TTAB considers likelihood of confusion between colour marks

When the Supreme Court confirmed the eligibility of individual colours for protection under the Lanham Act in Qualitex Inc v Jacobson Products Co (514 US 159 (1995)), it rejected the argument that lower courts and the US Patent and Trademark Office would be forced into unworkable evaluations of whether particular colours were likely to be confused with each other. The court’s lack of concern about the issue of shade confusion was prescient to the extent that disputes over colour marks since then have led to relatively few precedential opinions, and none from the Trademark Trial and Appeal Board (TTAB). That latter circumstance, however, has recently changed with the TTAB’s opinion in In re Cook Medical Technologies LLC (Serial No 77882876, December 31 2012).

In Cook Technologies, a manufacturer of medical guiding sheaths for use in connection with access needles, wire guides and dilators sought to register for those goods a mark it described as “a translucent, iridescent teal colour shown along the shaft length of a rib-reinforced medical guiding sheath”.

The examiner rejected the application on the ground that the applied-for mark was likely to be confused with three prior-registered marks, all of which were for use in connection with medical catheters. The registrations covering the three marks in question described them as “the colour blue as applied to the tip of the goods”, “the colour darker blue as applied to the tip of the goods and the colour lighter blue as applied to the remainder of the indwelling length of the goods”, and “the colour blue as applied to the tip and indwelling length of the goods”.

In affirming the refusal to register, the TTAB found it necessary to examine only the likelihood of confusion between the last of the three registered marks, on the one hand, and the applicant’s mark, on the other. The TTAB noted as initial matters that “where, as here, the goods are closely related, the degree of similarity necessary need not be as great as where there is a recognisable disparity between the goods” and that “likelihood of confusion takes on additional significance when the goods are pharmaceuticals or medical instruments”. With respect to the degree of similarity between “blue” and “translucent iridescent teal”, it then found that:

"[the prior] [r]egistrant’s 'blue' mark is not limited to a certain shade of blue and thus covers all shades of blue, including greenish blue. Thus, we find that, in the context of the goods at issue in this case, registrant’s blue and applicant’s teal are similar in colour... Indeed,... the original description of applicant’s mark in the application identified the claimed colour as 'blue/teal'. The fact that applicant’s teal colour mark may appear to be translucent and iridescent is not sufficient to distinguish the marks in a meaningful manner for purposes of our likelihood of confusion determination; in certain lighting conditions, the translucence may not be perceptible and the iridescence may result in the teal being perceived as more blue than green. The similarity in appearance leads to our view that the marks engender similar overall commercial impressions when applied to related goods."

Particularly because neither the application nor the prior registration was limited to specific customers or trade channels and because there was no record evidence of third-party use of similar marks that might render the cited registrant’s mark weak and entitled to a narrow scope of protection, the TTAB sustained the examiner’s refusal to register the applicant’s mark.

Ted Davis, Kilpatrick Townsend & Stockton LLP, Atlanta