+1 212 318 2000
Europe, Middle East, & Africa
+44 20 7330 7500
+65 6212 1000
Feb. 14 --A petition filed under Section 18 of the Lanham Act, 15 U.S.C. §1068, to modify an existing color registration to a particular shade of red was appropriate, the Trademark Trial and Appeal Board ruled Jan. 17 in an opinion that was redesignated as precedential on Feb. 13 (Covidien LP v. Masimo Corp., T.T.A.B., No. Cancellation No. 92057336, 1/17/14).
The board denied a Fed. R. Civ. P. 12(b)(6) motion that was filed by the owner of the mark. As a result the petition, which seeks to modify an existing registration that describes only “the color red” to “Pantone PMS 185,” will go forward.
Masimo Corporation owns a registration on the supplemental register for a color trademark for “medical devices.” The 2011 registration describes the mark only as consisting of “the color red.”
Covidien LP filed an application to register a color trademark for “disposable medical devices.” The application stated that the mark “consists of the color pink (Pantone PMS 806).” The application was denied under Section 2(d) of the Lanham Act, 15 U.S.C. §1052(d), on the grounds that it would result in confusion with Masimo's registration.
Covidien then filed a Section 18 petition to modify Masimo's mark. Instead of answering the petition, Masimo filed a 12(b)(6) motion arguing that Covidien failed to state a claim. Specifically, Masimo argued that Covidien failed to demonstrate that the description of the registration was “ambiguous or overly broad” and that the proposed restriction would avoid confusion. Both showings, Masimo argued, were necessary to state a Section 18 claim under the controlling case, Wellcome Foundation Ltd. v. Merck & Co., 46 U.S.P.Q.2d 1478, (T.T.A.B. 1998).
Although Wellcome found sufficient a Section 18 petition that did allege both that a registration was overly broad and that the restriction would avoid confusion, “the decision 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,' ” the board said here. Indeed, a Section 18 petition is doubtless sufficient when it alleges that a description is overly broad, but “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.”
In this case, “petitioner has set forth the necessary allegations to state a claim for relief in the form of a restriction or modification of a description of the mark as provided for under § 18,” the board said.
However, the board said Covidien's identification of a specific Pantone color did not comply with Trademark Rule 2.52(b)(1), which requires that “a shade of color” “be described in ordinary language” “even if the applicant also describes the color using a commercial coloring system.”
“Accordingly, the Board requires that petitioner set forth a more definite statement of the amendment that it alleges will avoid a likelihood of confusion,” the board said. It provided Covidien with 30 days to comply with the requirements of Rule 2.52(b)(1).
To contact the reporter on this story: Tamlin Bason in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Naresh Sritharan at email@example.com
Text is available at http://pub.bna.com/ptcj/TTAB9205733617Jan14.pdf.
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to firstname.lastname@example.org.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).