Section 18 of the Trademark Act (15 U.S.C. §1068) provides a plaintiff with a basis to restrict or limit the goods or services in a registration based on grounds of likelihood of confusion. Section 18 applies to inter partes proceedings. It is unclear as to whether Section 18 would also apply in civil actions. A recent case coming out of the U.S. District Court for the Western District of Virginia held that Section 18 would not apply in court. Here, the court dismissed a counterclaim under Section 18, finding no legal basis for applying Section 18 to civil actions.
In Trademark Trial and Appeal Board (“Board”) proceedings, a plaintiff can seek to restrict the application to only certain goods or services or to limit the identification in a specific manner, by adding wording that identifies the goods or services with greater particularity in terms of type, use or channels of trade. This request can be made of registrations over five years old and of those less than five years old. The reason for this is because it is considered an equitable remedy. A plaintiff can seek to oppose or cancel a registration in whole or in part, see Trademark Manual of Examining Procedure §309.03(a)(1).
The plaintiff must plead and prove that (1) amending the identification to restrict the goods and services in the application or registration will avoid a finding of likelihood of confusion and (2) the opponent is not using its mark on those goods or services that will be excluded from the application or registration. See Eurostar Inc. v. Euro-Star Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1271 (TTAB 1994). A claim such as this falls under the provision that gives the Board authority to restrict or rectify the register. See IdeasOne Inc. v. Nationwide Better Health Inc., 89 USPQ2d 1952, (TTAB 2009)[precedential]; Wellcome Foundation Ltd. v. Merck & Co., 46 USPQ2d 1478 (TTAB 1998). To make this determination, the Board will look to see if the defendant is using the mark on the goods requested to be excluded as of the time the restriction is requested, (not as of the time the registration was sought). A plaintiff could plead that the description in the application or registration is ambiguous or overly broad and not specific to the mark actually used by the defendant, and that the limitation would obviate a determination of likelihood of confusion.
This claim must be asserted prior to trial to give the defendant fair notice. See our firm page entitled, Claims That Can Be Asserted In Opposition and Cancellation Proceedings, for more on the types of claims available in Board proceedings. Also, the plaintiff must allege specifics in the claim so the defendant is alerted to the specific restriction requested. Moreover, a defendant can assert an affirmative defense by moving to restrict its own goods or services in the application or registration to avoid a likelihood of confusion claim asserted by a plaintiff. See Embarcadero Technologies Inc. v. RStudio Inc. 105 USPQ2d 1825, 1828 (TTAB 2013) [precedential].
The Board has recognized that an overly broad statement of an identification of goods or services, within the context of likelihood of confusion, is a valid basis to bring a partial cancellation. See IdeasOne Inc. v. Nationwide Better Health Inc., supra. In fact, the Board has encouraged parties to seek this remedy when there is a 2(d) refusal based on a broad identification. The Board will be liberal in assisting parties who they believe are acting in a manner consistent with Board practice. For example, if the pleading does not properly allege a claim, the Board will allow the petitioner to amend the pleading.
It is Board practice to freely grant leave to amend pleadings if challenged under Federal Rule of Civil Procedure 12(b)(6) as insufficient. The Board has gone as far as to provide an example of how the recitation of services could read in order to restrict the services in compliance with the Trademark Manual of Examining Procedure. Id. Therefore, if you receive a likelihood of confusion refusal and the cited mark contains an overly broad identification of goods or services, please feel free to contact the firm for a courtesy consultation.