Tuesday, May 06, 2014

Precedential No. 21: IKEA Gets Split Decision Against AKEA: Section 2(d), Yes in Part; Dilution, No

The Board sustained Opposer Ikea's opposition to registration of the mark AKEA for certain class 35 services, including "providing advice and information in the field of career and business opportunities," finding the mark likely to cause confusion with its registered mark IKEA for educational services in the field of personnel management. But the Board dismissed Ikea's Section 2(d) claim as to applicant's supplements and vitamins (class 5) and its informational services regarding lifestyle topics (class 44). Ikea also claimed dilution by blurring, but that claim failed due to lack of proof that the mark IKEA became famous prior to applicant's filing date. Inter IKEA Systems B.V. v. Akea, LLC, 110 USPQ2d 1734 (TTAB 2014) [precedential].

Likelihood of confusion: The Board found that, for Section 2(d) purposes, the mark IKEA is famous for "retail store services in the field of furniture, housewares and home furnishings," and is otherwise a strong mark for furniture, housewares, home furnishing, food products, and restaurant services.

Not surprisingly, the Board found the involved marks to be similar. Both marks are coined terms that look and sound alike, they have no known difference in meaning to distinguish them, and they engender a similar commercial impression.

As to applicant's vitamins and supplements, Ikea failed to show any relationship between those goods and its goods and services. However, applicant's services of "providing advice and information in the field of career and business development" are, the Board found, closely related to Ikea's educational courses in the field of personnel development, and these were the only goods or services in the case deemed to be related.

Ikea failed to prove that applicant's vitamins and supplements move in the same channels of trade as to its own goods. However, the Board found that the channels of trade for the parties' related services overlap. Consumers of Ikea's goods and services and of applicant's products will exercise a moderate degree of care in their purchasing decisions, a factor that favored applicant.

Balancing the relevant duPont factors, the Board found that, despite the fame of the IKEA mark and its similarity to AKEA, confusion is not likely as to applicant's class 5 goods and class 44 services because of the differences in the parties' respective goods and services, the differing channels of trade, and the degree of care that purchasers will exercise. Applicant's class 35 services, however, are in part legally identical to those of Ikea, and therefore the Board found a likelihood of confusion as to the entire class 35 list of services.

Dilution: Assuming arguendo that the mark IKEA is famous for dilution purposes, Ikea's dilution claim failed, as previously indicated, because it did not prove that its mark became famous prior to the filing date of applicant's Section 1(b) application.

Read comments and post your comment here.

Text Copyright John L. Welch 2014.


At 4:15 PM, Anonymous Tom McCarthy said...

I’m concerned about the TTAB’s decision and opinion in the IKEA case. The Board holds that the IKEA mark has “become famous for purposes of likelihood of confusion for its ‘retail store services in the field of furniture, housewares and home furnishings.’ The testimony and evidence regarding particular products and restaurant services are not specific enough to support finding fame of the mark for individual products and the other listed services.” That’s not my understanding of what is a famous or “strong” mark for purposes of a likelihood of confusion analysis. The CAFC uses the word “fame” as a synonym for a strong mark. Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 352, (Fed. Cir. 1992) (“Famous or strong marks enjoy a wide latitude of legal protection.”) Is the TTAB inventing a new kind of limited “fame” or “not so strong” category? Or is the TTAB trying to say that the IKEA mark is “strong” only for selling home furnishings and is not strong at all for the nutritional supplements field for which it found no likelihood of confusion? That seems to restrict the scope of the mark to only competitive goods and services. If the IKEA mark is not so strong as to result in a likelihood of confusion when used on the applicant’s nutritional supplements, then it can’t be a very strong mark. That’s not “a wide latitude of legal protection.” I don’t understand what kind of “fame” the Board had in mind if there was only a conflict between the marks for educational services that the Board said were “in part legally identical.”

Tom McCarthy
Univ. of San Francisco Law School
& Morrison & Foerster


Post a Comment

<< Home