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Section 18 Petition Appropriate Vehicle For Modifying Scope of Color Registration

Wednesday, February 19, 2014

By Tamlin H. Bason

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.

Petition Need Not Claim Registration Is Ambiguous

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.

Pantone Number Not Enough

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 tbason@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com


Text is available at http://pub.bna.com/ptcj/TTAB9205733617Jan14.pdf.

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