United States: Reversing Examining Attorney, TTAB Gives The Green Light To Color Mark Application

Displaying a sense of humor in reversing the refusal of an application for the color green for medical examinations gloves, the TTAB wryly noted that "[i]f this appeal were a movie, it would be entitled 'Fifty Shades of Green.'" Specifically, in In re Medline Industries, Inc., the TTAB reversed an Examining Attorney's refusal to register Applicant's mark on the Supplemental Register in the first precedential Board decision deciding the issue of likelihood of confusion between two single-color marks since In re Cook Medical Techs. LLC, 105 USPQ2d 1377, 1379 (TTAB 2012).

Applicant Medline Industries, Inc. sought registration on the Supplemental Register of "the color green (Pantone 2274C)" for "medical examination gloves" in International Class 10: 

But, it's not easy being green, and the Trademark Examining Attorney refused registration of Medline's application under Section 2(d) of the Trademark Act based on a likelihood of confusion with a registration on the Supplemental Register for "the color green Pantone 7488U" for "gloves for medical use" and "protective gloves for medical use" also in International Class 10:

On appeal, Medline argued that consumers are unlikely to be confused as to the source of its gloves and the gloves in the registration cited by the Examining Attorney because the two shades of green are noticeably different, there are medical gloves on the market in more than 40 different shades of green, and there are many additional shades of green occurring in nature. The TTAB considered the following DuPont factors most relevant in determining whether a likelihood of confusion exists in this case: (1) the similarity or dissimilarity and nature of the goods or services as described in the application; (2) the similarity or dissimilarity of established, likely-to-continue trade channels; (3) the number and nature of similar marks in use on similar goods; (4) the similarity or dissimilarity of the marks; and (5) established facts probative of the effect of use—in this case, third-party non-trademark uses of shades of green on medical gloves.

Applicant did not dispute that its "medical examination gloves" are legally identical to the "gloves for medical use" and "protective gloves for medical use" identified in the cited registration. Because the goods are identical, and there are no limitations in the identifications as to classes of consumers or channels of trade, the TTAB presumed that the classes of consumers and channels of trade are also identical. Having established the second and third DuPont factors, the TTAB determined that these factors strongly support a finding of a likelihood of confusion.

The TTAB then turned to the number and nature of similar marks in use on similar goods, considering Applicant's evidence consisting of a chart listing more than 40 different green medical gloves that it claims are currently available for purchase. Applicant explained that many of these third-party gloves are more similar in color to the mark in the cited registration than Applicant's mark, and further argued 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." (quoting the well-known treatise, McCarthy on Trademarks and Unfair Competition). Unpersuaded by this evidence, the TTAB held that in single-color cases, the sixth DuPont factor is "evidence of the existence of third-party marks, not simply the presence in the marketplace of third-party goods bearing some share of the color at issue" and cautioned that decorative or functional uses of a single-color should not necessarily be treated as evidence of a crowded field. The TTAB also determined that none of the third-party green medical gloves cited by Applicant are displayed in such a way that green is identified or designated as a mark, or will be perceived by consumers as a mark, thus holding that sixth DuPont factor was neutral.

But the TTAB did not completely disregard Applicant's evidence of third-party use. Under the thirteenth DuPont factor the TTAB may consider any other established fact probative of the effect of use.  Here, the TTAB determined that marks registered on the Supplemental Register, like the cited registration, are categorized as weak, and so third-party non-trademark uses of shades of green on medical gloves "impair the cited Supplemental Register mark's ability to acquire distinctiveness, and to limit its scope of protection if it did acquire distinctiveness." On this basis, the TTAB held that the evidence of third-party non-trademark use weighs against a likelihood of confusion.

Finally, the TTAB turned its attention to the issue of similarity of the marks, and, relying on Cook Medical, held that where the marks at issue are non-literal marks, such as color marks, "the similarity of the marks must be decided primarily on the basis of visual similarity" from the perspective of the average consumer. As set forth in In re Bay State Brewing Co., 117 USPQ2d 1958 (TTAB 2016), because the goods are legally identical, "the degree of similarity between the marks necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods." During prosecution, the Examining Attorney took the position that the cited registration bars the registration of all shades of green for medical gloves. Applicant disagreed, arguing that allowing the cited registration to bar registration of Applicant's shade on the Supplemental Register would result in color depletion in that "if one entity could claim the exclusive right to all shades of a particular color —based on a registration for one specific shade—competitors would quickly run out of options." The TTAB, relying on the descriptions of the cited mark and Applicant's mark—"the color green Pantone 7488U" and "the color green (Pantone 2274C)," respectively—determined that Applicant and Registrant each claimed rights limited to only their particular shade, not all shades, of green. The TTAB cautioned, however, that the test of infringement with respect to color marks, as set forth in Cook Medical, is not the distance between the marks on the Pantone scale, but whether "the reasonably prudent purchaser would be likely to be confused as to source, sponsorship, affiliation or approval." And considering the similarity of two color marks "is really nothing more than a subjective 'eyeball test'." Applying this approach, the TTAB determined that there are significant differences between the "bright, attention-grabbing hue" in the cited registration and Applicant's "subdued, pale shade" of green; these dissimilarities, according to the TTAB, strongly support a finding that confusion is not likely.

On balance, the TTAB held that there was no likelihood of confusion between two shades of green for medical gloves: "Against the backdrop of the use of multiple shades of green in connection with the subject goods, which suggests a narrow scope of protection for the registered Supplemental Register mark, the difference in the appearance of the respective claimed marks is significant enough to make confusion unlikely even though the involved shades of green are used on identical goods sold through identical channels of trade to identical customers."  And so, the application moved on to the greener pastures of the Supplemental Register.

The case is In re Medline Indus., Inc., 2020 USPQ2d 10237 (TTAB 2020).