Trademark Review - Covidien and Reynolds (March 2014)

by Knobbe Martens

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The Board Has Power to Restrict the Scope of a Color Registration 

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]

Reynolds Did Not Abandon Marks Despite Changes to Its Registered Design 

Reynolds sued Handi-Foil Corp. for trademark infringement.  In reply, Handi-Foil sought to cancel the trademark registrations asserted by Reynolds against Handi-Foil claiming Reynolds had abandoned the registered marks.  

Reynolds obtained two registrations in 1977 for its aluminum foil package designs.  Reynolds amended those registrations in 1997 to reflect changes to its packaging

Original Registration (Fig. 1)

1997 Amended Registration (Fig. 2) 

In 2007, Reynolds renewed the registrations using a specimen that included additional changes to the registered design.  Those changes included a series of curved silver lines to separate the blue and pink areas. 

2007 Specimen (Fig. 3)

Reynolds later made additional changes to its packaging.  The changes included different proportions of the blue and pink areas on the box, and different proportions of the writing in each area.  Reynolds also added the text “Trusted Since 1947” on the blue side of the box.  

Current Packaging (Fig. 4)

Handi-Foil argued that Reynolds’ current packaging is not identical to its registered marks and thus, Reynolds has abandoned the registered marks.  Reynolds did not deny that there are differences in the packaging as compared to the registered mark.  In defense, Reynolds argued that its packaging is the “legal equivalent” of the registered mark because it creates the same, continuing commercial impression.

The Court first determined that it should compare the current packaging to the “box as registered with the PTO.”  Because the PTO renewed the registration on the basis of the 2007 specimen (Fig. 3 above), the Court determined the 2007 specimen was the proper point of comparison to the current packaging.  Despite the changes to the current package, the Court found that the two create a continuing commercial impression.   Thus, Reynolds was entitled to summary judgment on Handi-Foil’s abandonment claim.

Reynolds’ defense in this case is based on a legal doctrine called “tacking,” which allows a trademark owner to rely upon earlier use of a non-identical trademark to show continued use of the current form of the trademark.  To rely upon “tacking” the trademark owner must establish that the current mark is the “legal equivalent” of the earlier mark.  Several courts have made clear that tacking is to be allowed only in rare instances.   

Reynolds Consumer Products Inc. v. Handi-Foil Corp., case number 1:13-cv-00214 (E.D. VA, Feb. 2014)


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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