In a rare Section 18 proceeding, the Board denied a petition to restrict and rectify Respondent GastonCo’s registration for the mark codeRED & Design for “Batteries and battery chargers; Communications headsets for use with communication radios, intercom systems, or other communications network transceivers; Ear buds; Ear phones; Megaphones; Microphones for communication devices; Speaker microphones.” Petitioner Premier contended that GastonCo uses its mark on goods for use with two-way radio communication devices, for use by those in the public safety, tactical, security and hospital industries, and by airsoft and paintball hobbyists. According to petitioner adding those restrictions to the identification of goods would avoid confusion with petitioner’s mark CODE RED for flashlights and other lighting products. The Board disagreed. Premier Accessory Group, LLC v. GastonCo, LLC, Cancellation No. 92066817 (April 28, 2020) [not precedential] (Opinion by Judge David K. Heasley).

Section 18 of the Lanham Act provides that “the Director may … restrict or rectify with respect to the register the registration of a registered mark….” 15 U.S.C. § 1068. This Section “gives the Board the equitable power to, inter alia, restrict the goods or services identified in an application or registration.” Embarcadero Technologies, Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1828 (TTAB 2013) (internal punctuation omitted).

A party seeking to restrict a registrant’s broadly worded identification of goods under Section 18 must plead and prove “(1) that the registrant is not using its mark on goods or services that would be excluded by the limitation, and (2) that the limitation would result in the avoidance of a finding of a likelihood of confusion.” Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478, 1479 (TTAB 1998) (citing Eurostar Inc. v. “Euro-Star” Reitmoden GmbH & Co., 34 USPQ2d 1266, 1271 (TTAB 1994)); TBMP § 309.03(d).

Respondent’s Use: The Board found, based on respondent’s discovery responses and statements in its brief, that respondent uses its mark only for two-way radio communication devices. As to the proposed restriction of the classes of customers to the public safety, tactical, security and hospital industries, as well as airsoft and paintball hobbyists, the Board declined to decide whether respondent’s use was so limited because, in any case, those restrictions would not avoid a likelihood of confusion.

Likelihood of Confusion?: Turning to the second prong of the Section 18 determination, the Board (not surprisingly) found that the wording “CODE RED” is the dominant element of Respondent’s mark and the design element in Respondent’s mark is not sufficient to distinguish the two marks. “If anything, Respondent’s logo reinforces the literal part of the mark, suggesting that the helmeted man in silhouette is prepared for a ‘code red’ situation.” In short, the Board found the marks to be “extremely similar.”

As to the respective goods, the Board agreed with petitioner that “[t]he Class number ‘is wholly irrelevant to the issue of registrability under section 1052(d), which makes no reference to classification.'” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018).  The Board also agreed that “Respondent’s actual goods are two-way radio communication devices. Petitioner’s goods consist, essentially, of flashlights and other portable lighting products such as headlamps and tactical flashlights, as well as parts and accessories therefor.”

The Board, however, found that even with the restrictions proposed by petitioner, the parties’ goods are sufficiently related (complementary) that a likelihood of confusion exists: “the purchasing public could easily perceive goods bearing the parties’ marks as related product lines from the same source.” The Board pointed out once again that “[t]he issue is not whether the goods will be confused with each other, but rather whether the public will be confused as to their source.”

The proposed restriction of Respondent’s batteries and communications devices for use in industries that include public safety, tactical, and security make apparent that the settings for use of Respondent’s goods often also would necessitate the use of flashlights, headlamps, or lanterns. Petitioner’s “headlamps” could complement Respondent’s “headsets”. Petitioner’s “tactical flashlights” could provide illumination for persons wearing Respondent’s headsets.

As to the restriction regarding classes of consumers, petitioner’s evidence suggested where respondent focused its advertising, “but does not prove that Petitioner’s proposed restriction reflects the full extent of Respondent’s actual client base.” The Board instead found that respondent’s customers include any businesses, governmental entities, associations, groups or individuals who may wish to purchase goods for two-way radio communication devices. Moreover, even if the classes were restricted as petitioner proposed, that would still not avoid confusion. For example, “[a] property manager seeking to equip his night watchmen or security guards with two-way radio communications headsets and other devices could also equip them with Petitioner’s headlamps, tactical flashlights, or other portable lighting products.”

Assuming arguendo that respondent’s customers are sophisticated, they could still believe that the involved goods came from the same source. “[E]ven careful purchasers who do notice the difference in the marks will not ascribe it to differences in the source of the goods, but will see the marks as variations of each other, pointing to a single source.” In re ICoat Co., LLC, 126 USPQ2d 1730, 1739 (TTAB 2018).

Conclusion: Petitioner failed to carry its burden of proof to show that the proposed restriction would negate a likelihood of confusion, and so the Board denied the Section petition.

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TTABlogger comment: Red card shown to petitioner. It’s not easy to justify a Section 18 restriction.

Text Copyright John L. Welch 2020.