IKEA v AKEA: fame and similarity only go so far
Although opponent Inter IKEA Systems established that its IKEA mark was famous for retail store services and a “strong mark” for food products, it has failed in its attempt to stop Akea LLC from selling nutritional supplements under the mark AKEA.
In Inter IKEA Systems BV v Akea LLC (Opposition No 91196527, May 2 2014), the US Trademark Trial and Appeal Board (TTAB) found that the AKEA mark was similar to the famous IKEA mark in light of a purchaser’s general recollection or imperfect recall of the marks, but still ruled against IKEA on the likelihood of confusion issue as to both nutritional supplements and providing information to consumers regarding diet planning and nutritional supplements. Moreover, the TTAB found IKEA had not met its burden of proof regarding fame for dilution purposes.
Akea filed an intent-to-use application to register AKEA for nutritional supplements (Class 5), retail services in the field of nutritional supplements (Class 35) and providing information regarding nutritional supplements (Class 44). IKEA opposed on the grounds of likelihood of confusion and dilution. IKEA cited eight US registrations; the two most relevant being Registration No 1,418,733 for “retail stores in the field of furniture, housewares and home furnishing; and restaurant and catering services” and Registration No 1,661,360 relating to several specific food items.
IKEA relied on the fame of its IKEA marks as used on retail stores and in-store restaurant products (including meatballs), the similarity of the marks and its in-store fruit juices infused with vitamins. That was enough for the Class 35 retail services, and the AKEA application for those services was denied. However, despite finding that the IKEA mark was famous for retail store services in the field of furniture and housewares and that the respective marks were similar, the TTAB found no likelihood of confusion between Akea’s nutritional supplements and related services and IKEA’s food products and restaurant services. The TTAB reasoned that consumers would exercise at least a moderate degree of care to distinguish between such goods and services even under “similar” marks. The TTAB also noted that, since IKEA had failed to assert common law rights in the specific juice products, those arguments could not be considered.
While IKEA’s confusion arguments regarding nutritional supplements and related services were arguably tenuous, its dilution position seemed stronger. Trademark dilution is the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence of a likelihood of confusion between a famous mark and a third party’s mark. IKEA cleared one hurdle by proving that the IKEA mark is famous for retail store services in the field of furniture and housewares. Assuming the AKEA mark and the IKEA mark are substantially similar, blurring seemed plausible.
However, IKEA failed to demonstrate that its mark had become famous prior to Akea’s intent-to-use application filing date. In fact, IKEA had not pled that its mark had become famous before that critical date (while IKEA did submit evidence of store visits, website visits, catalog and insert mailings, advertising expenses, food sales, and live plant sales in 2007 and 2008 before the critical date, it was difficult to determine the probative value of this evidence since the numbers remained confidential). The TTAB noted that Akea could have moved to strike the dilution claim.
The decision is thus a reminder to plead specifically that a famous mark became famous before the applicant’s date of constructive use and to provide competent, probative evidence in support thereof.
Lisa Pavento and Steve Schaetzel, Meunier Carlin & Curfman LLC, Atlanta
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