What at first appears to be a comical lawsuit may raise a credible point when it comes to trademark infringement analysis. This particular situation began with the famous Pharrell Williams (aka Pharrell) seeking to register the trademark, “I Am Other,” with the Patent and Trademark Office for use in connection with a variety of goods and services to the chagrin of recording artist, will.i.am. After receiving a cease-and-desist letter from will.i.am’s legal counsel, Pharrell initiated a lawsuit against will.i.am and his company, I.Am.Symbolic. seeking declaratory judgment that the pending I Am Other trademark was non-infringing and will.i.am subsequently counterclaimed for trademark infringement.[i] While the famous names involved in this lawsuit are enough to make it newsworthy, it is will.i.am’s attempt to use Pharrell’s history of quasi-infringing trademark registrations as evidence of his current infringement that makes this particular action legally noteworthy.
When determining the likelihood of confusion for a registered trademark, courts look to the Polaroid factors, which are a non-exhaustive list of variables that may be considered when determining whether the consuming public would likely be confused by this infringing mark.[ii] These factors include considerations such as the strength of the original mark, the proximity of the mark and any evidence of actual confusion.[iii] Additionally, courts in the past have considered a defendant’s attempt to capitalize upon the popularity of the name chosen.[iv] However, this attempt by will.i.am’s counsel to point to Pharrell’s past possible infringement of unrelated, third parties is not an element courts tend to examine in trademark infringement suits.
But this practice does appear to be a significant consideration in analysis under the Anti-Cybersquatting Consumer Protection Act (ACPA).[v] Under the ACPA, a person’s registration or acquisition of multiple domain names that the person knows are identical or confusingly similar to trademarks at the time of the domain name’s registration can signal bad faith intent in registration. Therefore, a defendant’s past behavior is relevant despite being unconnected to the current domain name and trademark at issue.
Perhaps a history of infringing behavior involving other parties does indicate a registrant’s intent when seeking to register their mark and should be a variable considered when a court decides upon an infringement action. While will.i.am’s counsel raises an intriguing point, he may want to avoid allowing subsequent trademark owners from raising this point as he has been accused of doing the very same thing. Will this become a new element when deciding trademark infringement? I.am. not sure.
[i] I Am Other Entm’t v. Adams, No. 13-CV-4547, 2013 WL 3297482 (S.D.N.Y. July 1, 2013).
[ii] Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961).