Over the past five years, we have spilled a lot of black digital ink discussing trademark ownership of single colors. Color continues to be an important aspect of branding and differentiation in a variety of markets, including many you’d expect, and some you might not.
Christian Louboutin’s red color trademark helps to illustrate the importance of single color trademarks in the fashion industry.
Tiffany’s robin egg blue boxes help to illustrate the importance of single color trademarks in the luxury jewelry marketplace.
Although brown may not be the most glamorous color, it has done a lot for UPS, who has believed it can do a lot for you too.
Let’s not forget where this whole single color trademark ownership concept started, with Owens-Corning and the color pink for fibrous glass building insulation, remember the Pink Panther campaign?
And, while we’re on the subject of pink, what about T-Mobile’s magenta (hot pink) trademark recently afforded protection against AT&T’s use of a plum color in the wireless telecommunications industry? Here is a link to a copy of the decision granting T-Mobile a preliminary injunction against AT&T earlier this month.
Lest you operate under the misapprehension that color trademarks are limited to consumer goods and services, a couple of recent decisions from the Trademark Trial and Appeal Board (TTAB) demonstrate that color ownership is important to those in the medical device industry too.
As our friend John Welch covered so well over at the TTABlog, just last month:
“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].”
Now John — wearing the advocate hat for Covidien — as a service to all trademark types, has identified another tool that might be used to facilitate the coexistence of “teal” and “blue” marks, or in his client’s case, “red” and “pink” marks in the field of medical devices.
In Covidien LP v. Masimo Corporation, John defeated a motion to dismiss his petition for partial cancellation of a prior and blocking single color mark registration under Section 18 of the Lanham Act. His plan appears to be to compel a narrowing of the “red” registration, to the specific shade of red allegedly used by Masimo, “fire engine red” — Pantone PMS 185, so that Covidien’s pink (Pantone PMS 806) mark can peacefully coexist at the USPTO without any likelihood of confusion. Who knows, maybe he’ll be able to leverage a consent to registration now from Masimo?
But if not, the T-Mobile decision mentioned above didn’t seem to put much stock in the narrow shade-specific language found in the registration at issue there:
“This court finds and concludes that the Supplemental Register’s reference to Rhodamine Red U does not limit the mark protections T Mobile seeks.”
In part, because the facts showed that different shades of magenta had been used over time by T-Mobile. Any thoughts about whether this different perspective might be applied to impact whether Covidien is granted its request to compel a “narrowing” of Masimo’s single color registration from “red” to “fire engine red” and/or Pantone PMS 185?
How would you attempt to avoid having a broadly worded single color registration narrowed in a partial cancellation action under Section 18 of the Lanham Act?
Might it help to avoid slavish consistency of one exact Pantone shade of color? Might that impact your ability to establish acquired distinctiveness or secondary meaning in the first place?