In a recently issued decision, the U.S. Patent and Trademark Office Trial and Appeal Board found thatIKEA was not a sufficiently “famous” mark, to support a dilution claim under §43(c) of the Trademark Act, 15 U.S.C. §1125. Inter IKEA Systems B.V. v. Akea, LLC, No. 91196527 (TTAB May 2, 2014). More precisely, the TTAB ruled that the record before it did not prove, by a preponderance of the evidence, thatIKEA had achieved famous status as of the filing date of the opposed (intent to use) AKEA application. The TTAB held that this was the critical date, because §43(c) only provides a cause of action against use of a mark commenced after the mark allegedly diluted became famous. The TTAB did not consider, or pass judgment on, whether the IKEA mark could now support a dilution claim.
Nevertheless, the TTAB did sustain the opposition claim – in part – based on a finding of likelihood of confusion between IKEA and AKEA. The TTAB granted the opposition as to the Applicant’s Class 35 services (direct solicitation and online retail store services featuring nutritional supplements, herbal supplements, and vitamin and mineral supplements; providing advice and information in the field of career and business opportunities). However, the TTAB found no likelihood of confusion as to the Applicant’s Class 5 goods (nutritional supplements; herbal supplements; vitamin and mineral supplements) or Class 44 services (providing advice and information to consumers regarding lifestyle topics, namely, diet planning, nutrition, nutritional supplements, and gardening). The TTAB held that based on the record before it, these goods and services, and the channels of trade for them, simply were too different from Ikea’s goods and services (retrial store services in the field of furniture, housewares and home furnishings; restaurant and catering services, and “a wide variety of goods and services, including food products”) to create a likelihood of confusion, despite the close similarity of the IKEA and AKEA marks. Ironically, the TTAB didfind the IKEA mark to be famous for purposes of its likelihood of confusion analysis.
Perhaps most significantly, the TTAB signaled its intention to hew strictly to the record evidence before it in opposition proceedings.
This case sends a clear message to trademark owners (even to those owners of “famous” marks) in trademark opposition proceedings ensure your record is detailed and complete:
- The TTAB will not assume any mark is famous without proof, and it will take more than just substantial advertising and sales figures;
- Determine the critical date, and make sure your evidence is directed to that date;
- Where the goods and services at issue are not the same or closely similar, submit actual evidence of the respective trade channels and how they might overlap.