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.