The fashion world has been abuzz about footwear designer Christian Louboutin’s claim to own exclusive rights to the color red for the soles of footwear.
But battles over claims of rights in particular colors did not end with the resolution of the Louboutin case and have extended beyond the fashion industry.
The issue of ownership of colors as trademarks recently reared its head in a US Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB) decision involving medical cables. Covidien LP filed a trademark application for a mark consisting of the color pink for medical cables. The USPTO initially refused regis- tration of the application based upon a likelihood of confusion with a registered trademark owned by Masimo Corporation for the color red for very similar products. Covidien then petitioned the TTAB to limit Masimo’s trademark registration to the particular shade of red being used by Masimo (Pantone PMS 185) to prevent any likelihood of confusion between Masimo’s color mark and its own. Masimo moved to dismiss Covidien’s petition.
The US Trademark Act states that the TTAB may “restrict or rectify . . . the registration of a registered mark” if the description of the mark in the registration is “ambiguous or overly broad” and the proposed restriction will avoid a likelihood of confusion. Because Covidien’s petition to limit Masimo’s trademark registration satisfied these requirements, the TTAB denied Masimo’s motion to dismiss.
Although the TTAB’s decision fell short of granting Covidien’s request to limit Masimo’s registration, it indicated that the TTAB would consider the request. The decision also demonstrates that trademark registrations for colors may be narrowed in certain cir- cumstances where such a limitation would alleviate a likelihood of confusion. As a result, it may provide third parties seeking to use variations of a protected color with an additional means of challeng- ing a registration for such color.