In re i.am.symbolic, LLC (Fed. Cir. 2017)
will.i.am of the Black Eyed Peas (and solo) has a registered mark on his professional name, but is now seeking a mark of more biblical proportions: “I AM.”
Actually, his company i.am.symbolic already has registered the mark “I AM” for all sorts of clothing in class 25, but is now seeking to register the mark in other classes including cosmetics, sunglasses, and jewelry. The problem for will.i.am is not the Talmud, but instead the “I am” mark owned by beeline group that sells sunglasses, jewelry as well as registrations of the same mark owned by others.
The key question for rejecting a registration is whether the use of the mark would create a likelihood of confusion. Although will.i.am is a well-known music group front man, he is not widely known simply as “i.am.” According to the court, the application offers no meaningful limitation on the mark so as to more directly tie that link (such as indicating the i.am mark will always be used in conjunction with the will.i.am mark). Although the mark registration indicated that the goods would be used in ways “associated with . . . will.i.am,” the court found that the limitation was not meaningful.
will.i.am argued that the court should consider the peaceful coexistence of the mark owners. On appeal, the Federal Circuit limited that doctrine to non-identical cases and cases where a large number of products were using similar marks (such as “paw prints on clothing”). See 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);
DRLaw, a party without standing cannot ask the courts to invalidate a patent as a constitutional matter. Allowing this end run is constitutional?
This is not merely a matter of statutory authority or the inherent rights of the executive. The patent owner’s patent is on trial. The patent owner’s rights are at stake. In contrast, EFF has nothing at stake. Nothing.
Jane, consider my post in the other thread where I quote from ASARCO. To simply vacate the judgment of the Arizona courts would be to impose a Federal standing requirement on them. That is why the court took the case.
If the case were first filed at the federal level, the result would have been a summary vacatur. That is clear.
Paul, I am responding to you hear because my posts are being blocked in the standing thread.
Paul, on the contrary, both reexaminations and IPRs were intended as low cost alternatives to litigation. Standing of the petitioner was assumed.
Dennis, you really need to cover the astounding standing decision in Personal Audio v. EFF. link to cafc.uscourts.gov
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