By Tamlin H.
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,
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.”
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
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).
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.
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.
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