HQ 0450130 - Trademark Protection Extended Beyond Specific Articles on Registration; Recordation of Trademarks not Registered with the Patent and Trademark Office - United States International Trade Commision Rulings

United States International Trade Commision Rulings And Harmonized Tariff Schedule

faqs.org Rulings By Number Rulings By Category Tariff Numbers

faqs.org > Rulings and Tariffs Home > Rulings By Number > 1993 HQ Rulings > HQ 0224025 - HQ 0450288 > HQ 0450130

HQ 450130

July 19, 1990

TRA CO:R:P IPR 450130 TPT

CATEGORY: TRADEMARKS

Donald W. Canady, Esq.
11300 Sorrento Valley Road
Suite 200
San Diego, California 92121

RE: Trademark Protection Extended Beyond Specific Articles on Registration; Recordation of Trademarks not Registered with the Patent and Trademark Office

Dear Mr. Canady:

This is in response to your letter dated June 4, 1990. In your letter you have requested Customs's position on the scope of protection for a trademark registered with the Patent and Trademark Office (PTO) and recorded with Customs and Customs's position as to whether a non-registered trademark may be recorded with Customs.

FACTS:

The particular trademark referenced in your letter covers goods of three different classes, truck parts, clothing, and toys according to the PTO registration certificate. The trademark covering these classes of goods is presently recorded with Customs.

ISSUES:

Whether Customs will protect the trademark owner against imported articles bearing the subject trademark on articles not specifically listed on the PTO registration certificate and whether the trademark owner may record its trademark with Customs without first registering with the PTO.

LAW AND ANALYSIS:

The specific goods for which a trademark is registered and the classification of the goods for the convenience of the Patent and Trademark Office are not means by which an applicant's or registrant's rights are to be limited or extended. 15 U.S.C. 1112; see also 37 C.F.R. 2.85(g) (Classification schedules shall not limit or extend the applicant's rights).

2

In regard to the specific trademark referenced in your letter, the registrations specifically list truck parts, clothing apparel (shirts, sweaters, jackets, and hats), and toys (toy trucks, scale models, and kits for toy trucks). Since section 1112 explicitly states that the registration is not to limit or extend the rights of the trademark owner, protection may extend beyond the specific goods listed on the registration certificate.

Whether protection will be granted to goods not specifically listed requires an inquiry into whether the public is likely to be confused by the use of the trademark. See Hindu Incense v. Meadows, 692 F.2d 1048, 1050 (6th Cir. 1982). The test for whether a trademark has been infringed is to determine if there is a likelihood of confusion, not the classes for which the trademark is registered. 15 U.S.C. 1114; see also Valmor Products Company v. Standard Products Corporation, 464 F.2d 200, 202 n.2 (1st Cir. 1972). The "related goods" doctrine will be applied in order to give protection against use on related goods not specified on the regtistration certificate. Hindu at 1051. Therefore, if goods not specifically on the registration certificate are imported bearing the subject trademark, Customs will apply the likelihood of confusion test (provided that it is an unauthorized or prohibited importation).

In providing protection of the subject trademark, Customs will follow the law as discussed above. In each case, a determination of likelihood of confusion is a finding of fact to be decided based upon specific circumstances. Id. at 1051. Absent a specific Customs transaction we decline to offer any opinion as to the actual breadth of protection Customs will grant to the trademark in question.

Turning to your second question regarding the recordation of trademarks without first registering the mark at the PTO, Customs looks to the appropriate governing statutes and regulations. Trademarks with current registrations are eligible for recordation with Customs, 19 C.F.R. 133.1, if the registration is on the Principal Register at the PTO. 15 U.S.C. 1096. Further, the application for recordation must include a copy of the certificate of registration with the PTO. 19 C.F.R. 133.3. Finally, we point out that, as to counterfeit trademarks, the governing statute, 19 U.S.C. 1526, refers to trademarks registered with the PTO and that 15 U.S.C. 1124, dealing with simulating marks, also refers to marks which copy or simulate a registered mark.

HOLDING:

Customs protection of registered and recorded trademarks is not limited by the specific goods listed on a registration certificate. Customs generally adheres to the "related goods"

3
doctrine and applies the test of likelihood of confusion in accordance with 15 U.S.C. 1114. The recordation of a trademark is conditioned upon the submission of documents establishing that the trademark is registered with the Patent and Trademark Office.

Sincerely,

John F. Atwood, Chief
Intellectual Property Rights

Previous Ruling Next Ruling