Covidien sought to register a mark that consists of “the color pink (Pantone PMS 806)” as applied to medical connectors and lead wires for use with patient monitoring devices.  The PTO rejected Covidien’s application on the ground that the mark is likely to cause confusion with Masimo’s registered mark for “the color red” for patient monitoring sensors and cables.

Covidien petitioned to partially cancel or restrict Masimo’s registration to limit the mark to “the particular shade of red actually used by [Masimo] in the marketplace….”  The basis of Covidien’s petition is Section 18 of the Trademark Act, which gives the Trademark Trial and Appeal Board authority to restrict a registered mark in various ways as an equitable remedy.

On Masimo’s Motion to Dismiss the Petition for failure to state a claim upon which relief can be granted, the Board ruled that Covidien set forth the necessary allegations to state a claim for relief under Section 18.  In particular, the Board found that Covidien’s petition was sufficient because it alleges that the description of the mark in the registration is not specific to the mark actually used by Masimo, and that the proposed restriction would avoid a finding of a likelihood of confusion.

Nevertheless, the Board held that Covidien’s proposed amendment to Masimo’s registered mark does not conform to the applicable requirements “inasmuch as it only sets forth the description of the color which it alleges is in use by way of reference to a commercial coloring system.”  The Board required that Covidien provide a more definite statement of the amendment that it alleges will avoid a likelihood of confusion.

Covidien LP v. Masimo Corp., Cancellation No. 92057336 (TTAB Feb. 2014) [precendential]