Wednesday, June 13, 2012

Test Your TTAB Judge-Ability: Are NIKEA and IKEA Confusingly Similar for Candy?

Applicant Arsen Manasyan sought to register the mark NIKEA for "chocolates, candy," but Ikea opposed, claiming likelihood of confusion with its registered mark IKEA for various food items, including candy. How would you rule? Inter-IKEA Systems B.V. v. Arsen Manasyan, Opposition No. 91194783 (May 17, 2012) [not precedential].

Because the goods are in-part identical, the Board must presume that they travel in the same, normal channels of trade to the same, usual classes of consumers. So it all came down to the marks.

Both IKEA and NIKEA are coined terms with no particular meaning. The similarities in in sight, sound, connotation and commercial impression to outweigh their dissimilarities.

Ikea claimed that its mark is famous, but its proofs fell short. Although it proved a "fair amount of market exposure," Ikea did not provide "clear context for its sales and advertising numbers with regard to the industry, nor as to how the fame of its IKEA mark in the media relates specifically to its chocolate and candy products."

Ikea argued that candy products are inexpensive and are not purchased with any sophistication, but the Board (rather strangely) pointed to a lack of evidence "regarding the typical price of candy and chocolates or the average sophistication of the consumers thereof." [Since there are no limitations in the application or cited registration, shouldn't the Board assume that the involved goods include inexpensive candy purchased on impulse? - ed.].

Balancing the du Pont factors, the Board found confusion likely and it sustained the opposition.

TTABlog comment: How did you do? Was it like taking candy from ....? Or did you have no ikea what you were doing?

Text Copyright John L. Welch 2012.


At 6:17 PM, Anonymous Mitchell Stabbe said...

The Board also said that the evidence of advertising, sales and media coverage was not sufficient to show fame because they "relate solely to the 2009-2011 time frame, a rather narrow time period, and one that is not sufficient to establish fame for
purposes of this proceeding."

No authority was cited for this proposition. Moreover, in Under Armour, Inc. v. Renee Bode ,Opposition No. 91178653 (TTAB May 21, 2009), the Board found fame where the evidence of sales and advertising covered the period 2004-2007. Indeed, in Weider Publications, LLC v. D&D Beauty Care Company, LLC , 109 USPQ2d 1347(TTAB 2014) the Board found fame where advertising figures were provided from 2009 forward (but presumably the Board only considered the sales until May 2010 when the opposed application was filed).

The Board may well have been absolutely correct that the opposer had not shown fame for its mark as applied to the relevant goods. It just disturbs me when there are statements such as the one above that can be cited for the proposition that there is a bright-line rule regarding how far back one must go in order to prove fame.

Finally, there are marks that bacome famous virtually overnight (e.g. EXXON?). Are their owners precluded from making the argument, based on a massive advertising campaign at the time of roll-out, that the fame of their marks entitles them to a broad scope of protection against someone who files for a similar mark six months later? A year later? Two years?

Mitch Stabbe


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