Pick one word to describe the trademark fight between Will.i.am and Pharrell Williams and it’s got to be “confusion.”
Last week came word that Will.i.am was suing Williams, but in truth there was no such lawsuit. At least at that moment. What was happening was that the two musicians were battling each other over Williams’ attempt to register “I Am Other” at the trademark office.
But on Monday, Williams’ I Am Other Entertainment launched a real lawsuit in New York federal court against William Adams and his I.Am.Symbolic company. The lawsuit seeks a declaratory judgment of trademark non-infringement. It also has the potential to add to the comedy of the proceedings.
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After all, the essential purpose of a trademark is to identify the source of products or goods. Trademark infringement claims come when someone — like Will.i.am — points out how someone else — like Pharrell Williams — is allegedly using a mark that is confusingly similar and might obscure that source.
Where it gets interesting in this fight between Will.i.am and Pharrell Williams is the particular phrase in question.
As Williams’ company puts it in the new lawsuit, “The I AM OTHER mark means ‘I am something else,’ leaving what that ‘else’ is to the imagination of the consumer. It certainly does not mean “I am Will’ or in any way suggest Defendants or the WILL.I.AM mark. The inclusion of the respective terms ‘WILL’ and ‘OTHER,’ as well as the location of ‘I AM’ in each mark, evoke considerable different commercial impressions making consumer confusion unlikely.”
In other words, the mark itself expressly disclaims any association with the Black Eyed Peas singer.
The lawsuit (read here in full) was filed by attorney Brad Rose at Pryor Cashman after months of dispute, starting with a cease-and-desist letter sent by Will.i.am’s team last December and continuing through the registration fight at the Trademark Office these past four months.
In the lawsuit, Will.i.am’s hold over “I Am” is described as very weak. The complaint acknowledges that he has a trademark on that phrase but only covering clothing goods. Will.i.am has tried to register “I Am” in other classes of goods like jewelry and accessories, but a trademark examiner reportedly rejected those attempts because they were “confusingly similar to prior registrations” made by others.
Pharrell Williams also points to popular culture, from Dr. Seuss’ use of the words “Sam I am” from the book, Green Eggs and Ham, to the long list of other musicians who have put “I Am” to use. For example, there’s Beyonce’s 2008 album, I Am…, as well as the 146 artists (I Am Virgin, I Am Ghost, I Am Band…) counted by the plaintiff on allmusic.com.
“Thus, the I AM formative is diluted in the music industry, and Defendants cannot preclude others from using that phrase especially when it is used in conjunction with additional, distinctive words,” says the lawsuit.
Good news for anybody who wishes to start up a rock group named I Am Litigious, perhaps.
Then there’s Will.i.am’s view, which is aptly described in the cease-and-desist letters from his lawyer.
Yes, there might be others who use “I Am,” but Will.i.am is famous, has invested in a “family” of marks (I Am Scholarship, I Am Home, I Am Angel, etc.), and has collaborated with Pharrell Williams in the past, which might lead consumers to believe that “I Am Entertainment” represents another such collaboration.
As Jill Pietrini, attorney for Will.i.am, tells her counterpart, “Any citation of third party I AM formative registrations for cosmetics and clothing as alleged evidence that Mr. Adams’ mark is somehow weak is unpersuasive because none of the registrants are well known as musicians in the entertainment industry. Your citation of other musicians using I AM formative marks is equally unpersuasive because none of these musicians have collaborated with Mr. Adams the way Mr. Williams has, and none of them appear to have the visibility and recognition in the entertainment industry, the way Mr. Williams has. Mr. Williams cannot avoid liability by pointing to other uses of I AM.”