Friday, February 07, 2014

Precedential No. 4: Section 18 Available for Restriction of Color Mark to a Particular Shade, Says TTAB

[TTABlog caveat: In this proceeding, petitioner Covidien is represented by yours truly]. The Board denied respondent Masimo's Rule 12(b)(6) motion to dismiss this proceeding, ruling that a petition for restriction of a registration under Section 18 of the Trademark Act is a proper vehicle for restricting a registration of a color mark to a particular shade of that color. Covidien LP v. Masimo Corporation, 109 USPQ2d 1696 (TTAB 2014) [precedential].

Covidien's application to register the color pink (Pantone PMS 806) for medical connectors and lead wires, was refused under Section 2(d) in view of Masimo's Supplemental registration for the color "red" for patient monitoring sensors and cables. Covidien then filed a petition under Section 18 to restrict the cited registration to the particular shade of red (Pantone PMS185) actually used by Masimo. Covidien alleged that such a restriction would avoid a likelihood of confusion.

Masimo moved to dismiss the petition under FRCP 12(b)(6), arguing that Covidien had failed to state a claim upon which relief can be granted. It urged that restriction under Section 18 is permitted only when the description of the mark in the registration is "ambiguous or overly broad," citing Wellcome Foundation Ltd. v. Merck & Co.., 46 USPQ2d 1478 (TTAB 1998). The Board, however, ruled that Wellcome "did not limit this type of § 18 claim in inter partes proceedings by requiring that the pleadings allege that an existing description of a registered mark is 'ambiguous' or 'overly broad.' [T]hose allegations are not the sole averments which can form a sufficient pleading."

The Board also reads § 18 as allowing for, and thus encompassing, relief where a plaintiff alleges that a feature of the description of the mark renders the description not specific to the mark actually used by the defendant.

Therefore, the Board ruled that Covidien's allegations were sufficient to state a claim. However, it required Covidien to amend its petition to comply with Rule 2.52(b)(1) by setting forth a more definite statement as to respondent's color, in ordinary language. [Covidien then filed an amended petition for cancellation, naming respondent's color as "fire engine red."]

fire engine red

Read comments and post your comment here.

TTABlog note:  The decision here appears to be the first case in which the Board has held that such a petition to restrict a color registration is proper. In In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377 (TTAB 2012) [precedential], involving teal and blue medical devices, the Board stated in dictum that Section 18 is available to restrict the color in a registered mark. [TTABlogged here].

Text Copyright John L. Welch 2014.


At 8:36 AM, Anonymous Anonymous said...

I would be interested in your amended petition. The board appears to have recognized that section 18 allows for restriction to a specific color, but states "the shade must be described in ordinary language, for example, “maroon,” “turquoise,” “navy blue,” “reddish orange", and "petitioner’s proposed amendment does not conform to the applicable requirements inasmuch as it only sets forth the description of the color which it alleges is in use by way of reference to a commercial coloring system, namely, the Pantone color matching system." Since Masimo's description is "Ther mark consists of the color red...", how do you restrict that further using ordinary language?

At 10:28 AM, Blogger John L. Welch said...

What would you call Pantone PMS 185, in ordinary language?

At 10:44 AM, Anonymous Anonymous said...

Frankly "Scarlet" I don't give a ....

At 10:46 AM, Anonymous Anonymous said...

Think a certain university in New Jersey (they're 186...close)

At 11:22 AM, Anonymous Jonathan Hudis said...

With such a novel issue, why was this decision not published as precedential?

At 1:30 PM, Anonymous Anonymous said...

Confuse, mistake or deceive is the litany for determining infringement not a Pantone number.
Red is red and a Pantone number would possibly assist in describing the registered mark as used by the registrant, but should not be used to narrow the scope of the registration when determing dilution, confusion, deception or potential for mistake.

At 7:08 PM, Blogger John L. Welch said...

This is not a civil action, so "infringement" is not the issue. The TTAB looks at the mark as registered when assessing likely confusion. May I suggest that you read the Cook Medical decision?

At 4:06 PM, Anonymous Anonymous said...

The Board does not cite to any support in the record or in the TMEP for its view that Pantone numbers would not meet with the "prevailing requirements" for describing color marks. There are over 900 registrations that use at least one Pantone number to describe color in the marks. Given such widespread use, it would seem that the proposed amendment does comply with
prevailing requirements.

At 5:17 AM, Blogger John L. Welch said...

I decided to call it "fire engine red."


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