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Shades of Green: TTAB Allows Registration of Color Mark

While studies show that each individual sees color differently, the Trademark Trial and Appeal Board (TTAB) determined that as used on medical gloves, a shade of light green is not confusingly similar to a shade of dark green. In a black-and-white decision, the TTAB reversed a Trademark Examining Attorney’s refusal to register the color green identified as Pantone 2274C as used on medical gloves in light of an existing registration for the color green identified as Pantone 7488U used on the same line of goods.

The Gloves Are Greener on the Other Side

In November of 2019, Medline Industries, a leading manufacturer of medical gloves, submitted a request to register the color of their green gloves, Pantone 2274C, on the United States Patent and Trademark Office’s Supplemental Register. This is the list for trademarks that are not yet eligible to be listed on the Principal Register, but may be one day. The Trademark Examining Attorney, however, rejected Medline Industries’ application. The rejection was based on Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), which restricts granting trademarks based on the probability of confusion with another mark.

After its examination, the Trademark Examining Attorney did not find sufficient distinction between the desired trademark color, Pantone 2274C and the shade used by Avent, Inc., Pantone 7488U, which is listed on the Supplemental Register for “gloves for medical use” and “protective gloves for medical use.”

Medline Industries, Pantone 2274C

Avent, Inc., Pantone 7488U

Feeling strongly that this issue was unlikely to be a source of confusion, Medline Industries appealed. Medline contended that “[w]hile certain shades of green may be sufficiently similar to cause confusion, Pantone 2274C and Pantone 7488U are not.” Pantone 2274C “is a light, pale green,” while Registrant’s shade “is significantly darker and brighter.” As such, consumers were unlikely to be confused between the two different brands.

Your Green Is Not My Green

Although it is rarely straightforward to distill any legal decision down to just a few factors, the crucial elements of TTAB’s decision on the matter include the strength and similarity of the requested mark. TTAB ultimately decided in favor of the applicant, but it was not a cut-and-dry decision, with factors weighing in favor of a likelihood of confusion.

Strength of the Mark

When considering the level of protection a mark should receive, marks are separated into several categories, including fanciful (strongest), arbitrary, suggestive, descriptive, and generic (weakest). The more distinctive, arbitrary, and fanciful a mark is the stronger its protection under trademark law.

In In re Medline Industries, the manufacturer noted in their appeal that many shades of green medical gloves are available and that “[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 disagreed, contending there was no evidence that manufacturers or providers of said green gloves used the color as a distinguishing element.

On this factor, TTAB sided with the attorney, drawing case law for guidance. There has only been one case that has set precedence in the last 25 years on the issue of same-color trademarks, In re Cook Medical Technologies LLC, which provided precedence for refusing to register a mark in the field of medical products based on color similarity.

As that case demonstrated, “the existence of third-party marks” is germane, “not simply the presence in the marketplace of third-party goods bearing some shade of the color at issue.”

Similarity of Marks

Despite siding with the attorney on the strength of the mark, the issue of similarity played out differently. To establish similarity between marks, the marks should be compared in their entirety, from appearance to commercial impression.

On the matter of commercial impression, TTAB swung heavily in favor of Medline, evaluating the matter “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.”

In their application, Medline Industries cites the specific Pantone shade 7488U as their reference. The Examining Attorney’s response was that the “applied-for mark is the color green” and the “cited mark is the color green.” Accordingly, the applicant and registered mark should have used the ordinary language descriptor “green” because each mark is, simply put, a shade of green.

TTAB disagreed. The application and existing registration are both in color and refer to specific Pantone shades. Because the trademark colors have been specifically articulated, TTAB determined that it “cannot simply read one color claim to encompass the other claimed color, as in Cook Medical.”

As such, they leaned in favor of finding no likelihood of confusion concluding that the issue of similarity of the marks outweighed that of strength.

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About this Author

Gene Markin Attorney Stark & Stark Law Firm
Shareholder

Gene Markin is a Shareholder in Stark & Stark’s Complex Commercial, Intellectual Property, and Cannabis Litigation Groups where he concentrates his practice on complex litigation matters involving copyright protection and infringement, trademark and trade dress infringement and enforcement, trade secret litigation, false advertising, domain name disputes, unfair competition, class actions, fraud and consumer fraud, shareholder and partner disputes, breach of contract, cannabis business disputes, cannabis intellectual property matters, cannabis insurance coverage...

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