Likelihood of Confusion - Section 18 Modification/Restriction to Avoid Likelihood of Confusion



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  • Definition: Modification or restriction provisions of Section 18.
    • Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha t/a/ Toyota Motor Corporation, Opposition No. 152,062, (TTAB 2003).
      • In Eurostar, the Board held that the modification or restriction provisions of Section 18 are in the nature of an equitable remedy; that for a plaintiff to prevail on a request for modification of an application or restriction of a registration, in a case involving likelihood of confusion, the party must plead and prove that (i) entry of the proposed restriction to the identification would avoid a finding of likelihood of confusion, and (ii) its opponent is not using the mark on goods/services sought to be excluded by the restriction; and that the request for restriction need not be tied to a ground for opposition or cancellation. Cf. also, Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478 (TTAB 1998), wherein the Board held that the restriction provisions of Section 18 could be utilized to seek restriction of an assertedly ambiguous description of the mark; and Chapman v. Mill Valley Cotton, 17 USPQ2d 1815 (TTAB 1990), wherein the Board held that Section 18 allows consideration of a claim regarding what person or entity is entitled to register a mark.
  • Case Finding: Opposer failed to properly invoke Section 18 provisions.
    • Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha t/a/ Toyota Motor Corporation, Opposition No. 152,062, (TTAB 2003).
      • We do not see in opposer's pleading any proper invocation of the provisions of Section 18 that allow for modification of an application to avoid a finding of likelihood of confusion, or the provisions that allow the Board to determine what person or entity is entitled to register the mark in the involved application.
  • A petitioner must plead that the proposed restriction will avoid a likelihood of confusion and that respondent is not using the mark on the goods or services being deleted or "effectively excluded" from the registration.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • In Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co., 34 USPQ2d 1266, 1271 (TTAB 1994) ("Eurostar"), the Board set forth the elements for stating a proper claim for partial cancellation or restriction of a registration under Section 18. A petitioner must plead that the proposed restriction will avoid a likelihood of confusion and that respondent is not using the mark on the goods or services being deleted or "effectively excluded" from the registration. Id.
  • Case Finding: Example an allegation of an acceptable proposed restriction with exclusionary language that would be logically encompassed within the scope of the original recitation of services, and would provide sufficient notice to respondent for pleading purposes.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • In this particular case, an example of an allegation of an acceptable proposed restriction would be "consulting services in the field of health offered to employers excluding consulting services in the field of dietary supplements."5 This is because the suggested exclusionary language would be logically encompassed within the scope of the original recitation of services, and would provide sufficient notice to respondent for pleading purposes. FOOTNOTE 5 "Although we have given an example of a possible amendment, we clearly defer until trial a substantive decision about whether any particular language obviates a likelihood of confusion."
  • Case Finding: Petitioner has satisfied the requirements set forth in Eurostar by pleading that the proposed restriction would serve to avoid any likelihood of confusion with respect to petitioner's applied-for marks for "dietary supplements," and that respondent has not used its registered mark on the "services" which would be excluded from the registration.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • Petitioner has satisfied the requirements set forth in Eurostar by pleading that the proposed restriction would serve to avoid any likelihood of confusion with respect to petitioner's applied-for marks for "dietary supplements," and that respondent has not used its registered mark on the "services" which would be excluded from the registration.
  • Case Finding: Petitioner, by its proposed restriction, effectively seeks to exclude goods (dietary supplements) that are not encompassed within the scope of a registration that only includes services. As such, petitioner's allegation fails to comply with the rule regarding amendments to a recitation of services.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • Trademark Rule 2.71(a) provides that an amendment to the recitation of services must "clarify or limit, but not . . . broaden" the recitation of services. Petitioner, by its proposed restriction, effectively seeks to exclude goods (dietary supplements) that are not encompassed within the scope of a registration that only includes services. As such, petitioner's allegation fails to comply with the rule regarding amendments to a recitation of services.
  • Case Finding: Petitioner's proposed restriction is deficient, because the sale of a good does not constitute a "service" within the meaning of Section 45 of the Trademark Act and therefore is not encompassed in the recitation "consulting services in the field of health."
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • However, petitioner's proposed restriction is deficient, because the sale of a good (i.e. the provision of dietary supplements) does not constitute a "service" within the meaning of Section 45 of the Trademark Act4 and therefore is not encompassed in the recitation "consulting services in the field of health."
  • For pleading purposes, a Section 18 claim or defense must be specific enough in nature so that the adverse party has fair notice of the restriction being sought.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • For pleading purposes, a Section 18 claim or defense must be specific enough in nature so that the adverse party has fair notice of the restriction being sought. Id. See also, ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351, 1353-54 (TTAB 2007)(applicant had failed to state with precision how restriction of its own application would aid in avoidance of confusion), and Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286-87 (TTAB 1998)(applicant's counterclaim for partial cancellation found at final hearing insufficient to avoid confusion, and alternative restriction raised for first time during briefing rejected as untimely).
  • However, the TTAB recognized that an overbroad statement of an identification of goods or recitation of services, within the context of likelihood of confusion, constituted a valid basis for bringing a partial cancellation action under Section 18.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • However, the Board recognized that an overbroad statement of an identification of goods or recitation of services, within the context of likelihood of confusion, constituted a valid basis for bringing a partial cancellation action under Section 18.
  • In a likelihood of confusion case, the TTAB should not exercise its authority under Section 18 to permit an action to restrict an application or registration where such a restriction is divorced from the question of likelihood of confusion.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • As the Board stated, "we believe that, in a case involving likelihood of confusion, we should not exercise our authority under Section 18 to permit an action to restrict an application or registration where such a restriction is divorced from the question of likelihood of confusion." Eurostar, supra, at 1271.
  • On ex parte review, the following criteria are applied for determining whether an activity constitutes a service: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant's goods or the performance of another service.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • FOOTNOTE 4 "On ex parte review, the following criteria are applied for determining whether an activity constitutes a service: (1) a service must be a real activity; (2) a service must be performed to the order of, or for the benefit of, someone other than the applicant; and (3) the activity performed must be qualitatively different from anything necessarily done in connection with the sale of the applicant's goods or the performance of another service. In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985); In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984); In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983); In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979). Because the sale of one's own product does not inure to the benefit of others, it does not constitute a service within the meaning of the Act. C.f. In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970)."
  • Section 18 of the Lanham Act gives the TTAB the equitable power to cancel registrations in whole or in part, restrict the goods or services identified in an application or registration, or to otherwise restrict or rectify the registration of a registered mark.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • Section 18 of the Lanham Act gives the Board the equitable power to cancel registrations in whole or in part, "restrict the goods or services identified in an application or registration," or to "otherwise restrict or rectify . . . the registration of a registered mark." 15 U.S.C. Section 1068; Trademark Rule 2.133(b); see also TBMP Section 309.03(d) (2d ed. rev. 2004) and cases cited therein.
  • Section 18 provides an avenue of relief for a party, for example, who faces a cited registration with the no longer permitted identification of goods computer programs, and believes that a restriction may serve to avoid a likelihood of confusion.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • Section 18 provides an avenue of relief for a party, for example, who faces a cited registration with the no longer permitted identification of goods "computer programs," and believes that a restriction may serve to avoid a likelihood of confusion.
  • The TTAB has encouraged parties, such as the petitioner in this case, whose applications have been refused registration under Section 2(d) based on a broad identification of goods or recitation of services to seek a restriction of the cited registration under Section 18.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • Indeed, the Board has encouraged parties, such as the petitioner in this case, whose applications have been refused registration under Section 2(d) based on a broad identification of goods or recitation of services to seek a restriction of the cited registration under Section 18. See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000) ("While we are sympathetic to applicant's concern about the scope of protection being given to the cited registrations, applicant is not without remedies . . . Applicant may, of course, seek a consent from the owner of the cited registrations, or applicant may seek a restriction under Section 18 of the Trademark Act, 15 USC §1068.").
  • The underlying intent of Eurostar was to overrule prior case law that did not require a pleading of likelihood of confusion to state a proper claim for partial cancellation under Section 18.
    • IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009)
      • We further find misguided respondent's contention that petitioner's request for partial cancellation is frivolous and harassing under the parameters set forth in Eurostar. Respondent's reading of Eurostar is overly constrained and reflects a misunderstanding of the standards established in that case. The underlying intent of Eurostar was to overrule prior case law that did not require a pleading of likelihood of confusion to state a proper claim for partial cancellation under Section 18...Clearly, in this case, petitioner's proposed restriction to respondent's registration does have a bearing on the issue of likelihood of confusion with petitioner's pleaded applications, and therefore cannot be viewed as a frivolous or harassing legal maneuver.
IdeasOne, Inc. v. Nationwide Better Health, Inc., Cancellation No. 92049636 (TTAB 2009) Seculus Da Amazonia S/A v. Toyota Jidosha Kabushiki Kaisha t/a/ Toyota Motor Corporation, Opposition No. 152,062, (TTAB 2003) Grand Total
ProQuest Information and Learning Co. v. Island, 83 USPQ2d 1351 (TTAB 2007) 1
In re N.A.D. Inc., 57 USPQ2d 1872 (TTAB 2000) 1
Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478 (TTAB 1998) 1
Eurostar Inc. v. "Euro-Star" Reitmoden GmbH & Co., 34 USPQ2d 1266 (TTAB 1994) 2 3
Chapman v. Mill Valley Cotton, 17 USPQ2d 1815 (TTAB 1990) 1
In re Canadian Pacific Limited, 754 F.2d 992, 224 USPQ 971 (Fed. Cir. 1985) 1
In re Betz Paperchem, Inc., 222 USPQ 89 (TTAB 1984) 1
In re Integrated Resources, Inc., 218 USPQ 829 (TTAB 1983) 1
In re Landmark Communications, Inc., 204 USPQ 692 (TTAB 1979) 1
In re Reichhold Chemicals, Inc., 167 USPQ 376 (TTAB 1970) 1
Grand Total 9 3 12
No Statutes Listed.