Trademark Review - Ikea, Chanel, a Religious Mark, and Target (June 2014)

by Knobbe Martens

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Ikea’s Fame Insufficient to Prevent Akea’s Registration for Unrelated Goods

The Trademark Trial and Appeal Board held there was no likelihood of confusion between Opposer’s IKEA mark and Applicant’s AKEA mark for nutritional supplements and informational services regarding lifestyle topics, but refused Akea’s application for retail store services.

Inter IKEA Systems B.V. (“Ikea”) is a subsidiary of the IKEA Group, which is one of the world’s largest retailers and the owner of the trademark IKEA.  The IKEA mark is registered for retail store services in the field of furniture and home furnishings; and restaurant and catering services, in Class 42; various food products in Classes 29 and 30; plants and flowers in Class 31; and educational courses and seminars in various fields including retailing of furniture and home furnishings, personnel management, and personal development in Class 41.  

Akea filed an application to register the mark AKEA covering supplements and vitamins in Class 5; retail store services via direct solicitation and online 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 providing advice on lifestyle topics of nutrition, diet planning, and nutritional supplements in Class 44. 

Ikea opposed the application asserting likelihood of confusion and dilution.

In determining whether there was a likelihood of confusion, the Board found that the IKEA mark was famous solely for its retail store services, and not for its food products and restaurant services.  The Board held that the marks were similar in both appearance and commercial impression, but that the only related goods and services were Ikea’s retail services and educational courses and seminars in the fields of “… personal development” and Akea’s “providing advice and information in the field of career and business opportunities.”  

The Board found Ikea failed to prove that Akea’s supplements and vitamins were offered in the same trade channels as any of Ikea’s goods.  Further, the Board held that because customers who bought Akea's supplements and advisory services were typically careful about what they put in their bodies and because the goods were not inexpensive, customers would exercise at least a modest degree of care in their purchasing decisions.  In balancing these factors, the Board found a likelihood of confusion between AKEA and IKEA only as to the retail and advisory services in Class 35 and therefore refused the registration for all of the Class 35 services.

Although the Board agreed that the IKEA mark was currently famous, it rejected Ikea’s dilution claim because Ikea failed to prove that its IKEA mark was famous and distinctive before the date Akea filed its application. 

Inter IKEA Systems, B.V. v. Akea, LLC, Opposition No 91196527 (TTAB May 2, 2014) [precedential].

Chanel Condo off the Market: Real Estate Developer may not use Luxury Brand Mark in Connection with Real Estate and Construction Services 

Jerzy Makarczyk filed an application to register the mark CHANEL in connection with real estate development and commercial, residential, and hotel property construction services. Makarczyk has named luxury rental properties after brands such as Hermes, Dior, Givenchy, and Versace. 

Chanel, Inc. is the owner of the internationally recognized luxury brand CHANEL. In the United States, the mark has been used on products such as clothing, soap, perfume, watches, and handbags since the early 1930s. Chanel has not used or registered the mark in connection with real estate services.

Chanel opposed Makarczyk’s application on the grounds of likelihood of dilution by blurring, likelihood of confusion, and false suggestion of connection.  The TTAB found that the applicant’s proposed use of CHANEL would likely cause dilution by blurring of Chanel’s CHANEL trademark. The Board did not address Chanel’s other claims. 

To prevail on its dilution claim, Chanel had to prove that its mark is famous and distinctive. A famous mark is one that is a “household name,” i.e., when the general public sees the mark, it associates the term initially with the famous mark’s owner. A mark is distinctive when the public associates the term with the famous owner of the mark even when the term appears on goods and services not produced by the owner. 

The Board found that CHANEL is a famous mark based on Chanel’s evidence of its commercial success, extremely high sales of its goods, substantial advertising expenditures, social media campaigns, celebrity endorsements, survey evidence and rankings listing it as one of the most recognized designer brands. Even though CHANEL is not inherently distinctive (it derives from founder Coco Chanel’s name), the Board found that the evidence submitted by Chanel established the mark has acquired distinctiveness. 

Chanel was also required to show that Makarczyk’s use of the mark was likely to dilute the distinctiveness of Chanel’s mark. The Board found a likelihood of dilution based on several factors: the identical nature of the marks, the high degree of distinctiveness and fame of CHANEL among consumers, Chanel’s substantially exclusive use of CHANEL and high expenditure of resources to protect the mark, and Makarczyk’s intent to create an association with the mark owned by Chanel as evidenced by certain statements on his website. 

Finally, Chanel proved potential impairment of the distinctiveness of its mark. Chanel argued that use of CHANEL by Makarczyk in connection with luxury real estate services would devalue Chanel’s brand. Although, Chanel has no current involvement in the real estate or hotel industry, other luxury brands have expanded into industries such as hotels, interior design services and bathroom fixtures.  The Board found this was sufficient to show that Chanel would be likely to suffer impairment if Makarczyk used the term in connection with real estate services.

Chanel, Inc. v. Jerzy Makarczyk, Opposition No. 91208352 (TTAB May 27, 2014) [precedential].

An Unsuccessful Mix: Religion, Politics and Trademarks

The United States Court of Appeals for the Federal Circuit affirmed the TTAB’s refusal to register the mark STOP THE ISLAMISATION OF AMERICA due to potential disparagement of a substantial group of Muslim Americans. 

The Appellants filed an application to register STOP THE ISLAMISATION OF AMERICA for use in connection with providing information about preventing terrorism. The PTO refused the application on the grounds that it may  disparageor injure  American Muslims. The Board affirmed refusal of the application after considering the religious and political meanings of “Islamisation” and whether those meanings may be disparaging. The Board found that under the religious meaning, the mark was disparaging because the admonition to stop Islamisation (conversion to Islam) suggests that conversion is a negative activity. Further, under the political meaning, the mark was disparaging because it associates the replacement of secular law with Islamic law (Islamisation) as requiring violence or terrorism. 

In an appeal to the Federal Circuit, the Appellants argued there was no substantial evidence to support the Board’s findings, and that the political definition of Islamisation was the sole likely meaning of the mark. 

The Federal Circuit found that there was substantial evidence to support the Board’s ruling that “Islamisation” has both religious and political meanings.  The Board’s ruling was based on dictionaries, essays and comments posted on Appellants’ website, Congressional testimony, academic course materials and articles submitted by Appellants. 

The Appellants conceded to the court that the mark is disparaging under the religious meaning. The Federal Circuit also affirmed the Board’s finding that the mark is disparaging under the political meaning because there was nothing in the materials submitted to the Board that suggested that Islamisation requires violence or terrorism. 

In Re Pamela Geller and Robert B. Spencer (2013-1412, Serial No. 77940879, May 13, 2014, precedential), the United States Court of Appeals for the Federal Circuit

A Wide Target: TTAB Finds Likelihood of Confusion

Artificer filed an application for the mark ARTIFICER and a 3-ring design for use in connection with clothing and jewelry. Target opposed the application on the grounds of likelihood of confusion with Target’s “bulls eye” mark which Target uses for retail store services featuring clothing and jewelry (the “Bulls Eye Mark”).  


Target asserted rights in 14 registrations for its Bulls Eye Mark, as well as common law rights, but failed to submit the required evidence of the current status and title of its asserted registrations.  Thus, the Board determined that Target could not rely upon any of its 14 pleaded registrations for the Bulls Eye Mark and could only rely upon common law rights. 

Nevertheless, Target submitted sufficient evidence that the Bulls Eye Mark is famous, including that it has been used since the 1960’s, is recognized by 96% of Americans, is used at 1,700 stores and online, and is incorporated into numerous registered trademarks owned by Target. 

The Board found Target’s retail store services in the field of clothing and jewelry sufficiently related to Artificer’s items of clothing and jewelry. 

The tougher issue was the similarity of the marks.  Yet, the Board found the commercial impression of the marks to be sufficiently similar finding that Artificer’s mark seems to be a hand drawn version of Target’s Bulls Eye Mark.  The Board found the addition of the term ARTIFICER next to the design to be insufficient to create a commercial impression that is separate from that of Target’s famous mark. 

Target Brands, Inc. v. Artificer Life Corp. Opposition Nos. 91206421 and 91206422 (TTAB May 2014).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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