Inter-IKEA Systems B.V.v.Arsen Manasyan

Trademark Trial and Appeal Board

May 17, 2012

No. 91194783 (T.T.A.B. May. 17, 2012)

Mailed: May 17, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Inter-IKEA Systems B.V.
v.
Arsen Manasyan
_____

Opposition No. 91194783
to Application Serial No. 77816273
_____

Richard Lehv of Fross Zelnick Leherman and Zissu PC, for
Inter-IKEA Systems B.V.

Christopher J. Day of Law Office of Christopher Day, for
Arsen Manasyan.

_____

Before Bucher, Taylor, and Ritchie, Administrative Trademark
Judges.

Opinion by Ritchie, Administrative Trademark Judge:

On August 31, 2009, Arsen Manasyan (“applicant”)
applied to register the mark NIKEA on the Principal Register
in standard character format for “chocolates, candy” in
International Class 30.1

1 Application Serial No. 77816273, based on a bona fide intent to
use in commerce.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Opposition No. 91194783
2
On May 6, 2010, opposer, Inter-IKEA Systems B.V.,
opposed the registration of applicant’s mark on the ground
that applicant’s mark is likely to cause confusion in
violation of Section 2(d) of the Trademark Act with, among
other registered marks,2 opposer’s previously used and
registered mark IKEA (Registration No. 1661360), in typed
drawing format, for, as relevant, “coffee, bread, biscuits,
cakes, pastry, candy, mustard, sauces, excluding cranberry
and applesauce, and spices,” in International Class 30.3
Opposer maintains its IKEA mark is “a well-known mark,
famous throughout the country.” (Notice at Para. 2).
Further to this, opposer has also has brought the opposition
on the ground of dilution under Sections 13(a) and 43(c) of
the Lanham Act. Id. at Para. 9.
Applicant denied the salient allegations of the
notice of opposition except that he made no use of the mark
prior to his filing date. (Answer at Para. 5 and 6) Only
opposer filed a brief.

2 Opposer additionally pleaded several marks for IKEA and design
for various other goods and services. We find it unnecessary to
consider them herein.
3 Registered October 22, 1991. Renewed twice. Sections 8 and 15
accepted and acknowledged. The mark includes goods and services
in other classes.
Opposition No. 91194783
3
The Record
The record consists of the pleadings; the file of the
involved application; and the following:
1. The testimonial deposition, dated March 31, 2010, of
Robert Wotherspoon, the IKEA executive responsible for
“IKEA food businesses within the 37 stores in the
U.S.”
2. Opposer’s two notices of reliance on
a. Magazines, news, and other print articles
submitted to show the fame of opposer’s pleaded
marks; and
b. Copies of opposer’s pleaded IKEA, and IKEA and
design registrations (including No. 1661360)
showing both the current status of, and title to,
the registrations.
Applicant did not submit any testimony or evidence.
Priority and Standing
As a result of opposer’s submission of status and title
copies of its IKEA registration (No. 1661360), among others,
opposer has established its priority as well as its
standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000) and King Candy Co. v.
Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).

Opposition No. 91194783
4
Likelihood of Confusion
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the relevant,
probative evidence in the record. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed.
Cir. 2005); In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
For purposes of our likelihood of confusion analysis,
we will consider the applicable du Pont factors as to
pleaded Registration No. 1661360, for IKEA, which has the
most relevant goods and mark. If we find a likelihood of
confusion as to this mark, then our analysis with regard to
the others would be moot. Similarly if we do not, then we
would not find it as to the others either. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
The Goods and Channels of Trade
The goods listed in the application are “chocolates,
candy” in International Class 30. The goods listed in
opposer’s Registration No. 1661360 include “coffee, bread,
biscuits, cakes, pastry, candy, mustard, sauces, excluding
cranberry and applesauce, and spices,” in International
Opposition No. 91194783
5
Class 30. These goods overlap, in that both identify
“candy.” The other goods are related, as opposer has shown,
for example that it sells “almond cake with dark chocolate
topping” (Wotherspoon depo. at 17) and “double chocolate
crisp cookies” Id. at 21.
Because the noted goods described in the application
and opposer’s registration are identical-in-part, we must
presume that the channels of trade and classes of purchasers
for these goods are the same. See Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical
and in-part related nature of the parties’ goods, and the
lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items could
be offered and sold to the same classes of purchasers
through the same channels of trade”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to travel
in the same channels of trade, and be sold to the same class
of purchasers”). In other words, we conclude that the
channels of trade and classes of purchasers of the parties’
goods are the same. These second and third du Pont factors
heavily favor finding a likelihood of consumer confusion.
The Marks
We consider and compare the appearance, sound,
connotation and commercial impression of the marks in their
Opposition No. 91194783
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entireties. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Preliminarily, we note 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. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
In comparing the marks, we are mindful that the test is
not whether the marks can be distinguished when subjected to
a side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff'd unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
Opposer’s mark consists of a typewritten mark for IKEA.
This is a coined and arbitrary or fanciful term with no
Opposition No. 91194783
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apparent meaning in any language. Applicant’s mark consists
of the term NIKEA, in standard character format. Also not a
word in any apparent language, applicant’s mark appears to
rhyme with the strong IKEA mark, thereby giving a
substantially similar connotation and commercial impression.
Meanwhile, in sight and sound, the marks differ by only one
letter. Indeed, applicant’s mark incorporates opposer’s
mark in its entirety. Likelihood of confusion has been
found where the entirety of one mark is incorporated within
another. See The Wella Corp. v. California Concept Corp.,
558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (“When one
incorporates the entire arbitrary mark of another into a
composite mark, the inclusion of a significant, non-
suggestive element will not necessarily preclude a
likelihood of confusion.”). See also Coca-Cola Bottling Co.
v. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106
(CCPA 1975) (BENGAL LANCER and Bengal Lancer soldier design
for club soda, quinine water and ginger ale is likely to
cause confusion with BENGAL for gin); Johnson Publishing Co.
v. International Development Ltd., 221 USPQ 155, 156 (TTAB
1982) (EBONY DRUM for hairdressing and conditioner is likely
to cause confusion with EBONY for cosmetics).
We find the similarities between opposer’s and
applicant’s marks in sight, sound, connotation and
commercial impression to outweigh their dissimilarities,
Opposition No. 91194783
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particularly considering that the goods are identical-in-
part. Accordingly, this first du Pont factor also weighs in
favor of finding a likelihood of confusion.
Fame
A famous mark is one “with extensive public recognition
and renown.” Id. See also Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1694 (Fed. Cir. 2005). Famous marks are
accorded more protection precisely because they are more
likely to be remembered and associated in the public mind
than a weaker mark. Kenner Parker Toys Inc. v. Rose Arts
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir.
1992).
As described by opposer, the business of IKEA is
selling “everything—all furnishings products, from sofas to
kitchens to beds, and everything accompanying that, such as
cookware, linens and so forth.” (Wotherspoon depo. at 11-
12). The IKEA concept is “good quality products at the
lowest price compared to our competitors.” Id. Opposer uses
its IKEA brand on all of its products. Id. at 13. The 37
U.S. stores annually receive 69 million visits, with 150
million more visits to the websites. Id.
Opposer sells, among its other products, “sweets and
chocolates.” Id. These are sold via restaurants at every
IKEA store and also as retail products at each one. Id. at
Opposition No. 91194783
9
8 and 9. Opposer’s chocolate bars are among “the top
selling products in IKEA food in the U.S.” Id. at 16.
Opposer submitted sales information for “pastries, desserts
and cookies” as well as for “cookies, candies, chocolates”
sold in the U.S. for FY 2009 through the first through
months of FY 2011. Although the numbers were submitted as
confidential, we can note that even those involving just
chocolate, as identified by applicant, appear to be
substantial in both quantity and dollar amount.
(Wotherspoon depo. at 25-31 and Exs. 17-24).
Opposer spends “approximately 160 million annually” on
advertising in the U.S. Id. at 33. Typical magazines and
news media outlets where opposer advertises include Better
Homes and Gardens; O; and Everyday with Rachael Ray; as well
as ABC, NBC, CBS, Fox, Univision, Food Network and HGTV.
Id. at 34. Opposer also receives unsolicited media
attention from some of the same news outlets as well as
other outlets such as the Chicago Tribune and Consumer
Reports. To further show the reach of its brand, opposer’s
IKEA mark was ranked 28 in the Business Week/Interbrand
“Best Global Brands Ranking for 2010.”
We conclude that while opposer has shown a fair amount
of market exposure over the time period provided, opposer
has not provided clear context for its sales and advertising
numbers with regard to the industry, nor as to how the fame
Opposition No. 91194783
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of its IKEA mark in the media relates specifically to its
chocolate and candy products. Furthermore, the information
and media coverage provided by opposer appear to relate
solely to the 2009-2011 time frame, a rather narrow time
period, and one that is not sufficient to establish fame for
purposes of this proceeding.
Accordingly, we do not find on this record that
opposer’s IKEA mark is famous for purposes of our likelihood
of confusion determination. Nonetheless, we do find that
the evidence establishes that the IKEA mark has garnered
some degree of renown and strength amongst the relevant
public.
Consumer Sophistication
Opposer urges us to consider the lack of consumer
sophistication and degree of purchaser care likely to be
exercised for the goods at issue in this proceeding. In
this regard, as with the other du Pont factors, we are bound
by the parties’ respective identifications of goods.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“[t]he
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
Opposition No. 91194783
11
channels of trade or the class of purchasers to which the
sales of goods are directed.” [citations omitted]).
There is no evidence of record regarding the typical
price of candy and chocolates or the average sophistication
of the consumers thereof. Certainly while goods such as
candy and chocolates may be very fine and expensive, they
may also be inexpensive, highly accessible to the average
consumer and purchased on impulse. We deem this fourth
du Pont factor to be neutral.
Balancing the Factors
Considering all of the evidence of record as it
pertains to the relevant du Pont factors, we conclude that
the goods are identical in relevant part, and are likely to
be marketed through the same channels of trade to generally
unsophisticated consumers. We further find that the IKEA
mark is arbitrary and strong, and the marks are
substantially similar. Based on the foregoing, we find a
likelihood of consumer confusion between applicant’s mark,
NIKEA for “chocolates, candy,” and opposer’s mark IKEA and
design for the goods for which it is registered, including
“coffee, bread, biscuits, cakes, pastry, candy, mustard,
sauces, excluding cranberry and applesauce, and spices.”4

4 In light of our finding of likelihood of confusion, we find it
unnecessary to consider opposer’s claim of dilution.
Opposition No. 91194783
12
DECISION: The opposition is sustained on the grounds
of likelihood of confusion under Section 2(d) of the
Trademark Act.