After reports that will.i.am was taking legal action against Pharrell Williams over the latter’s effort to trademark a brand called “i am OTHER,” will.i.am’s attorney is denying that a lawsuit is being filed but that they are engaged in “a run-of-the-mill trademark procedure.”
“Will.i.am is not suing Pharrell Williams,” the singer’s attorney, Ken Hertz, said in a statement. “What will.i.am has done is what any trademark owner much do to protect and maintain a trademark. Our client is following the standard procedures of the U.S. Patent and Trademark Office to defend trademarks that have been registered and that he has used widely and continuously for many years.”
It may not be litigation per se, but the U.S. Patent and Trademark Office has set a schedule for discovery and a trial that extends into next year. A purpose of the registrations is to prevent confusion in the marketplace, particularly in merchandising.
In his statement, Hertz said that his client is following “standard procedures” of the Trademark Office “to defend trademarks that have been registered and that he has used widely and continuously for years.” Will.i.am has registered several trademarks, including “I AM,” and has been registering other marks that include the words “I AM” along with other phrases, like “I AM ANGEL,” for philanthropic uses. He said that when Williams’ legal team applied for registration of the i am OTHER mark, they did try to resolve the dispute, but with Trademark Office deadlines for approving the trademark approaching, “will.i.am had no choice but to lodge his objection at the time he did.”
Hertz said, “This is how the process works. We own a trademark. They have applied for a trademark. We think their proposed trademark is too close to our registered and common law trademarks. They disagree.”
He added, “We hope to work out a sensible compromise that will allow both parties to move forward without unnecessary acrimony.”
Will.i.am’s objections to Williams’ trademark application were first reported in Rolling Stone on Wednesday.
Update: Brad D. Rose, attorney for Williams, said that the “statements made by Will and his advisors over the past two days amount to revisionist history in the face of the public condemnation against Will that has resulted after the story broke yesterday. The plain truth is that Will has obstructed every overture made by Pharrell to amicably resolve this matter and has steadfastly refused to engage in a dialogue.”
Rose added that will.i.am and his attorneys have “instituted no less than eight cases against Pharrell in the Trademark Trial and Appeal Board” and have threatened “on more than one occasion” to sue for trademark infringement in federal court.
“All of this because Will misguidedly believes that he has the sole right to the words I AM in commerce, notwithstanding the myriad of I Am compound trademarks that coexist on the trademark register and in the marketplace,” Rose said.