On January 17, 2014, the USPTO Trademark Trial and Appeal Board (TTAB) issued a decision in Covidien LP v. Masimo Corporation, denying Masimo’s motion to dismiss Covidien’s petition under Section 18 of the Lanham Act (15 U.S.C. § 1068) to restrict the description of Masimo’s color mark for certain medical devices to the particular shade of red Masimo actually uses (Serial No. 92057336 (T.T.A.B. Jan. 17, 2014)).

Masimo owns a registration on the Supplemental Register for the color red for "medical devices, namely patient monitoring sensor and cables." In light of Masimo’s registration, the US Patent and Trademark Office (USPTO) refused Covidien’s application to register a specific shade of pink for certain medical devices and supplies under Section 2(d) based on a likelihood of confusion. Covidien then filed its Section 18 petition for partial cancellation or restriction of Masimo's registration, arguing that limiting the registration to a specific shade of red would avoid a finding of likelihood of confusion between the two marks.

Masimo moved to dismiss Covidien’s petition for failure to state a claim under FRCP 12(b)(6). Relying on the TTAB’s decision in The Wellcome Foundation Limited. v. Merck & Co., Inc., it argued that to state a claim, Covidien must allege in part that the description of the mark in the registration is ambiguous or overly broad ((Serial No. 26,657, (T.T.A.B. April 14, 1998)).

The TTAB denied Masimo's motion, rejecting Masimo’s argument for a narrow reading of the pleading requirements for a Section 18 claim, finding that an allegation that the existing description of the mark is ambiguous or overly broad is not the only allegation that can form a sufficient pleading under Section 18. It concluded that Section 18 allows for relief where a party alleges that a feature of the description of the mark makes the description not specific to the mark actually used by the defendant.

However, the TTAB did find that Covidien's request to limit the shade of red solely by reference to the commercial Pantone coloring system failed to comply with Trademark Rule 2.52(b)(1) requiring a color mark be described in ordinary language, and requested that Covidien submit an amended petition complying with the Rule.

The TTAB's original decision in this matter was non-precedential, but the TTAB redesignated it as precedential through an Order issued on February 13, 2014.