I.AM.INFRINGING?

Blurring the lines (via possible dilution, of course) of who has the right to a trademark incorporating the words “I AM,” early last week Judge Michael Dolinger of the Southern District ordered attorneys to agree to a discovery schedule and move forward with the case I Am Other Entertainment LLC v. William Adams and I.Am.Symbolic, LLC, 13-cv-4547 or, as everyone else knows it, the lawsuit in which Pharrell Williams (Pharrell), writer/rapper/singer/producer and the voice behind some of this summer’s biggest hits (Daft Punk’s “Get Lucky” and Robin Thicke’s “Blurred Lines”), is suing will.i.am, writer/rapper/singer/producer and the mastermind behind the Black Eyed Peas.

Pharrell seeks a declaratory judgment from the court that his proposed mark, “I AM OTHER,” which doubles as the name of his YouTube channel, and for which he has filed trademark applications in several different categories of goods for use in commerce, including jewelry, leather goods, and entertainment services, among others, does not infringe will.I.am’s mark, well, um, “WILL.I.AM.” The hip-hop star, formerly known as William Adams (Adams), successfully registered his musical name mark on the principal register in September of 2009, along with the mark “I AM”, in several different contexts, on the supplemental register. Pharrell and his attorneys argue that Adams has “very weak rights” — “if any” — to these supplemental marks in particular. In fact, Pharrell argues, “I AM” is so “pervasive in the music industry[,] that it is non-distinctive when standing alone.” The complaint proceeds to run through names of several musical groups and songs that contain “I AM” in their names in an attempt to show the term’s lack of distinctiveness.

Regarding procedural history, in December of 2012, Adams and his attorneys allegedly sent the plaintiffs a cease and desist regarding the use of “I AM OTHER” based on their alleged belief that it was confusingly similar to the “WILL.I.AM” mark. In a follow-up letter, they asserted that the use of “I AM OTHER” was confusingly similar to Adams’ “family of marks,” or the “I AM” marks that had been registered on the supplemental register. In May, following back-and-forth correspondence regarding same, the defendants herein opposed Pharrell’s trademark applications for “I AM OTHER” before the TTAB, providing the plaintiffs with the concrete dispute that was needed between the two parties to initiate a declaratory judgment action. The action was filed by Pharrell and his attorneys at the beginning of July. In the complaint, Pharrell seeks a declaration by the court of non-infringement and non-dilution, and that his use of his proposed mark is not unfairly competing with will.I.am and his company’s “family of marks.”

Of course, for will.I.am to show infringement of his supplemental marks which simply use the words “I AM,” he’ll have to “Get Lucky.” The well-known test for whether a mark is infringing remains whether the mark is distinctive (and how distinctive it is) and the likelihood of confusion of consumers for the product or service itself. While the strength of the mark “I AM” may prove to be weak, and readily distinguishable from Pharrell’s “I AM OTHER” mark, it would seem, for argument’s sake, that there could be initial interest confusion (and thus, infringement), whereby consumers could be drawn initially to Pharrell’s YouTube channel because of the use of the “I AM” mark in “I AM OTHER” and the belief in its affiliation with will.I.am, but stay around because of interest in Pharrell’s channel as a suitable replacement — thus, “misappropriating the acquired good will” of Adam’s mark.

Confusing? Absolutely. But, in the end, the trademark fight at hand has many hip-hop fans asking “Where is the Love?” between two of the giants of the genre. “I Gotta Feeling” that this isn’t going to end well for one of them.

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