Cook Medical Technologies LLC

Trademark Trial and Appeal Board

Dec 31, 2012

No. 77882876 (T.T.A.B. Dec. 31, 2012)

Mailed: 12/31/2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cook Medical Technologies LLC
________

Serial No. 77882876
_______

Vincent O. Wagner of Woodard, Emhardt, Moriarty, McNett & Henry
for Cook Medical Technologies LLC.

William T. Verhosek, Trademark Examining Attorney, Law Office
114 (K. Margaret Le, Managing Attorney).
_______

Before Quinn, Zervas and Lykos,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Cook Medical Technologies LLC filed, on December 1, 2009,
an application to register the mark shown below

THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 77882876

2

for “medical devices, namely, guiding sheaths for use in
conjunction with access needles, wire guides, and dilators for
providing access for diagnostic and interventional devices in
vascular and non-vascular procedures” (in International Class
10). Applicant claims first use of the mark anywhere and first
use in commerce on April 21, 1993. By amendment, applicant
seeks a registration on the Supplemental Register. The
application includes the following color statement: “The
color(s) teal is/are claimed as a feature of the mark.” In
addition, the application includes the following description of
the mark:
The mark consists of a translucent,
iridescent teal color shown along the shaft
length of a rib-reinforced medical guiding
sheath. The configuration of the goods
shown in the drawing by broken lines are
[sic] not part of the mark and are [sic]
shown in the drawing solely for the purpose
of showing the position of the mark on the
goods.

The trademark examining attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground of likelihood of confusion with three previously
registered marks, all owned by the same entity.

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Ser. No. 77882876

4

Registration No. 2875842, issued August 24, 2004 pursuant to
Section 2(f); affidavit under Section 8 accepted, affidavit
under Section 15 received: for “multi-lumen and single-lumen
central venous catheters” (in International Class 10). The
registration includes the following statements:
The drawing is lined for the color blue.
The mark consists of the color blue as
applied to the tip and indwelling length of
the goods. The dotted outline of the goods
is intended to show the position of the mark
and is not a part of the mark.

When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Applicant argues that its mark is distinguishable from the
cited marks, none of which incorporates the color teal in any
fashion, but rather identifies a different color, blue, in
different specified arrangements on catheter products. Although
applicant concedes that blue is a component of the color teal,
it points out that blue is also a component of many other
colors, including purple. Applicant contends that the examining
attorney has impermissibly limited competition by equating the
colors teal and blue in his likelihood of confusion analysis.
According to applicant, the refusal “is built on the untenable
premise that (assuming similar goods) a mark incorporating a
Ser. No. 77882876

5

color that includes some degree of another color in a prior
registration cannot be registered as a matter of law.” (Brief,
p. 6). Applicant also asserts that the examining attorney has
impermissibly ignored the “translucent” and “iridescent”
characteristics of its mark in the comparison with registrant’s
mark, as well as discounted the differences in the arrangement
of the colors on the goods. In support of its arguments,
applicant submitted dictionary and Wikipedia entries. Lastly,
the coexistence of the marks for a period of over 18 years,
applicant urges, is an indication that confusion is unlikely to
occur among purchasers.
The examining attorney maintains that the colors “teal” and
“blue” are “legally identical” and, in this connection, points
out that the original description of applicant’s mark in the
application identified the claimed color as “blue/teal.” As to
the goods, the examining attorney asserts that they are
complementary because catheters are generally used with sheaths.
In support of the refusal, the examining attorney introduced
dictionary definitions, and excerpts from applicant’s website
and third-party websites.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
Ser. No. 77882876

6

177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in the
marks”).
The present case provides a somewhat unusual likelihood of
confusion determination involving the comparison between two
color marks. Professor McCarthy has characterized these types
of likelihood of confusion comparisons as “some of the most
unpredictable and troublesome issues of infringement in
trademark law,” and noted that these kinds of issues exemplify
“‘shade confusion.’” J.T. McCarthy, McCarthy on Trademarks and
Unfair Competition, § 7:45.70 (4th ed. 2012). The concern
underlying arguments about “shade confusion” is that
determination of the issue of likelihood of confusion between
shades of color is too elusive and subjective. Professor
McCarthy offers his opinion on the topic:
The legal scope of a trademark in color is
not defined in scientifically objective
terms, like the claims of a utility patent.
Ser. No. 77882876

7

The test of infringement is not how many
Pantone shades the defendant is distant from
the senior user’s mark, but whether the
reasonably prudent customer would be likely
to be confused as to source, sponsorship,
affiliation or approval. Some courts
blithely assume that because there are
hundreds of scientifically identifiable
shades, consumers can distinguish between
them to identify hundreds of different
commercial sources by fine variations in
shade and that therefore colors will never
be “depleted” and no one will be confused.
In the author’s opinion, this is an
unrealistic view which erroneously assumes
that the first competitor in a market to
establish a primary color such as “red” as
its distinguishing color will stand by and
not sue (and likely win) when a competitor
enters with a different shade of red, the
junior user arguing in defense that its
“yellowish red” is not confusingly similar
to the senior user’s “bluish red.” Anyone
who has gone shopping in a paint store and
been unable to distinguish between fine
variations of shades will appreciate the
attitude of a judge or juror asked to find
that “yellowish red” does not infringe
“bluish red.” If the decision maker thinks
that the ordinary purchaser or user will see
the color as a source indicator, and see
them as close enough as to be likely to
confuse source or affiliation, then
infringement will be found, even though the
color shades are not identical.

McCarthy on Trademarks and Unfair Competition, supra at
§ 7:45.70.
In the seminal case on color trademarks, Qualitex Co. v.
Jacobson Products Co., Inc., 514 U.S. 159, 34 USPQ2d 1161 (1995)
(“Qualitex”), the Supreme Court rejected the shade confusion
argument as a reason for the traditional ban on a single product
Ser. No. 77882876

8

color as a trademark. The Court indicated that the practical
problem of deciding an issue of shade confusion is no more
difficult than determining whether differences in word marks
would be likely to cause confusion. Id. at 1164-65 (“We do not
believe, however, that color, in this respect, is special.”).
Even prior to Qualitex, the Federal Circuit and the Board
decided issues involving the question of shade confusion. See,
e.g., In re Amsted Industries Inc., 972 F.2d 1326, 24 USPQ2d
1067 (Fed. Cir. 1992) (no confusion likely between orange color
of plastic sheath wrapped around wire rope and orange strand in
six strand wire rope); and Amsted Industries, Inc. v. West Coast
Wire Rope and Rigging, Inc., 2 USPQ2d 1755 (TTAB 1987) (likely
confusion was found between opposer’s wire rope with two
adjacent strands of yellow as compared with applicant’s wire
rope with adjacent strands of yellow and yellowish green).
In the present case, we are asked to compare the color
“blue” with “teal,” a color described as “greenish blue” or
“bluish green.” (See discussion, infra). We will confine our
likelihood of confusion analysis to the refusal based on the
mark shown in Registration No. 2875842, consisting of the color
blue as applied to the tip and indwelling length of the goods,
because, in view of the similarity between this mark and that of
applicant, this cited registration presents the strongest case
for the refusal. That is, if confusion is likely between those
Ser. No. 77882876

9

marks, there is no need for us to consider the likelihood of
confusion with the other cited marks (one of which is for the
mark applied to only the tip of the catheter); while if there is
no likelihood of confusion between applicant's mark and the
cited mark comprising not only the color blue on the tip but
also running the length of the catheter, then there would be no
likelihood of confusion with the other marks. In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
We first turn to consider the goods. It is well-settled
that the goods of the parties need not be identical or
competitive, or even offered through the same channels of trade,
to support a holding of likelihood of confusion. It is
sufficient that the respective goods of the parties are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods are such that they would
or could be encountered by the same persons under circumstances
that could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same source.
See In re Accelerate s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012).
The issue, of course, is not whether purchasers would confuse
the goods, but rather whether there is a likelihood of confusion
as to the source of the goods. In re Binion, 93 USPQ2d 1531,
1535 (TTAB 2009). If goods are complementary in nature, or used
together, this relatedness can support a finding of likelihood
Ser. No. 77882876

10

of confusion. See, e.g., In re Martin's Famous Pastry Shoppe,
Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
Applicant’s brief is entirely silent with respect to the
similarity between its guiding sheaths and registrant’s
catheters. This is no surprise given applicant’s earlier
confirmation that its sheaths “may be used in conjunction with
access needles, wire guides, and dilators to provide access for
such other devices, including catheters.” (Response, Feb. 25,
2011). Applicant’s website indicates that its goods are used
“to introduce balloon, closed or nontapered-end and other
catheters. The sidearm fitting allows flushing around the
catheter while it is positioned inside the sheath.” The third-
party websites in the record corroborate the same type of
complementary use, that is, guiding sheaths used in conjunction
with catheters. Accordingly, we find that applicant’s guiding
sheaths and registrant’s catheters are closely related goods.
This du Pont factor regarding the goods weighs in favor of a
finding of likelihood of confusion. See In re Toshiba Medical
Systems Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (medical MRI
diagnostic apparatus and medical ultrasound devices are related,
in part because they have complementary purposes and may be used
by the same medical personnel on the same patient to address the
same medical issue).
Ser. No. 77882876

11

Because there are no limitations as to channels of trade or
classes of purchasers in the identifications of goods in the
application and cited registration, it is presumed that
applicant’s and registrant’s goods move in all channels of trade
normal for those goods, and that they are available to all
classes of purchasers for those goods. See In re Viterra, 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); Paula Payne
Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
76 (CCPA 1973); Kalart Co. v. Camera-Mart, Inc., 258 F.2d 956,
119 USPQ 139 (CCPA 1958); and In re Linkvest S.A., 24 USPQ2d
1716, 1716 (TTAB 1992). Because the goods are medical devices,
the goods are presumed to be sold through medical supply
distributors, and the purchasers for such goods would include
physicians and purchasing agents for medical facilities such as
hospitals and clinics. The overlap in trade channels and
purchasers are factors that weigh in favor of finding a
likelihood of confusion.
The crux of this appeal centers on the similarity of the
marks. When, as in the present case, the marks at issue are
non-literal design marks, the similarity of the marks must be
decided primarily on the basis of visual similarity. General
Foods Corp. v. Ito Yokado Co., Ltd., 219 USPQ 822, 828 (TTAB
1983) (the comparison of design marks comes down to a
“subjective ‘eye ball’ reaction”); cf. Diamond Alkali Co. v.
Ser. No. 77882876

12

Dundee Cement Co., 343 F.2d 781, 145 USPQ 211, 213 (CCPA 1965)
(“When symbol marks...are being considered, appearance is most
significant. Symbols of this kind do not sound.”) (citation and
internal quotation marks omitted). See McCarthy on Trademarks
and Unfair Competition, supra at § 23:25 (the comparison of
design marks “is really nothing more than a subjective ‘eyeball’
test”). In this situation, when comparing the color marks at
issue, we are mindful that the test is not whether the marks can
be distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in terms
of their appearance and overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196
USPQ 1, 3 (CCPA 1977); Diamond Alkali, 145 USPQ at 213 (a side-
by-side comparison is not the test, but rather whether confusion
is likely when “the marks are compared by separate recall later
in time and removed in place”); and Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). A
purchaser’s (even a sophisticated one) recollection of design
marks is often of a general, rather than specific, nature; thus
the marks may be confusingly similar despite differences between
Ser. No. 77882876

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them. See, e.g., B.V.D. Licensing Corp. v. Rodriguez, 83 USPQ2d
1500, 1509 (TTAB 2007).
As set forth in TMEP § 807.07(a)(ii) (October 2012): “The
color location statement must include the generic name of the
color claimed. The statement may also include a reference to a
commercial color identification system. The USPTO does not
endorse or recommend any one commercial color identification
system.” TMEP § 1202.05(e) reads as follows:
The description of the mark must be clear
and specific, use ordinary language, and
identify the mark as consisting of the
particular color as applied to the goods or
services. If the color is applied only to a
portion of the goods, the description must
indicate the specific portion. Similarly,
if the mark includes gradations of color,
the description should so indicate. If the
applicant is claiming a shade of color, the
shade must be described in ordinary
language, for example, “maroon,”
“turquoise,” “navy blue,” “reddish orange.”
This is required even if the applicant also
describes the color using a commercial
coloring system.

With the above information as background, we now turn to
this first du Pont likelihood of confusion factor which, in the
present case, focuses on the similarity or dissimilarity of the
marks in their entireties as to appearance. In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. We also note that where, as
here, the goods are closely related, the degree of similarity
necessary to find likelihood of confusion need not be as great
Ser. No. 77882876

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as where there is a recognizable disparity between the goods.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007); and
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84
USPQ2d 1323, 1325 (TTAB 2007). Further, in this regard, we are
cognizant that likelihood of confusion takes on additional
significance when the goods are pharmaceuticals or medical
instruments. See, e.g., Glenwood Labs., Inc. v. American Home
Prods. Corp., 455 F.2d 1384, 173 USPQ 19, 22 (CCPA 1972) (“The
goods here involved being drugs, confusion as to which could
unquestionably give rise to serious consequences, we think due
consideration ought properly be given that fact in the
determination of likelihood of confusion.”); and Ethicon, Inc.
v. American Cyanamid Co., 192 USPQ 647, 651-52 (TTAB 1976)
(applying this concept to surgical sutures and clavicle
splints).1
Dictionary entries in the record define “teal” as “greenish
blue” (merriam-webster.com); and “a bluish shade of green; shade
of green tinged with blue” (wordnet.com). Wikipedia contains an
entry for “teal,” stating it is “a medium blue-green color,” and

1 See infra, discussion on purchaser sophistication.
Ser. No. 77882876

15

“teal blue” is “a medium tone of teal with more blue.”2
Wikipedia also contains an entry for “web colors,” setting forth
the available colors used in designing web pages; “teal” is
described as “50% green, 50% blue.” The words “translucent” and
“iridescent” appear in applicant’s description of its mark.
“Translucent” is defined as “allowing light to pass through but
diffusing it” (Wiktionary.com); and “iridescent” is defined as
“varying in color when seen in different lights or from
different angles.” (wordmonkey.com).
Registrant’s mark is described as follows: “The drawing is
lined for the color blue. The mark consists of the color blue
as applied to the tip and indwelling length of the goods.”3

2 In the present case we have considered the Wikipedia entries inasmuch
as the examining attorney, as the nonoffering party, had an
opportunity to rebut this evidence by submitting other evidence that
may have called into question the accuracy of this particular
Wikipedia information. See TBMP § 1208.03 (3d ed. rev. 2012). In any
event, the other dictionary definitions essentially corroborate the
Wikipedia entries. See In re Carrier Consulting Group, 84 USPQ2d
1028, 1032-33 (TTAB 2007).
3 Neither applicant nor the examining attorney introduced into the
record a specimen of registrant’s mark to show registrant’s color mark
as actually used in commerce. We hasten to add that even if
registrant’s specimen were of record, registrant’s mark covers all
shades of the color “blue.” In this regard, we cannot help but take
note of the Board’s prescience when twenty-five years ago it was faced
with a likelihood of confusion analysis involving colors, Amsted
Industries Inc. v. West Coast Wire Rope & Rigging Inc., 2 USPQ2d at
1762 n.9:
It may be added that, whereas we are required to
determine the issue before us based on the
limited descriptions and lining now provided in
our rules of practice, we think that some
attention should be given to whether our present
practice of lining for color is adequate to
contemporary needs. In In re Owens-Corning
Ser. No. 77882876

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Applicant’s mark is described as follows: “The mark consists of
a translucent, iridescent teal color shown along the shaft
length of a rib-reinforced medical guiding sheath.”
We find that applicant’s teal color mark that runs the
length of the shaft of a guiding sheath for catheters and

Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417
(Fed. Cir. 1985), rev’g 221 USPQ 1195 (TTAB
1984), the Court above has expressed confidence
in our ability to exercise judgment in
determining the registrability of trademarks
based on color, taking into account the
differences between color shades. Id., 227 USPQ
at 421. See, generally, E.R. Henry, “Right Hat,
Wrong Peg: In re Owens-Corning Fiberglas
Corporation and the Demise of the Mere Color
Rule”, 76 TRADEMARK REPORTER, 389 (September-
October, 1986). However, this case highlights an
inadequacy concerning the factual basis for such
analysis, especially where an applicant
introduces no evidence as to the particular shade
of color which is in use. Indeed, the same
inadequacy would be apparent if an opposer,
owning a registration of a color mark in one of
the twelve colors defined by our rules opposes
registration of a color mark of an applicant
based on that registration and no other evidence,
also a viable option under our practice. It
would seem useful in these circumstances for the
Board to have before it, at least, satisfactory
photographic evidence of what shade is being
claimed by an applicant as well as what shade is
comprised in an opposer’s registration. Of
course, the case before us must be determined on
the basis of our present practice and rules,
subject to whatever limitations they necessarily
impose.
The Office subsequently changed its practice and rules. Because color
marks are visual, such marks now must be depicted in color drawings,
accompanied by: (1) a claim naming the color(s) that are a feature of
the mark; and (2) a separate element naming the color(s) and
describing where the color(s) appear and how they are used on the
mark. Trademark Rules 2.37 and 2.52(b)(1). See TMEP § 1202.05(d)
generally, §§ 807.07-807.07(g) for a discussion of color mark
drawings, and §§ 808-808.03(f) for a discussion of descriptions of
marks.
Ser. No. 77882876

17

registrant’s blue color mark that runs the length of a catheter
are similar in appearance. Registrant’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 in this case, registrant’s blue and
applicant’s teal are similar in color. The colors run the
length of the products, which are narrow in shape.4 Indeed, as
noted earlier, the original description of applicant’s mark in
the application identified the claimed color as “blue/teal.”
The fact that applicant’s teal color 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.5 The
similarity in appearance leads to our view that the marks
engender similar overall commercial impressions when applied to
closely related goods.

4 The narrow shape may limit the ability to differentiate between the
shades of blue.
5 One of the arguments made in Qualitex against the protection of color
alone as a trademark was that “lighting (morning sun, twilight mist)
will affect perceptions of protected color” and, thus, “competitors
and courts will suffer from ‘shade confusion’ as they try to decide
whether use of a similar color on a similar product does, or does not,
confuse customers and thereby infringe a trademark.” Qualitex, 34
USPQ2d at 1164. The Court responded: “We do not see why courts could
not apply [legal standards that exist to guide courts in comparing
word marks] to a color, replicating, if necessary, lighting conditions
under which a colored product is normally sold.” Id.
Ser. No. 77882876

18

The similarity between the marks weighs in favor of finding
a likelihood of confusion.
As noted earlier, purchasers of applicant’s goods would
include medical professionals. Applicant did not even argue,
let alone submit any supporting evidence, that relevant
purchasers are knowledgeable and discriminating in making
purchasing decisions about medical supplies such as those sold
under the involved marks. Cf. Edwards Lifesciences Corp. v.
VigiLanz Corp., 94 USPQ2d 1399, 1413 (TTAB 2010). Given the
nature of the goods, however, it is reasonable for us to assume
that the relevant purchasers are likely to exercise some degree
of care when it comes to buying and using guiding sheaths and
catheters that would be used in performing medical procedures.
It is settled, however, that even sophisticated purchasers are
not immune from source confusion, especially in cases such as
the instant one involving similar marks and closely related
goods. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000). See In re Research Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), citing Carlisle
Chemical Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403,
168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers...are not infallible.”). See also Kos
Pharmaceuticals Inc. v. Andrx Corp., 369 F.3d 700, 70 USPQ2d
1874, 1887-88 (3d Cir. 2004) (“These trained professionals
Ser. No. 77882876

19

[doctors, nurses and pharmacists] may be expected to be
knowledgeable about, and to exercise care in distinguishing
between, medicines. We have emphasized a countervailing concern
that weighs against allowing the expertise of physicians and
pharmacists to trump other factors in assessing the likelihood
of confusion in drug cases....[P]hysicians are not immune from
confusion or mistake....There is no reason to believe that
medical expertise as to products will obviate confusion as to
source or affiliation or other factors affecting goodwill.”
(citations omitted)). We find that the similarities between the
marks and the goods sold thereunder outweigh any sophisticated
purchasing decision, especially in the absence of evidence
relating to the degree of care in making the decision. See HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB
1989), aff’d, Weiss Associates, Inc. v. HRL Associates, Inc.,
902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990) (similarities of
goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). Thus, this factor is
given less weight in view of the similarities between the marks
and the goods.
The sixth du Pont factor focuses on the number and nature
of similar marks in use on similar goods. Although hardly the
most probative factor in this case, the absence in the record
before us of any third-party use or registration of a color mark
Ser. No. 77882876

20

in the medical devices field tends to show that registrant’s
mark is unique or at least not coexisting with similar marks in
the field. Thus, there is no evidence to indicate that medical
professionals who are likely to purchase the involved goods are
accustomed to distinguishing between marks based on color, and
particularly subtle differences in color. See Sterling Drug
Inc. v. Sebring, 515 F.2d 1128, 185 USPQ 649, 652 (CCPA 1975)
(“Since the record is devoid of any evidence that any other
merchant of any product has used or is using [opposer’s design
mark] as a trademark, we feel it most likely that its appearance
on such products as are here involved would be taken as an
indication of common origin.”).
Applicant’s assertion, in an ex parte proceeding, of the
contemporaneous use of applicant’s and registrant’s marks for a
period of over 18 years without actual confusion is entitled to
little weight. See In re Majestic Distilling Co., Inc., 65
USPQ2d at 1205 (“uncorroborated statements of no known instances
of actual confusion are of little evidentiary value”). See also
In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA
1973) (stating that self-serving testimony of applicant’s
corporate president’s unawareness of instances of actual
confusion was not conclusive that actual confusion did not exist
or that there was no likelihood of confusion). In re Binion, 93
USPQ2d at 1536; In re 1st USA Realty Professionals Inc., 84
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USPQ2d 1581, 1588 (TTAB 2007); and In re Kangaroos U.S.A., 223
USPQ 1025, 1026-27 (TTAB 1984). In any event, the record is
devoid of probative evidence relating to the extent of use of
applicant’s and registrant’s marks and, thus, whether there have
been meaningful opportunities for instances of actual confusion
to have occurred in the marketplace. See Cunningham v. Laser
Golf Corp., 55 USPQ2d at 1847; and In re Wilson, 57 USPQ2d 1863,
1869 (TTAB 2001) (“[I]nasmuch as we have heard from neither
registrant nor the Highland Orange Association in this appeal,
we cannot conclude that, in fact, no instances of actual
confusion ever occurred.”). Accordingly, the du Pont factor of
the length of time during and conditions under which there has
been contemporaneous use without evidence of actual confusion is
considered neutral.
We conclude that the factors involving the similarity
between the marks and the goods, and the overlap in trade
channels and purchasers weigh in favor of affirmance of the
examining attorney’s refusal. The sophistication of purchasers
weighs, at best, slightly in favor of applicant. The absence of
actual confusion factor is neutral. On balance, we conclude
that the factors weigh in favor of finding a likelihood of
confusion.
To the extent that any of applicant's points raises a doubt
about likelihood of confusion, that doubt is required to be
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resolved in favor of the prior registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and
In re Martin's Famous Pastry Shoppe, Inc., 223 USPQ at 1290.
In reaching our decision in this appeal, we are
constrained, of course, by the inherent limitations of the
nature of our administrative proceedings. See TBMP § 102. We
do not mean to suggest by our decision herein that merely
because a party obtains a registration for a single color that
such registration will block others from using or registering
marks for other colors, even similar colors. But in the present
case, the mark is described only as the color “blue” (applied to
a certain part of the goods), and therefore we have considered
the mark to be for any shade that would fall under the general
term “blue.” That is, we decide this ex parte appeal based on
the information on the face of the cited registration; we do not
read in limitations.
We point out that applicant was not without possible
remedies here, including seeking a consent from the owner of the
cited registration, or seeking a restriction of the registration
under Section 18 of the Trademark Act, 15 U.S.C. § 1068.
Although we are sympathetic to applicant’s concerns about the
scope of protection being given to the cited registration,
applicant did not avail itself of the remedy afforded by Section
18 that gives the Board the equitable power to cancel
Ser. No. 77882876

23

registrations in whole or in part, or to “otherwise restrict or
rectify...the registration of a registered mark.” See Trademark
Rule 2.133(b). See also TBMP § 309.03(d) and cases cited
therein. A party in applicant’s position can file a petition
for cancellation of the cited registration, requesting a
restriction or modification of registrant’s description of its
mark on the basis that the description is “ambiguous or overly
broad and not specific to the mark actually used” in the
marketplace.6 This Section 18 claim, if successful, would modify
the description of the mark from “blue” to the specific shade of
blue actually used in the marketplace. Such a claim can be used
to modify overly broad identification of goods (for example,
“computer programs”). See IdeasOne Inc. v. Nationwide Better
Health Inc., 89 USPQ2d 1952, 1954-55 (TTAB 2009), citing In re
N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). However, the
Board will not entertain claims to modify overbroad descriptions
of marks unless the proposed modification will avoid a finding
of likelihood of confusion between the parties’ marks. The
Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479
(TTAB 1998). Thus, in the present case, applicant could have
brought a cancellation proceeding seeking to limit registrant’s
mark to “sky blue,” “navy blue” or some other shade of blue (as

6 Section 18 claims may be asserted only in inter partes proceedings,
and not during an ex parte appeal; further, the Board may not grant
relief under Section 18 sua sponte.
Ser. No. 77882876

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appropriate), assuming, of course, that such restriction would
result in no likelihood of confusion. See generally T. Lemper
and L. McLeod, “Embracing Marketplace Realities: Rediscovering
Section 18 of the Lanham Act on the Twentieth Anniversary of Its
Revival,” 99 TMR 1299 (2009).
Just as Section 18 provides an avenue of relief for a party
who faces a cited registration with an overly broad and no
longer acceptable identification of goods, Section 18 serves the
same purpose when it comes to alleged overbroad color marks
that, under the old rules involving color lining, were permitted
to be registered; such registrations are no longer allowed
inasmuch as a drawing in color (as shown by applicant’s drawing
herein) is required if an applicant is claiming color as a mark.
Thus, going forward, the concerns of the Board expressed in
Amsted v. West Coast about the then-existing limitations under
the old rules largely have been addressed.
Decision: The refusal to register is affirmed.