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Is There A Likelihood Of Confusion Between The Marks: IKEA And AKEA?

On May 2, 2014, The Trademark Trial and Appeal Board (TTAB) rendered this precedential decision.  Inter IKEA Systems B.V. v. Akea, LLC, Opposition No. 91196527 (May 2, 2014) [precedential]. This decision sends a message to trademark owners (even to those owners of “famous” marks). Similar trademarks will be allowed in the marketplace, if there are differences in the goods and services, channels of trade and if consumers are using a moderate degree of care in their purchasing decisions. In this case, Akea, LLC (the “Applicant”) filed an application for the mark AKEA.  The trademark application identified Class 5 for nutritional supplements, herbal supplements, and vitamin and mineral supplements, Class 35 for retail services by direct solicitation by sales agents in the field of nutritional supplements; online retail services for nutritional supplements, and advice in the field of career and business opportunities, and Class 44 for providing advice on lifestyle topics of nutrition, diet, nutritional supplements, and gardening (this list is abbreviated). Inter IKEA Systems B.V. (the “Opposer”) challenged the application on the grounds of likelihood of confusion and dilution.

The Board first reviewed whether there would be a likelihood of confusion on the part of the consumers when encountering the marks. To make this determination, the probative facts in evidence would be considered along with the relevant likelihood of confusion factors. In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See our firm page entitled, Simple Trademark Rules and Considerations where the thirteen factors are set forth. See also our blog post entitled, Narrowing Identifications In Your Trademark Application May Bring Favorable Results, where the Board was swayed by the differences in the marks and determined that there was no likelihood of confusion. In this case, The TTAB focused on five factors, similarities between the marks, differences between the goods and services, fame of Opposer’s mark, trade channels of the parties, and the consumer’s degree of care in purchasing decisions.

The Board’s analysis is particularly interesting because it found that Opposer’s trademark for IKEA was famous (for retail store services in the area of furniture, housewares, and home furnishings) under the likelihood of confusion determination, but not famous under the dilution analysis. See our blog post entitled, TTAB Precedent -How Fame Impacts A Likelihood Of Confusion Determination. Keep in mind that under the likelihood of confusion analysis, fame is just one factor among multiple factors to  consider. Regarding the goods and services listed in classes 5 & 44, when balancing the remaining factors, the Opposer’s fame was outweighed by differences in the goods and services, channels of trade, and the degree of care exercised by the Applicant’s and Opposer’s relevant consumers. However, there was a different result for the services listed in International Class 35.

The TTAB concluded that the Opposer’s seminars and educational courses in the field of personal development were broadly worded to include the Applicant’s services of providing advice in the field of career and business opportunities. Therefore, the services would be considered in part legally identical. This presumption allows for the conclusion that the services would move in the same trade channels while being sold to the same classes of consumers. The Board then applied the general rule that if a likelihood of confusion is found with respect to use of the mark on any item within a particular class (listed in the description of goods), then it is acceptable to find a likelihood of confusion as to the entire class. See Tuxedo Monopoly Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Registration was refused for all of the services in class 35.

IKEA Systems, B.V. also opposed the AKEA mark on the grounds of dilution. To succeed on a dilution claim in an opposition proceeding, it must be proven by a preponderance of the evidence that the trademark in question is famous and distinctive, that such fame occurred prior to Applicant’s date of constructive use, and that the mark in question is likely to cause dilution by blurring the distinctiveness of Opposer’s mark. See Coach Services Inc. V. Triumph Learning LLC, 96 USPQ2d 1600 (TTAB 2010), aff’d (Coach Services) 668 F.3d 1356, 101 USPQ2d 1713 (Fed. Cir. 2012). Based on the record, the Board concluded that the evidence did not prove that the trademark IKEA became famous prior to Applicant’s filing date. The Applicant was allowed to proceed with its application for the goods and services listed in International Classes 5 and 44.

Inter IKEA Systems B.V. probably assumed that it could prove that its trademark IKEA was famous and neglected to focus on the date at which it became famous (this had to occur before the Applicant’s filing date). In addition, Opposer failed to prove a relationship between its goods and the Applicant’s nutritional supplements and vitamins. In the end, Opposer’s oversights led to a split decision. At our firm, we often counsel our clients regarding when it is appropriate to oppose a third party’s trademark application before the (TTAB). If you are considering bring a proceeding before the TTAB, please feel free to contact one of our NY trademark attorneys for a courtesy consultation.