of
goods. As a result, the Board properly declined to import
restrictions into the identification of goods based on
alleged real-world conditions. See Stone Lion Capital
Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 1323
(Fed. Cir. 2014) (“It was proper, however, for the Board to
focus on the application and registrations rather than on
real-world conditions, because ‘the question of registrabil-
ity of an applicant’s mark must be decided on the basis of
the identification of goods set forth in the application.’”
(quoting Octocom Sys., Inc. v. Hous. Comp. Servs. Inc.,
6 Because we affirm the Board’s determination that
the will.i.am restriction imposes no meaningful limitation
in this case, we need not, and do not, decide whether
other legal constraints, e.g., 15 U.S.C. § 1125(a), may ever
inherently restrict an otherwise unrestricted identifica-
tion of goods in a registration in a manner meaningful to
the likelihood of confusion analysis.
16 IN RE: I.AM.SYMBOLIC, LLC
918 F.2d 937, 942 (Fed. Cir. 1990))); Octocom, 918 F.2d at
942 (“The authority is legion that the question of regis-
trability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the applica-
tion regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed.” (collecting cases)).
Additionally, the PTO’s mere acceptance of the
will.i.am restriction in the identification of goods does not
render it meaningful to likelihood of confusion. Contrary
to Symbolic’s suggestion, not all language in an identifica-
tion of goods that is “specific, definite, clear, accurate, and
concise,” Appellant’s Br. 25 (quoting TMEP § 1402.01),
imposes a meaningful limitation for purposes of likelihood
of confusion analysis. Similarly, the PTO’s alleged allow-
ance of similar limitations in other registrations does not
dictate the outcome in this case. See, e.g., Juice Genera-
tion, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338 (Fed.
Cir. 2015) (explaining that “[l]ikelihood of confusion must
be analyzed on a case-by-case basis”).
In the absence of meaningful limitations in either the
application or the cited registrations, the Board properly
presumed that the goods travel through all usual chan-
nels of trade and are offered to all normal potential pur-
chasers. See Viterra, 671 F.3d at 1362 (“[I]t is well
established that, ‘absent restrictions in the application
and registration, goods and services are presumed to
travel in the same channels of trade to the same class of
purchasers.’” (quoting Hewlett–Packard Co. v. Packard
Press, Inc., 281 F.3d 1261, 1268 (Fed. Cir. 2002))). In-
deed, Symbolic does not contest the Board’s findings with
respect to potential purchasers. In sum, the Board’s
findings that the second, third, and fourth DuPont factors
weigh in favor of a likelihood of confusion conclusion are
supported by substantial evidence.
IN RE: I.AM.SYMBOLIC, LLC 17
II. Other Registered I AM Marks
Under the sixth, eighth, and twelfth DuPont factors,
we must consider “[t]he number and nature of similar
marks in use on similar goods”; “[t]he length of time
during and conditions under which there has been con-
current use without evidence of actual confusion”; and
“[t]he extent of potential confusion, i.e., whether de mini-
mis or substantial.” DuPont, 476 F.2d at 1361. We have
explained in an opposition context that “evidence of third-
party use bears on the strength or weakness of an oppos-
er’s mark.” Juice Generation, 794 F.3d at 1338. “The
weaker an opposer’s mark, the closer an applicant’s mark
can come without causing a likelihood of confusion and
thereby invading what amounts to its comparatively
narrower range of protection.” Id.
Symbolic argues that the Board erred by failing to
consider the sixth, eighth, and twelfth DuPont factors in
light of our recent precedent. Appellant’s Br. 41–42
(citing Jack Wolfskin Ausrustung Fur Draussen GmbH &
Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d
1363, 1373–74 (Fed. Cir. 2015), cert. denied, 136 S. Ct.
982 (2016); Juice Generation, 794 F.3d at 1338). Accord-
ing to Symbolic, the Board was obligated to consider
third-party use and the peaceful coexistence on the Regis-
ters and in the marketplace of Symbolic’s class 25 regis-
tration with the registrants’ marks for at least ten years.
Symbolic also contends that the Board should have con-
sidered the fact that the Beeline, St. Germain, 7 and Finch
Registrations have coexisted on the registers and in the
marketplace for years, despite all offering bracelets or
jewelry.
7 Registration No. 1,357,947 for a composite mark
including I AM and a design for “jewelry” owned by Saint
Germain Foundation.
18 IN RE: I.AM.SYMBOLIC, LLC
The PTO responds that Jack Wolfskin and Juice Gen-
eration are “inapposite based on the record of this case.”
Appellee’s Br. 43. Here, unlike in Jack Wolfskin and
Juice Generation, the PTO contends “there is no evidence
of extensive or voluminous third-party registrations or
use of I AM marks co-existing for the same or similar
goods.” Id. at 44. The PTO further argues that those
cases did not change “well-settled precedent” “that the
coexistence of similar marks in third-party registrations
does not justify registering a mark that is likely to cause
confusion with previously registered marks.” Id. (citing
AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406
(CCPA 1973)).
We agree with the PTO that Jack Wolfskin and Juice
Generation are distinguishable. Both cases involved
oppositions to the registration of applied-for composite
marks that were not identical to the opposers’ marks.
The applied-for marks included a component, a paw print,
Jack Wolfskin, and “peace” and “love” with a product-
identifying term, Juice Generation, used “ubiquitous[ly],”
Jack Wolfskin, 797 F.3d at 1374, or in a “considerable
number of,” Juice Generation, 794 F.3d at 1339, third-
party marks for the same or similar goods. Based on the
evidence showing the frequency of use of paw prints on
clothing and peace and love in connection with restaurant
services or food products, we concluded that the Board
gave inadequate consideration to the actual or potential
weakness of registrants’ marks in the likelihood of confu-
sion analysis. Jack Wolfskin, 797 F.3d at 1374 (explain-
ing that “the considerable evidence of third-party
registration and usage of marks in commerce that depict
paw prints on clothing . . . indicates that the paw print
portion of [opposer’s] mark is relatively weak”); Juice
Generation, 794 F.3d at 1340 (“[W]e conclude that the
Board gave inadequate consideration to the strength or
weakness of [opposer’s] marks.”).
IN RE: I.AM.SYMBOLIC, LLC 19
The factual scenario here, involving identical word
marks, stands in sharp contrast. As an initial matter,
Symbolic has neither introduced evidence, nor provided
adequate explanation to support a determination that the
existence of I AM marks for goods in other classes, e.g., its
class 25 registration for clothing, support a finding that
registrants’ marks are weak with respect to the goods
identified in their registrations. Symbolic’s ownership of
the class 25 registration does not give it the “right to
register [the same] mark on an expanded line of goods [in
the applications at issue] where the use of the mark
covered by such registration would lead to a likelihood of
confusion, mistake or deception.” Jackes-Evans Mfg. Co.
v. Jaybee Mfg. Corp., 481 F.2d 1342, 1345 (CCPA 1973).
Furthermore, Symbolic’s evidence of third-party use of
I AM for the same or similar goods falls short of the
“ubiquitous” or “considerable” use of the mark compo-
nents present in its cited cases. See Jack Wolfskin, 797
F.3d at 1374; Juice Generation, 794 F.3d at 1339; see also
id. at 1337 n.1 (listing 26 third-party marks). For classes
3 and 9, Symbolic has only pointed to the mark over
which the Board concluded that there was a likelihood of
confusion for the same or similar goods. In other words,
Symbolic has not pointed to any record evidence to sup-
port a finding that multiple third parties use the mark I
AM for the listed goods in its class 3 and 9 applications.
For class 14, Symbolic points to three I AM marks al-
legedly coexisting without confusion for the same or
similar goods. Thus, vis-à-vis each of the two registra-
tions relied on by the Board in its refusal, Symbolic points
to two other third-party registrations. Assuming arguen-
do that the existence of two third-party registrations
could demonstrate the weakness of a mark, “the Board
may focus its analysis on dispositive factors, such as
similarity of the marks and relatedness of the goods.”
Han Beauty, 236 F.3d at 1336. “Indeed, any one of the
factors may control a particular case.” Dixie Restaurants,
20 IN RE: I.AM.SYMBOLIC, LLC
105 F.3d at 1407. As we discussed supra, substantial
evidence supports the Board’s findings that the mark and
registrants’ marks are identical word marks for the same
or related goods with identical trade channels and pur-
chasers. Given the strength of these DuPont factors and
the limited evidence of third-party use, any error in
failing to specifically analyze the potential weakness of
registrants’ marks based on such limited third-party use
was harmless error. See Opryland USA Inc. v. Great Am.
Music Show, Inc., 970 F.2d 847, 850 (Fed. Cir. 1992) (“Not
all of the duPont factors are relevant or of similar weight
in every case.”).
Accordingly, we find no reversible error with respect
to the sixth, eighth, and twelfth DuPont factors.
III. Likelihood of Reverse Confusion
“The term ‘reverse confusion’ has been used to de-
scribe the situation where a significantly larger or promi-
nent newcomer ‘saturates the market’ with a trademark
that is confusingly similar to that of a smaller, senior
registrant for related goods or services.” In re Shell Oil
Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993) (quoting Sands,
Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 957
& n.12 (7th Cir. 1992)). In that situation, “[t]he junior
user does not seek to benefit from the goodwill of the
senior user; however, the senior user may experience
diminution or even loss of its mark’s identity and goodwill
due to extensive use of a confusingly similar mark by the
junior user.” Id. Trademark law “protects the registrant
and senior user from adverse commercial impact due to
use of a similar mark by a newcomer.” Id.; see also Wall-
paper Mfrs., Ltd. v. Crown Wallcovering Corp., 680 F.2d
755, 762 (CCPA 1982) (explaining “even where there is
reverse confusion . . . another source with superior de jure
rights may prevail regardless of what source or sources
the public identifies with the mark”).
IN RE: I.AM.SYMBOLIC, LLC 21
Symbolic argues that the Board found a likelihood of
reverse confusion and that that finding is not supported
by substantial evidence. The PTO responds that the
Board did not find a likelihood of reverse confusion and
that its finding that the fame of the marks, the fifth
DuPont factor, is neutral is supported by substantial
evidence.
We agree with the PTO that the Board did not find a
likelihood of reverse confusion. The Board treated the
fifth DuPont factor as “neutral” and explained that the
“purported lack of fame” of registrants’ marks was of
“little consequence.” Symbolic I, 116 U.S.P.Q.2d at 1412;
Symbolic II, 2015 WL 6746544, at *8; Symbolic III, 2015
WL 6746545, at *8. That determination is consistent with
our precedent holding that the purported lack of fame of a
registrant’s mark has “little probative value” in the likeli-
hood of confusion analysis. Majestic Distilling, 315 F.3d
at 1317.
Symbolic points to a footnote in the Board’s opinions
in support of its contention that the Board found a likeli-
hood of reverse confusion. Therein the Board 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 (emphasis added); Symbolic II,
2015 WL 6746544, at *8 n.9 (emphasis added); Symbolic
III, 2015 WL 6746545, at *8 n.10 (emphasis added). The
Board made no factual findings with respect to the fame
of the mark.
When viewed in the context of the Board’s opinion as
a whole, the cited footnote appears to be the Board’s
response to Symbolic’s arguments regarding the alleged
fame of Adams and the mark. The footnote merely ex-
plains that to the extent the Board agreed with Symbolic
that Adams or the mark are famous, such a finding would
22 IN RE: I.AM.SYMBOLIC, LLC
not support registration of the mark. Therefore, the
Board’s statements do not amount to a finding of reverse
confusion.
CONCLUSION
We have considered Symbolic’s remaining arguments,
but conclude that they are without merit. The Board’s
factual findings were supported by substantial evidence
and its legal conclusions were not erroneous as a matter
of law. For the reasons set forth above, we affirm the
Board’s decision.
AFFIRMED