INTA Bulletin

September 15, 2012 Vol. 67 No. 16 Back to Bulletin Main Page

UNITED STATES: IKEA Wins, as NIKEA Fails To Sweet-Talk the TTAB

The Trademark Trial and Appeal Board (TTAB) ruled that the standard-character mark NIKEA, for “chocolates, candy,” was likely to cause confusion with the mark IKEA, in typed-drawing format, for “as relevant, ‘coffee, bread, biscuits, cakes, pastry, candy, mustard, sauces, excluding cranberry and applesauce, and spices.’” Inter-IKEA Systems B.V. v. Manasyan, Opposition No. 91194783 (T.T.A.B. May 17, 2012) (nonprecedential).

Inter-IKEA Systems filed an opposition against Arsen Manasyan’s application for the mark NIKEA, to cover “chocolates, candy,” on the grounds that the mark was (1) likely to cause confusion with its IKEA mark and (2) likely to dilute that mark. Only the opposer submitted a brief, testimony or evidence.

In analyzing the likelihood of confusion, the TTAB found it unnecessary to consider any of the opposer’s pleaded registrations beyond Registration No. 1661360 for IKEA, which covered “the most relevant goods and mark.” The Board began by considering the goods and channels of trade, and found that the parties’ goods overlapped because both identified “candy.” It further found that the parties’ other goods were related as the opposer showed that it sold both cake and cookies. As the noted goods were identical in part, the TTAB presumed that the channels of trade and classes of purchasers were the same. Thus, these factors heavily favored a finding of a likelihood of confusion.

Turning to the marks, the TTAB considered and compared the “appearance, sound, connotation and commercial impression of the marks in their entireties,” while noting that “the more similar the goods at issue, the less similar the marks need to be for the Board to find a likelihood of confusion.” It determined that the mark IKEA was a “coined and arbitrary or fanciful term with no apparent meaning in any language.” The applicant’s NIKEA mark appeared to rhyme with IKEA, differing only by one letter, and possessed no apparent meaning in any language. The TTAB noted, moreover, that NIKEA fully incorporated IKEA, and that “[l]ikelihood of confusion has been found where the entirety of one’s mark is incorporated within another.” Thus, this factor also favored a finding of a likelihood of confusion.

Next, the TTAB analyzed the fame of the IKEA mark, based on the evidence submitted, which covered only the years 2009 through 2011. The opposer’s testimony characterized its business as selling “everything—all furnishings products….” Evidence showed that IKEA sweets and chocolates were sold “via restaurants at every IKEA store and also as retail products at each one,” and that sales appeared to be “substantial.” Although it concluded that the IKEA mark was strong, the Board found that the opposer had not established how extensive media coverage and market exposure of the mark related specifically to chocolate and candy products and that the time frame covered was not sufficient to show fame for purposes of this proceeding.

Finally, the TTAB considered consumer sophistication for the goods at issue. The Board found “no evidence of record regarding the typical price of candy and chocolates or the average sophistication of the consumers thereof.” Because chocolate and candy could vary greatly in price, the TTAB found that this factor was neutral.

On balancing the above factors, the TTAB found a likelihood of confusion between the NIKEA and IKEA marks. It held that “the goods are identical in relevant part, and are likely to be marketed through the same channels of trade to generally unsophisticated consumers” (this last point despite the discussion above), and that “the IKEA mark is arbitrary and strong, and the marks are substantially similar.” Finding a likelihood of confusion, the TTAB held that it was unnecessary to consider the opposer’s claim of dilution.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers
are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association