In a recent precedential decision, Inter IKEA Systems B.V. v. Akea, LLC, Opposition No. 91196527 (May 2, 2014), the Trademark Trial and Appeal Board found no likelihood of confusion or dilution between Opposer's "famous" IKEA mark and Applicant's AKEA mark for nutritional supplement goods and informational services. This decision demonstrates that even for "famous" marks, similar trademarks may be allowed to coexist if an opposer fails to demonstrate similarities between the goods and services, channels of trade, and degree of consumer care.
In 2009, Akea, LLC ("Akea") filed an intent-to-use application for the mark AKEA covering: (1) nutritional supplements, herbal supplements, and vitamin and mineral supplements in Class 5, (2) direct solicitation and online retail store services featuring nutritional supplements, herbal supplements, and vitamin and mineral supplements, and providing advice and information in the field of career and business opportunities in Class 35, and (3) providing advice on lifestyle topics of nutrition, diet planning, and nutritional supplements in Class 44. Inter IKEA Systems B.V. ("Ikea") opposed the application asserting likelihood of confusion and dilution.
For the purpose of its likelihood-of-confusion analysis, the Board found the IKEA mark to be famous for "retail store services in the area of furniture, housewares, and home furnishings," but not for food products and restaurant services. Turning to the similarities between the parties' goods, the Board held that Ikea failed to prove that its fruit juice goods were related to Akea's Class 5 goods. Further, the Board held that Akea's Class 5 and 44 goods were not inexpensive and, as such, consumers would exercise at least a modest degree of care in their purchasing decisions. Finally, the Board held that Ikea failed to establish that the parties' goods were offered (or could be offered) in the same trade channels. Based on the record before it, the Board concluded that the fame of the IKEA mark was outweighed by these other factors and found there was no likelihood of confusion with Akea's Class 5 and 44 goods and services. The Board did find a likelihood of confusion with Akea's Class 35 services because Akea's services for "providing advice and information in the field of career and business opportunities" were broad enough to encompass Ikea's "educational courses and seminars."
With respect to Ikea's dilution claim, the Board found that Ikea failed to establish that its IKEA mark was famous and distinctive prior to Akea's date of constructive use of the AKEA mark. As such, the dilution claim was dismissed.
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