The following case summaries come to you from the AIPLA Trademark Litigation Committee volunteers, who are watching for recent court and TTAB decisions of interest to trademark practitioners. For past case summaries, please visit the AIPLA Trademark Litigation Committee micro site. Many thanks to our contributors, Molly Brownfield, Lindsay Coleman, Kathleen Hudik, Michael Huey, Amanda Naoufal, and Shauna Wertheim. If you would like to become a casesummary contributor for the AIPLA Trademark Litigation Committee or are interested in participating in other committee projects, please contact John Crosetto (email@example.com) and Kate Smith (firstname.lastname@example.org). ******** In re Koninklijke Philips Electronics N.V. – TTAB Decision No. 39 of 2014 Summary prepared by Amanda Naoufal, Bird & Bird The Board affirmed the Trademark Examining Attorney’s refusal to register a product design for acquired distinctiveness. The applicant filed an application for a toothbrush head for electric toothbrushes in Class 21. The Trademark Attorney refused registration on the basis that the applicant had not proven that the non-distinctive product design had acquired distinctiveness under section 2(f) of the Trademark Act. A product design that does not provide a utilitarian advantage may be registered if it has acquired distinctiveness. The Trademark act provides that exclusive and continuous use of the mark in commerce for five years can be used as prima facie evidence that the mark is distinctive. Other relevant factors in determining acquired distinctiveness include “copying, advertising expenditures, sales success, length and exclusivity of use, unsolicited media coverage, and consumer studies (linking the name to a source).” The evidence required for product designs, however, is not as simple. For product designs, the evidence “must relate to the promotion and recognition of the specific configuration embodied in the applied-for mark and not to the goods in general.” In other words, the product feature or product design must identify the source of the product rather than the product itself. The question presented to the Board was whether the applicant made a prima facie showing that “the relevant consumers perceive the product design of the base assembly of the toothbrush head for electric toothbrushes as a trademark.” The burden to prove a product design has acquired distinctiveness is on the applicant. The applicant’s evidence for a prima facie showing of acquired distinctiveness included long periods of continuous use, infringing use of Applicant’s mark by competitors, and high volume and sales. The Board, however, found the evidence insufficient. Citing previous decisions, the number of years of consecutive use alone is generally insufficient to show acquired distinctiveness for product designs. Further, “mere figures demonstrating successful product sales are not probative of purchaser recognition of a configuration as an indication of source” and a high volume sales does not necessarily show acquired distinctiveness. The Board noted that the Applicant lacked evidence of advertising expenditures which is provided to determine the nexus between the sales success and advertising efforts and Applicant’s product design. The Board explained that “look-for” advertisements are particularly useful in determining whether a product design is being advertised in a manner that indicates source. “Look-for” advertisements refers to advertising that “directs the potential consumer in no uncertain terms to look for a certain feature to know that it is from that source.” After reviewing the totality of the evidence, the Board agreed with the Trademark Examining Attorney that the applicant had failed to establish acquired distinctiveness of its product design and, therefore, affirmed the refusal to register the proposed mark. ******** In re Covalinski – TTAB Precedential Decision No. 44 for 2014 Summary prepared by Amanda Naoufal, Bird & Bird Lisa Covalinski sought registration for the mark “Redneck Racegirl” for “athletic apparel, namely shirts, pants, jackets, footwear, hats and caps, and athletic uniforms” in Class 25. Trademark Examining Attorney refused registration of Covalinski’s mark under section 2(d) based on likelihood of confusion with the registered mark “Racegirl” for, among other clothing items, sweat pants, tank tops, hats, visors, shorts, jackets, and caps in Class 25. The Board reversed the refusal to register on the basis that the design features dominated Covalinski’s mark causing a likelihood of confusion unlikely. To determine the likelihood of confusion, the Board examined the “cumulative effect of the differences in the essential characteristics of the goods and differences in the marks.” The Board acknowledged that Covalinski’s goods were nearly identical to the goods in the cited registration and that the trade channels for the goods were the same. The Board, however, found there to be “crucial differences” between the two marks. The proper test in comparing the marks is “whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” The Board found that given the context in which the goods were sold (on neck labels and hang tags), the visual impression of the mark is likely more important than the words REDNECK RACEGIRL. The Board noted that the words in a composite word and design mark are not always considered to be dominant. Citing to previous decisions, the Board explained that a prominent design in a mark can make the likelihood of confusion unlikely between similar words. The design features dominated the overall commercial impression of Covalinski’s mark, and this weighed “heavily against a conclusion that confusion is likely.” The Board acknowledged that the degree of similarity necessary to find a likelihood of confusions declines when the marks appear on nearly identical goods. However, citing a Federal Circuit decision, the Board stated that “[n]o mechanical rule determines likelihood of confusion, and each case requires weighing of the facts and circumstances of the particular mark.” In this particular case, Covalinski’s mark is significantly different from the registered mark that even though the marks are used on nearly identical goods, confusion between the marks is unlikely. Here, the differences between the marks outweighed the other du Pont factors and the refusal to register Covalinski’s mark was reversed. ******** Procedural Non-Compliance - Stricken Evidence Hunter Industries, Inc. v. The Toro Company, 110 USPQ2d 1651 (TTAB 2014 (precedential) Summary prepared by Shauna Wertheim, The Marbury Law Group, PLLC The Toro Company lost the use of valuable evidence in an opposition proceeding when it failed to adhere to basic trademark rules of procedure set forth in the Trademark Trial and Appeal Board Manual of Procedure and the Federal Rules of Civil Procedure. The Board sustained Hunter Industries, Inc.'s opposition to registration of Toro's mark PRECISION for landscape irrigation nozzles and sensors based on Hunter's prior common-law rights in the mark PRECISION DISTRIBUTION CONTROL for irrigation sprinklers, and a finding that the marks were highly identical, the goods were identical in part and mostly related, there was an overlap in channels of trade and class of purchasers, and there existed a likelihood of confusion. Toro was perhaps most stung during the proceedings by the Board's decision to strike major items of evidence based on Toro's failure to comply with certain rules of procedure. Hunter had moved to strike one group of Toro's trial exhibits, together with the related testimony and all references in its brief to the exhibits or testimony because Toro submitted the evidence in a form not specified in the Trademark Rules, or alternatively, on the basis of untimely identification and production in respond to Hunter's discovery requests. Hunter also sought to strike the declaration of seven witnesses, arguing Toro improperly redacted their names, employers, locations, and signatures, in violation of the terms of the parties' Standard Protective Order. The Board agreed on virtually all points. The Board struck the exhibits that were submitted on flash drive because Trademark Rule 2.126 does not permission such submissions, and held the evidence should have been submitted instead electronically via ESTTA or on paper. The Board further excluded from evidence two YouTube videos that Toro did not produce until its testimony period when Toro stated it discovered the videos, although it admitted the videos were responsive to Hunter's first request for documents served more than seven months earlier. In so ruling, the Board cited Rule 26(e)(1)(A) of the Federal Rules of Civil Procedure which require a party's duty to supplement discovery responses in a timely manner. Finally, the Board struck from evidence seven declarations from distributors of irrigation equipment, which the Board concluded were overdesignated as confidential. In so ruling, the Board acknowledged Toro's reluctance to divulge identifying information to its competitor, particularly when the parties shared many of the same distributors, but held: "while a party generally is not required to share its customer list with its adversary, when a party relies on testimonial evidence at trial, its adversary must have a meaningful opportunity to confront the witness and inquire into his or her credibility and the facts to which he or she testifies." The Board concluded Hunter's right to confront adverse witnesses had been significantly impaired. ******** Misrepresentation of Source Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623 (TTAB 2014) (precedential) Summary prepared by Shauna Wertheim, The Marbury Law Group, PLLC Bayer Consumer Care AG ("Bayer") successfully petitioned the Board for cancellation of the registration for FLANAX for "orally ingestible tablets of Naproxen Sodium for use as an analgesic" owned by Belmora LLC, although Bayer did not own or use the mark in the United States. Bayer owns a Mexican registration for the identical trademark for pharmaceutical products, analgesics, and anti-inflammatories, and presented evidence that FLANAX is the topselling pain reliever in Mexico and the number one brand for Bayer de Mexico. In a case of first impression, the Board agreed with Bayer that Belmora blatantly misused the FLANAX mark in a manner calculated to trade in the United States on the reputation and goodwill of Bayer's mark created by its use in Mexico in violation of Section 14(3) of the Trademark Act. Despite respondent's attempt to challenge Bayer's standing, including the argument that trademark rights under the Lanham Act arise solely out of use of the mark in U.S. commerce, the Board was not swayed. According to the Board, Belmora was mistakenly focused solely on Bayer's commercial activities within the U.S. which overlooked the fact that Belmora's own use was in the U.S. Because Belmora was using the FLANAX mark in the U.S. to misrepresent to U.S. consumers the source of its products as Bayer's Mexican products, Bayer lost the ability to control its reputation and thereby suffered damage. As stated by the Board, "the reputation of the Mexican FLANAX mark does not stop at the Mexican border." Based on facts which the Board stated "do not present a close case," the Board found the evidence of misrepresentation overwhelming, including the fact that Belmora's initial packaging copied Bayer's FLANAX logo as used in Mexico, down to the shading of color and relative thickness of the letters. Most significant to the Board was the fact that Belmora repeatedly invoked the reputation of Bayer's FLANAX mark when marketing its own product in the U.S., expressly to Hispanic consumers. Belmora argued that because it did not use the name "Bayer" on its packaging or in its marketing efforts, and that its own name "Belmora" was used instead, that it could not have misrepresented the source of its products. Not so, according to the Board. By repeatedly holding itself out as the source in the United States of the product sold for decades under the same mark in the bordering country of Mexico, Belmora's acts and conduct were aimed at deceiving the public into thinking that Belmora's goods actually emanated from Bayer, and that constituted misrepresentation of source warranting cancellation of the registration. ******** Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc.,111 USPQ2d 1080 (TTAB 2014) [precedential] Summary prepared by Kathleen Hudik, Lexero Law Firm In a split decision, the TTAB granted a petition for cancellation of six marks containing the term REDSKINS for entertainment services related to football. Amanda Blackhorse, Marcus Briggs-Cloud, Philip Gover, Jillian Pappan, and Courtney Tsotigh v. Pro-Football, Inc.,111 USPQ2d 1080 (TTAB 2014) [precedential]. Petitioners, a group of Native Americans, brought the cancellation proceeding claiming that Pro Football, Inc.’s REDSKINS marks disparage Native Americans and were thus in violation of 15 U.S.C. § 1052(a). The TTAB panel agreed, resting its opinion on expert testimony and statements of tribal organization leaders regarding the disparaging character of the word at the time each mark was registered. In his dissent, Judge Bergsman disagreed that the petitioners successfully proved disparagement at the time of registration and questioned the level of disparagement when REDSKINS is used in connection to sports teams. The TTAB previously considered these same issues when Native American petitioners attempted to cancel the REDSKINS registrations in Harjo v. Pro Football, Inc., finding then that the marks were disparaging to Native Americans. On appeal, federal courts found that petitioners’ claims were barred by laches but did not address the marks’ degree of disparagement. The parties to the instant case before the TTAB stipulated to the admission of the entire Harjo record and agreed to waive all objections beyond relevance to the evidence and testimony contained therein. To determine whether the marks were disparaging, the TTAB applied a two-step process by 1) assessing the mark’s meaning as it appears on goods and as they are used in connection to the goods in the registration, and 2) determining whether the meaning of the marks disparage Native Americans. Cancellation may only take place with “due caution” and “most careful” study of all facts. To succeed, petitioners would need show that the marks were disparaging to a substantial composite of Native Americans at the time of each mark’s registration (dates ranging from 1967-1990). Substantial composites need not be a majority of the group. The Board heard testimony of experts in lexical semantics and dictionary development who affirmed that the term REDSKINS did, in fact, refer to Native Americans. In determining whether the meaning of those marks disparaged the referenced group, the panel relied upon the Harjo deposition of Ms. Joanne Chase, the Executive Director of the National Congress of American Indians (NCIA). According to trial documents, NCIA represents 30% of Native American tribes in the United States. Speaking on behalf of those tribes, Ms. Chase testified an NCIA resolution asserting the disparaging nature and harmful effects of the REDSKINS marks in the Native American community. The Board also noted the marked decrease in popular usage of the term REDSKINS after the late 1960s and increasing dictionary reference to the offensiveness of the term as evidence of disparagement. Respondents claimed that petitioners’ claims were again barred by laches. The panel disagreed, asserting that laches is an inappropriate defense when a term disparages a group of people since individual members of the group continuously reach the age of majority to bring a disparagement case. The Board also held that public policy interests in cancelling disparaging marks overcame the financial concerns of a laches defense, stating that “it is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity.” Judge Bergsman disagreed with the sufficiency of petitioner’s evidence to show that the marks were disparaging at the time of each mark’s registration since petitioners failed to submit evidence of disparagement at the earliest registration dates. His disagreement on the issue of disparagement stemmed from NCAI’s lack of formal membership numbers or testimony on their voting processes, sparse dictionary reference of the word’s offensiveness from 1967-1978, and the fact that many schools on Native American reservations used the term REDSKINS for their own sports teams. ******** Harry Winston, Inc. and Harry Winston S.A. v. Bruce Winston Gem Corp., 111 USPQ2d 1419 (TTAB 2014) [precedential] Summary prepared by Kathleen Hudik, Lexero Law Firm The Trademark Trial and Appeal Board sustained an opposition of the BRUCE WINSTON mark for fine jewelry on 2(d) likelihood of confusion grounds. Harry Winston, Inc. and Harry Winston S.A. v. Bruce Winston Gem Corp., 111 USPQ2d 1419 (TTAB 2014) [precedential].Brought by renowned jeweler Harry Winston, holder of marks HARRY WINSTON, HW, and WINSTON for fine jewelry, watches, and other related products, the case centered on the fame of the Harry Winston mark, similarity of the products and marks, and close family relationship between Bruce Winston and company Harry Winston’s namesake (Bruce is Harry’s son). Harry Winston began using his name in the jewelry business in the 1930s, registering HARRY WINSTON, HW HARRY WINSTON, and WINSTON for fine jewelry, watches, and polished diamonds. The company’s jewelry is characterized by large gemstones in opulent settings, and pieces range in price from $5000 to $5 million. The Board in its decision recounted the evidence of the jeweler’s fame and extensive marketing techniques. For decades, Harry Winston has been lauded by prominent fashion magazines as a pre-eminent figure in fine jewelry and has gained attention for its loans of jewelry to scores of notable celebrities walking the red carpet. The jeweler was also immortalized in the lyrics of “Diamonds are a Girl’s Best Friend,” a song from the 1953 film Gentlemen Prefer Blondes, sung by a certain Marilyn Monroe. These examples, combined with evidence of Opposer’s promotional campaigns and staggering sales figures, led the Board to conclude that Harry Winston has achieved enormous fame in the fine jewelry market. The company’s primary trademarks are HARRY WINSTON or HW HARRY WINSTON, but it also uses and is frequently referred to by its mark WINSTON as an abbreviated source indicator. Harry’s son and Applicant Bruce Winston commenced business activity in the fine jewelry market in 2002 and applied to use mark BRUCE WINSTON in relation to gemstones, precious and semi-precious stones, and fine jewelry. Bruce Winston also sells fine jewelry comprised of large gems and typically markets to affluent customers willing to pay from around $100,000 to $500,000 per piece. The TTAB considered all du Pont likelihood of confusion factors, finding that the parties’ goods were identical or legally identical, the fame of Opposer’s mark to be great, and the similarity of the marks substantial given that first names do little to distinguish marks sharing the same surname, especially when that surname is a famous one. The Board also pointed out as promoting confusion the close family relationship between Harry and Bruce Winston, the press’ frequent association of the two in coverage of the Applicant’s business, and the admission by the Applicant that his relation to his famous father a part of his public identity. While the expensiveness of these goods suggest careful and educated consumers and therefore less customer confusion, the weight and significance of the other factors compelled the Board to find a likelihood of confusion between the marks. Applicant filed several counterclaims, including abandonment and fraud, that failed to persuade the Board. The Applicant did, however, prompt the Board to take notice Opposer’s inappropriately filed amendment, resulting in a partial cancellation of its registration for “precious metals, their alloys sold in bulk, and clocks.” ******** Concurrent Use - TTAB expanded geographical scope based on unsolicited 3rd party restaurant review Boi Na Braza, LLC v. Terra Sul Corporation a/k/a Churrascaria Boi Na Brasa, 110 USPQ2d 1386 (TTAB 2014) Summary prepared by Michael Huey, Law Office of Michael Huey In a concurrent use proceeding, the TTAB granted a motion filed by Plaintiff Boi Na Braza, Inc. ("BNB") to amend its application, so it excludes New Jersey and New York from the geographical scope of its standard character and design mark applications. Back in 2002, BNB obtained two geographically unrestricted marks "BOI NA BRAZA" for restaurant services, which was subsequently cancelled by the TTAB in September 2009, because the Defendant Churrascaria Boi Na Brasa ("Terra Sul") established prior use of mark "BOI NA BRASA" also for restaurant services. Consequently, BNB filed a concurrently use application that excluded New Jersey, but not New York, because Newark, New Jersey is the physical location of Terra Sul's two restaurants; first one opened in 1999. Nevertheless, Terra Sul opposed to the issuance of BNB's second set of applications. The Board dismissed the opposition in favor of this concurrent use proceeding. The Board found two conditions for the issuance of concurrent registrations: (1) applicant filed in good faith without knowledge of prior use by another, and (2) there is no likelihood of confusion, mistake, or deception in the market place as to the source of the goods resulting from the continued concurrent use of the trademark(s).The TTAB explained that the Plaintiff has the burden of proof to demonstrate its entitlement to a concurrent use registration. For the first prong, BNB's application was filed good faith by acknowledging Terra Sul's earlier opening of a restaurant in New Jersey and excluding New Jersey from its application. The analysis proceeded to the second condition: determining whether the two marks can coexist geographically in other states before manifesting a likelihood of confusion. The TTAB decided the two marks can coexist, reasoning restaurant services in particular can avoid confusion by restrictions in geographical territory. The parties have already coexisted for 15 years with no credible evidence of actual confusion, despite both party's presence on the internet. However, the TTAB must decide the appropriate scope of the geographical restriction; specifically, should Terra Sul be limited to its physical locations in New Jersey or should other states be excluded from BNB's application. The TTAB acknowledged the party with prior use is generally entitled to the entire US, but for a competing policy to reward those who seek federal registration, even when that party is a subsequent user. The TTAB explained that the inquiry should focus on the party’s (1) previous business activity; (2) previous expansion or lack thereof; (3) dominance of contiguous areas; (4) presently planned expansion; and, where applicable (5) possible market penetration by means of products brought in from other areas. The TTAB found that Terra Sul, for over 18 years, have never expanded outside of their Newark neighborhood with no tangible, current plans to do so. Likewise, BNB has provided no evidence of its intention to expand into New York. Regarding advertisements, Terra Sul's advertisement is limited with no promotions targeting New York. Furthermore, while Newark is located just beyond the border of New York, there is no evidence that any New York customer actually made the journey into New Jersey. Nevertheless, the TTAB found that the New York diner scene is significantly broad to reach Newark, NJ based on a newspaper, the Village Voice, naming Terra Sul's restaurant as "Best Choice Churrascaria" in its "best in nyc 2006" review. Consequently, BNB filed a motion to amend its application, with the TTAB granting that motion, to exclude New Jersey and New York from its concurrent use application. ******** Lack of Bona Fide Intent - Applicant testimony was non-specific as to nature and results of activities Lincoln National Corporation v. Kent G. Anderson, 110 USPQ2d 1271 (TTAB 2014) Summary prepared by Michael Huey, Law Office of Michael Huey Based on Section 1(b) grounds, TTAB sustained Lincoln National Corporation's opposition to register the mark "FUTURE" in two intent-to-use applications(i.e., 76259991 and 76690134) filed by Kent G. Anderson. The Opposer has standing and a real interest in the outcome as owner of a registered mark "HELLO FUTURE" for financial services. Although Opposer mark is not an identical, the TTAB determined it is similar enough to cause a likelihood of confusion under Section 2(d) through a Du Pont factors analysis. In turn, the applicant attempted to meet this burden to demonstrate a bona fide intent-touse the mark for Class 35 and Class 36; however, the TTAB found, "applicant was merely attempting to reserve a general right in the FUTURE mark."The TTAB explained “... the determination of whether an applicant has a bona fide intention to use the mark in commerce is to be a fair, objective determination based on all the circumstances.” Lane Ltd. v. Jackson International Trading Co., 33 USPQ2d 1351, 1357 (TTAB 1994). The TTAB reasoned, Class 35 and Class 36of the ITU application broadly list 23 and 154 services, respectively. The TTAB interpreted the described use, ranging from banking to shopping malls to dog breeding registry services, as "excessively long, repetitive and confusing." During deposition testimony, when the applicant was asked to identify perspective customers, the applicant responded, "every person in the world." The evidence also showed the applicant was an unemployed/self-employed security guard, and attended Bismarck Community College where he studied criminal justice and took some business classes. The deposition testimony further recorded the Applicant's admission that he lacked the resources and knowledge to provide such services. However, the applicant's response does contain some merit. The applicant recognized he is just one person, so he has been searching for the resources and knowledge needed. His intention is to license or partner with others to use the mark. The applicant testified he tried to get a bank loan; furthermore, contacted companies such as Kingdom Holding Companies, Ford Motors, Ferrari, Kellogg's, etc. He also used news paper advertising and social media advertising. The Applicant also testified to "haven't at any time stop trying to license the goods and services" for more than 12 years. Nevertheless, the TTAB regarded the testimony as "too non-specific, both as to the actual nature and results of the efforts and activities and as to the timing relative to the application filing date, to provide any significant support of the finding that applicant possessed the requisite bona fide intent to use the mark in connection with the identified Class 35 and Class 36 services." The letters he wrote to companies were unsolicited letters, with no response on the record. The newspaper and website advertising expenditure totaled approximately $4,000, and does not pertain specifically to Class 35 and Class 36 services. For example, one newspaper ad states, "PARTNERS NEED for huge inc. GLOBAL FUTURE BRANDS."With respect to the TLRA legislative history, the TTAB found application '134 contains more than just Class 35 and Class 36, but rather 8 Classes of goods or services. Application '991 contains 11 Classes. The TTAB interpreted the large number of classes as further evidence the Applicant does not have the requisite bona fide intent to use the FUTURE mark. Therefore, the TTAB sustained the opposition regarding Class 35 and Class 36. Ironically, the TTAB also held the applications '134 and '991 shall go forward as to the non-opposed classes. ******** In re Hitachi High-Technologies Corp. Summary prepared by Lindsay Coleman, Kelly IP, LLP In its In re Hitachi High-Technologies Corp. decision, the Board held that a “family of marks” may not be established in an ex parte proceeding. Hitachi High-Technologies Corporation applied to register OPTICROSS for “liquid chromatography apparatus and parts thereof” in Class 9, but the Examining Attorney refused registration under Section 2(d), and cited seven registrations owned by Optimize Technologies, Inc. that would be likely to cause confusion with OPTICROSS. The cited Optimize registrations are all OPTI-formative marks: OPTI, OPTI-MAX, OPTI-SEAL, OPTI-GUARD, OPTI-SOLV, OPTI-PAK, and OPTI-SOLV. In one office action, the Examining Attorney referred to Optimize’s OPTI-formative registrations as a “family” of marks. Applicant objected to the Examining Attorney’s characterization of the OPTI-formative marks as a family of marks in its response to that office action. As a result, the Examining Attorney no longer characterized the OPTI-formative marks as a “family” in future office actions, and refused registration under Section 2(d) for likelihood of confusion with each of the cited registrations. Applicant appealed the refusal. In denying the appeal, the Board noted that although the Examining Attorney could not have established that the OPTI-formative marks were a “family of marks,” there was still sufficient evidence in the record to justify the refusal. To establish a group of marks as a “family,” the party seeking to establish a “family of marks” must present evidence that the marks all have a shared characteristic, are advertised and promoted together, and that the public recognizes that the shared characteristic is indicative of a common origin. Because presenting such evidence requires significant resources, it is only possible to establish a “family of marks” in an inter partes context, and is not proper in an ex parte context where the Examining Attorney lacks such resources. ******** Covidien LP v. Masimo Corporation—TTAB Precedential Decision No. 4 for 2014 Summary prepared by Molly Brownfield, Kelly IP, LLP Masimo owned a registration on the Supplemental Register for a color trademark for “medical devices, namely, patient monitoring sensors and cables” in Class 10. The color red was claimed as a feature of Masimo’s registered mark. Covidien sought to register an application for a color trademark (particular shade of pink) on the Principal Register for “disposable medical devices and supplies, namely, connectors and lead wires for use with patient monitoring devices” in Class 10, which received 2(d) refusal based on likelihood of confusion with Masimo’s registration. Pursuant to § 18 of the Trademark Act, Covidien filed a petition for partial cancellation or restriction of Masimo’s registration to limit it to the particular shade of red used by Masimo. In lieu of filing an answer, Masimo moved to dismiss the petition for failure to state a claim. The Board found that Covidien alleged facts sufficient to establish standing to bring the cancellation proceeding. Regarding whether Covidien sufficiently pleaded a claim for § 18 relief, the Board noted that “in the case of a petition to restrict goods or services, a proper pleading to restrict or limit the description of a mark in an existing registration could include allegations that, for example, the description of the mark in the registration is ambiguous or overly broad and not specific to the mark actually used by the defendant, and must include an allegation that the restriction or limitation would avoid a finding of likelihood of confusion.”Covidien specifically alleged that Masimo used its registered mark in a particular shade of red, and requested relief under § 18 “that the mark be limited to the particular shade of red actually used by Respondent in the marketplace…,” which Covidien alleged would avoid a finding of likelihood of confusion between its applied-for mark and Masimo’s registered mark. Masimo argued that under Wellcome Foundation Ltd. v. Merck & Co. 46 USPQ2d 1478 (TTAB 1998), a petitioner must alleged that the description of the mark in the registration was “ambiguous or “overly broad” to state a claim under § 18. The Board held that Wellcome did not limit a § 18 claim to require a party to allege that an existing description is “ambiguous” or “overly broad”—rather § 18 also allows for 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.”The Board denied Masimo’s motion to dismiss and held that Covidien set forth the necessary allegations to state a claim for relief under § 18, however, it also held that Covidien’s proposed amendment to Massimo’s registration did not meet the requirements of Trademark Rule 2.52(b)(1) with respect to descriptions of color marks because it referenced only a commercial coloring system and did not describe the shade of red in ordinary language. The Board granted Covidien leave to file an amended pleading to address this issue.