In a rare Section 2(d) refusal involving color marks, the Board reversed a refusal to register, on the Supplemental Register, the color green (below left) as applied to “Medical examination gloves” in view of the registered mark shown below right (also on the Supplemental Register), for the color green as applied to the exterior of “Gloves for medical use; Protective gloves for medical use.” Applicant Medline described its proposed mark as ““the color green (Pantone 2274C),” while the cited registration refers to another shade, “the color green Pantone 7488U.” The Examining Attorney maintained that the marks should have been described in ordinary language as the color “green,” but the Board disagreed. It then found that the two shades of green “would be viewed and remembered, at most, as distant relatives in the green family,” and it concluded that confusion as to source is “not likely.” In re Medline Industries, Inc., 2020 USPQ2d 10237 [precedential] (Opinion by Judge Christopher Larkin).

The Board observed that this case is “unusual” because the TTAB has issued only one predecential decision involving the issue of likelihood of confusion between two single-color marks in the nearly 25 years following the Supreme Court’s seminal decision in Qualitex: namely, In re Cook Med. Techs. LLC, 105 USPQ2d 1377 (TTAB 2012) [“teal” for applicant’s medical devices confusable with registrant’s “blue” for catheters). [TTABlogged here].

Strength of the Cited Mark: Applicant Medline argued that many third parties “use different shades of green for medical gloves,” that more than 40 different green medical gloves are available,” and that many of those are more similar in color to the cited mark than is its mark. Therefore, it asserted, “[i]n such a crowded field, ‘customers will not likely be confused between any two of the crowd and may have learned to carefully pick out one from the other.’” The Examining Attorney asserted that  these third-party uses were not probative because there was no showing that any of the manufacturers or providers of those gloves use the color green as an identifier of source. The Board sided with the Examining Attorney.

In Cook Medical, the Board found the absence of evidence of use or registration of color marks in the medical field tended to show that the mark there cited (the color “blue” for catheters) “is unique or at least not coexisting with similar marks in the field.” Thus Cook Medical teaches that what is relevant is “the existence of third-party marks, not simply the presence in the marketplace of third-party goods bearing some shade of the color at issue.” [Emphasis added by me].

The Board’s treatment of this factor in Cook Medical is consistent with the Federal Circuit’s analysis of the sixth DuPont factor in cases involving more traditional forms of marks such as words and designs. Seee.g., Omaha Steaks, 128 USPQ2d at 1693 (“[t]he purpose of introducing evidence of third-party use is to show that customers have become so conditioned by a plethora of such similar marks that customers have been educated to distinguish between different [such] marks on the bases of minute distinctions.”) (internal quotations and quotation marks omitted omitted)).

The Board observed that none of the third-party green medical gloves proffered by Medline are displayed in a way that identifies or refers to green or a particular shade of green as a trademark, and so “it is very unlikely that the colors or shades of green used by third parties on medical gloves would be perceived as marks.” The Board therefore found the sixth du Pont factor to be neutral.

Thirteenth du Pont Factor: Nonetheless, under the thirteenth du Pont factor, the Board may consider “[a]ny other established fact probative of the effect of use.” DuPont, 177 USPQ at 567. Noting that the cited registration is on the Supplemental Register, the Board found that “the third-party non-trademark uses of shades of green on medical gloves tend to impair the cited Supplemental Register mark’s ability to acquire distinctiveness, and to limit its scope of protection if it did acquire distinctiveness,” and therefore the evidence of third-party use of the color green by third parties “corroborates the weakness of the cited mark and its limited potential scope of protection,” and “weighs against a likelihood of confusion.”

Similarity of the Marks: The Board chose to consider the issue of the similarity of the marks “from the perspective of both purchasers of bulk medical supplies and the end users of the goods, as post-sale confusion as well as point-of-sale confusion is recognized.”

Although the Examining Attorney asserted that the “applied-for mark is the color green” and the “cited mark is the color green,” neither the cited registration nor the application describes the claimed color simply by a “general term.” The registration describes the claimed mark as “the color green Pantone 7488U,” while Medline’s application states that its mark is “the color green (Pantone 2274C).” The Examining Attorney argued that the colors should have been described in ordinary language, as the color “green,” and that each mark is simply a shade of green. The Board disagreed.

“[M]arks designating commercial color identification systems, such as PANTONE . . . may appear in connection with a color identifier in the description of the mark, because greater precision in identifying the color may be critical in accurately describing the mark and such third-party use is an intended use of commercial color identification-system terminology.” TMEP § 808.02.

Because the drawings in the application and cited registration are in color and show the particular shades of green claimed, and because both refer to Pantone designations to identify a specific shade of green, the Board concluded that it “cannot simply read one color claim to encompass the other claimed color, as in Cook Medical.”

Against the backdrop of the prominent display of the claimed marks on the goods, and acknowledging the inherent subjectivity of our determination, we find that there are significant differences in visual appearance between Registrant’s shade of green and Applicant’s shade of green. As shown in the registration drawing, Registrant’s claimed shade is a bright, attention-grabbing hue that is squarely within the green color family and would be perceived and recalled as such. *** Even when not viewed in proximity (or in comparison) to Registrant’s mark, Applicant’s claimed mark, as shown in the application drawing, appears as a subdued, pale shade that would be perceived as somewhere on the outer periphery of the green color family.

Observing that Cook Medical (quoting Professor McCarthy) refers to the issue of the similarity of two color marks  as “really nothing more than a subjective ‘eyeball test,’” Cook Med., 105 USPQ2d at 1381 (quoting MCCARTHY § 7:45), the Board found that the marks at issue “would be viewed and remembered, at most, as distant relatives in the green family.”

[C]onsumers with an imperfect or even dim recollection of Registrant’s bright shade, and who have been exposed to the use of multiple other shades of green on medical gloves and are then exposed to Applicant’s pale shade, are not likely to view the two shades as similar, or to view gloves bearing them as being the product of one and the same producer.

And so the Board reversed the refusal to register.

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TTABlog comment: Much of the Board’s extensive discussion involved comparing, contrasting, and distinguishing Cook Medical from the instant scenario.

Text Copyright John L. Welch 2020.