Yesterday morning, reports claimed that will.i.am the artist, songwriter, and producer sued or threatened to sue Pharrell, the artist, songwriter, and producer for Pharrell’s plans to use “i.am.OTHER” as a brand name. Now we know that yesterday evening, will.i.am tweeted that he has not filed a suit against Pharrell, but he never said that he was opting out either.
The blogs and twittersphere when bananas on how petty will.i.am was being over “two little words”. People started making jokes by drafting sentences and highlighting their common use of the words “I” and “Am”. In sum, people didn’t believe that will.i.am can own those two words because if he did, he would have to sue everyone in the world.
*Forgive them Father, for they know not what Trademark Law is really all about.*
Yo, you won’t believe this: will.i.am has 3 registered trademarks for “will.i.am” and as of two months ago, filed for three additional trademark registrations…reflecting a total of SIX different classes of goods and services. He also has two companies using the “i.am” mark –> i.am.bizzy llc and i.am.symbolic llc. He also has a non profit (or two or three) using the “i.am” mark. And…his mark is well known around the world for being connected to him and his products and services. What does all of this mean? Will may have a point.
Point One: Understand that Trademark Law provides will.i.am a limited monopoly.
In a nutshell, trademark law says that any word, sound, look, or feel that can designate the source of a product or a service can qualify as a trademark. Our country gives trademark owners the right to protect their marks so that the public, the consumer, is not confused or misled as to whom is the source of a product or service.
Trademark law is NOT about having the exclusive right to have an absolute monopoly on a word or phrase. I repeat, is NOT. Trademark law gives someone rights to use a phrase in a specific geographic area, on a specific type of product or service, in a specific type of market. A registered trademark with the USPTO gives exclusive rights to use a phrase in the United States, but even still, it’s for a specific type of product or service in a specific type of market. In other words, will.i.am has the exclusive right to use “will.i.am” as a trademark in the entire United States only on the classes of goods and services for which he has registered.
See? NOT an absolute monopoly. So, to all of you tweeting things like —“i.am. going to work today. I hope i.am. not sued by will.i.am” for this tweet.” can just stop.
Point Two: Trademark Law gives will.i.am the right to prevent anyone from entering into his industry with a product or service using a mark that is confusingly similar to his mark – in whole or in part, in either sight or sound – or is likely to make his famous mark less distinctive.
Enter Pharrell. So, he allegedly wants to use “i.am.OTHER” as a brand name. Considering that Pharrell and will.i.am operate in within the same industry, have similar global reach, and share within the same genre of music —> not so fast, Pharrell.
Trademark infringement asks the question: would the consumer likely be confused as to the source of a product or service if Pharrell suddenly began putting “i.am.” on music and his other products and services to signify his brand created that product or service?
Trademark dilution asks the question: would will.i.am’s brand lose its distinctiveness as a brand if Pharrell was suddenly allowed to to describe himself, his music, his outreach, and other subbrands with an “i.am” mark?
The conservative answer to both questions is that the answer cannot be NO. In other words, will.i.am has a valid point. At the end of the day, it’s not about being petty over “two little words”. It’s about a decade old, well established mark that will.i.am has done a great job of building with the public – both in the music industry and his non-profit philanthropic work. And it is about the fact Pharrell has no right to come in and start “siphoning off” what will.i.am has built on that “i.am”.
ALTERNATE POINT: This is why, ladies and gentlemen, trademark law education is necessary in today’s post-web 2.0 world. And why a knowing an experienced trademark lawyer is beneficial if you’re in the business of building a brand. Trademarkia searches are NOT enough. Think about it. If Pharrell searched “i.am.Other” in Trademarkia, he would get this:
However, these results are not absolute. It does not tell you whether it’s available because the USPTO has rejected applications similar to it. It does not tell you whether it’s available because it’s a mark that gets opposed consistently when published for opposition. The alternate lesson in today’s story is that before you apply for a trademark, you must conduct a legal analysis on the likelihood of the USPTO rejecting your mark and the likelihood of it infringing on an existing mark. At my office, we call this “trademark clearance” or a “trademark viability report”. It’s worth every dime. And cheaper than being sued after the fact for infringement and/or dilution (or having to re-brand).