August 27, 2018
will.i.am’s trademark application for #Willpower has received a final refusal by the Trademark Trial and Appeal Board (“TTAB”). The TTAB found that #Willpower was likely to be confused with a previously registered mark which consisted of two offset, identical mountain peaks with the stylized text “WILLPOWER WEAR” below and “Have the will. . .” to the right of the mountain peaks (“Registered Mark”).
What was the reasoning behind the TTAB’s refusal?
Trademark Application Refusal
One of the most common reasons that the United States Patent and Trademark Office (“USPTO”) will refuse a trademark application is that the applied for mark is likely to cause consumer confusion with previously registered marks. The two key factors in the likelihood of confusion analysis are the similarities of the respective marks and the relatedness of their associated goods or services. In the case at hand, will.i.am was looking to register #Willpower for his clothing line in the same class as that of the Registered Mark. Additionally, the TTAB found that the marks were similar because the shared word WILLPOWER was dominant enough to create a similar appearance, connotation and overall commercial impression between the two marks.
Adding Hashtags to Your Mark
To a layperson, #Willpower and the Registered Mark do not look similar. However, the USPTO is not charged with preventing registration of only similar looking marks. The USPTO endeavors to protect consumers from confusion involving marks that are similar in their entirety of appearance, sound, connotation and commercial impression. Additionally, when the goods or services associated with two given marks are identical, as in the case at hand, less similarity is needed to suggest confusion. In recent years, hashtags have become a popular mechanism for brands to gain notoriety. The USPTO is aware of this and has concluded that hashtags generally serve no source-indicating function. As such, in the instant matter, the TTAB found that the overall appearance, sound, connotation and commercial impression of #Willpower is simply “Willpower.”
Preventing Prolonged Trademark Application Review
will.i.am initially applied for a trademark in April of 2013. It took over five years from the date of filing the initial trademark application for a final decision to be rendered. Additionally, will.i.am had a separate seven-year battle with the USPTO over an application for “I AM.” Most people do not have the time and resources to wait five to seven years for a final ruling on their trademark applications. Accordingly, to avoid possible delays in registering a mark it is always wise to consult with a trademark attorney who can advise you on the ins and outs associated with the registration process. If you are interested in learning more about this topic, or if you have received a trademark office action, please e-mail us at info@kleinmoynihan.com, or call us at (212) 246-0900.
The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.
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