The Trademark Trial and Appeal Board (TTAB) affirmed the examiner’s decision to deny three applications for “I AM” marks filed by i.am.symbolic, LLC (“Applicant”), finding that Applicant’s proposed “I AM” mark was confusingly similar to other previously registered “I AM” marks.
Applicant submitted applications for three different marks containing the component “I AM” for cosmetics and personal products, sunglasses and rubber bracelets “all associated with William Adams, professionally known as ‘will.i.am.’” The examiner refused to register the applications in light of previously registered “I AM” marks for perfume, sunglasses and jewelry.
Applicant argued that there was no likelihood of confusion because its goods were exclusively associated with Applicant’s founder, will.i.am, the goods under the cited marks were marketed differently, and the cited marks were not famous. The TTAB rejected all three arguments.
The TTAB held that the limitation in the identification of goods as being “associated with William Adams, professionally known as ‘will.i.am,’” did not impose a meaningful limit on Applicant’s goods. Rather, the TTAB found that the language was precatory and not binding on consumers because purchasers are unlikely to know about the limitation in the identification of goods. The TTAB also rejected Applicant’s contention that the applied-for mark would be perceived as identifying will.i.am, explaining that the mark is “I AM,” not “WILL.I.AM,” and that the evidence did not show that will.i.am was widely known as “i.am” or that “i.am” and “will.i.am” were used interchangeably.
The TTAB also rejected Applicant’s argument that there is no likelihood of confusion because the goods under the cited marks were marketed differently. The board reasoned that, because Applicant’s identification of goods failed to include any meaningful limitations on the channels of trade, the differences in the way the respective goods might be marketed were irrelevant.
Further, the TTAB accorded little weight to the purported lack of fame of the cited marks. The TTAB reasoned that an examining attorney is not normally expected to submit evidence as to the fame of a cited mark because of the nature of the evidence required to prove fame, and accordingly, the fame of the mark is normally treated as neutral in an ex parte context when no evidence of fame has been provided.
After balancing the relevant likelihood of confusion factors, the TTAB held that confusion was likely and affirmed all three refusals.
In re i.am.symbolic, LLC, Serial Nos. 85044494, 85044495, and 85044496 (TTAB October 7, 2015) [precedential].
Pinterest Fails to Pin Pintrips on Trademark Infringement and Dilution Claims
The district court held that the “Pintrips” and “Pin” marks used by Pintrips did not infringe or dilute Pinterest’s “Pin” and “Pinterest” registered trademarks.
Pinterest is a social media company that permits its users to view, post and organize content by creating pins on their virtual Pinterest Pinboard. Popular Pinboard categories include recipes, fashion, home décor and travel.
Pintrips is a website-based travel planning service that allows users to monitor the price fluctuations of airline flights by pinning trip itineraries to their Tripboard on Pintrips’ site.
After analyzing the eight-factor test articulated by the Ninth Circuit in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979), the court held that Pintrips’ use of “Pintrips” does not infringe Pinterest’s rights to its registered “Pinterest” mark. Although the court found that many of the Sleekcraft factors were neutral, the court found that the two factors favoring Pintrips (the proximity of the parties’ services and the likelihood of expansion) support Pintrips to a significantly greater degree than the two factors favoring Pinterest (the strength of the “Pinterest” mark and the similarity of the “Pinterest” and “Pintrips” marks). The court found that the differences between the parties’ goods and services strongly weighed against confusion, reasoning that while both parties allow their users to research travel destinations, Pinterest is aimed at social networking and does not have the travel booking functions provided by Pintrips. Further, the court found that Pinterest did not establish that either party is likely to expand its services to directly compete with the other.
The court also held that Pintrips did not infringe Pinterest’s registered “Pin” mark because Pintrips’ use of the term “pin” constitutes fair use. To prevail on a fair use defense, the alleged infringer must prove that the words at issue are being used “other than as a mark, . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party.” 15 U.S.C. § 1115(b)(4). The court found that Pintrips used the term “pin” other than as a mark and only to describe its goods or services, because the term “pin” was being used in the same way that many other companies use it – as a verb for attaching one virtual object to another. Further, the court concluded that Pintrips exercised good faith because Pintrips decided to use the term “pin” to describe the well-known computer operation of pinning before it had even heard of the website Pinterest.
To prevail on its dilution claims, Pinterest had to show that (1) its mark is famous and distinctive, (2) the defendant is making use of the mark in commerce, (3) the defendant’s use began after the mark became famous, and (4) the defendant’s use of the mark is likely to cause dilution. The court held that Pinterest could not support a trademark dilution claim because virtually all of the news articles offered by Pinterest to show fame were published after Pintrips first used its mark in commerce.
Pinterest, Inc. v. Pintrips, Inc., No. 13-CV-04608-HSG (N.D. Cal. Oct. 21, 2015).