Precedential No. 42: In Rare Section 2(d) Color Case, TTAB Affirms Refusal of Teal for Sheaths over Blue for Catheters
In a "somewhat unusual" likelihood of confusion case involving the comparison of two color marks, the Board affirmed a refusal to register the color "teal" for "medical devices, namely, guiding sheaths for use in conjunction with access needles, wire guides, and dilators for providing access for diagnostic and interventional devices in vascular and non-vascular procedures." The Board found the applied-for mark likely to cause confusion with a registered mark comprising the color "blue" applied to the tip and indwelling length of catheters. In re Cook Medical Technologies LLC, 105 U.S.P.Q.2d 1377 (TTAB 2012) [precedential].
Applicant Cook Medical sought registration on the Supplemental Register for a mark [drawing above] consisting of "a translucent, iridescent teal color shown along the shaft length of a rib-reinforced medical guiding sheath." The cited registration (drawing below) is directed to the color "blue" as applied to catheters.
Cook confirmed that is sheaths may be used with catheters, and its website so indicated. Third-party websites corroborated the same type of complementary use. The Board therefore found the goods to be closely related. As we know, the closer the goods, the lesser the degree of similarity necessary to support a finding of likely confusion.
Because there were no limitations as to channels of trade or classes of purchasers in the application and the cited registration, the Board presumed that the involved goods move in the same, normal channels of trade to all classes of purchasers.
The "crux" of the appeal centered on the similarity of the marks. The Board noted that "likelihood of confusion takes on additional significance when the goods are pharmaceuticals or medical instruments."
It found that applicant’s teal color mark, running the length of the shaft of a guiding sheath for catheters, to be similar in appearance to Cook's blue color mark that runs the length of a catheter. The Board noted that applicant's originally described its mark as the color "blue/teal," and it observed that the narrow shape of the products may make it more difficult to differentiate between the shades of blue. "The fact that applicant’s teal color mark may appear to be translucent and iridescent is not sufficient to distinguish the marks in a meaningful manner," because in some lighting conditions, the translucence "may not be perceptible and the iridescence may result in the teal being perceived as more blue than green."
Applicant Cook did not argue that the relevant purchasers are sophisticated and discriminating, but in any case, "even sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving similar marks and closely related goods." The Board concluded that "the similarities between the marks and the goods sold thereunder outweigh any sophisticated purchasing decision, especially in the absence of evidence relating to the degree of care in making the decision."
The record was devoid of evidence of third-party use of any color mark for medical devices, though that was "hardly the most probative factor in this case." Cook's assertion of no actual confusion despite contemporaneous use of the marks for more than 18 years was entitled to little weight in this ex parte context, where the registrant has no opportunity to be heard. Moreover, there was no evidence as to the extent of use of the marks, and thus whether there have been meaningful opportunities for the occurrence of actual confusion.
Balancing the relevant duPont factors, the Board concluded that confusion is likely, and it affirmed the refusal.
The Board went on to observe that its decision should not be taken to mean that "merely because a party obtains a registration for a single color that such registration will block others from using or registering marks for other colors, even similar colors." Here, registrant's mark is describes only as the color "blue," and therefore the Board must consider every shade of blue.
Finally, the Board expressed some sympathy for Cook's concerns about the scope of protection given to the cited registration, but it noted that Cook did not avail itself of Section 18 of the Act, which gives the Board the equitable power to cancel registrations in whole or in part. "This Section 18 claim, if successful, would modify the description of the mark from 'blue' to the specific shade of blue actually used in the marketplace. Such a claim can be used to modify overly broad identification of goods (for example, 'computer programs')." Of course, the Board will not entertain such a Section 18 claim unless the proposed modification will serve to avoid a finding of likelihood of confusion between the involved marks." Alternatively, Cook could have sought a consent from the registrant.
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TTABlog comment: For a discussion of the difference between partial cancellation under Section 14 and restriction or modification of a registration under Section 18, see Johnson & Johnson v. Obschestvo s Ogranitchennoy; Otvetstvennostiu WDS, 104 USPQ2d 2037 (TTAB 2012) [precedential]. [TTABlogged here].
FWIW: I am prosecuting an application in which the color pink for a medical device has been refused registration over the color red for another medical device. Is pink a shade of red?
Text Copyright John L. Welch 2013.