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LLC, Cancellation No. 92066817 (April 28, 2020) [not
precedential] (Opinion by Judge David K. Heasley).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."
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.
Article originally published on 30 April 2020
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