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HQ 450180


August 24, 1990

TRA CO:R:P IPR 450180 TPT

CATEGORY: TRADEMARKS

District Director of Customs
P.O. Box 3130
Laredo, Texas 78041-3130

RE: Suspected infringement of the trademark "BRITISH KNIGHTS", Patent and Trademark Office Reg. No. 1,324,699 and Customs Recordation Issuance No. 88-019.

Dear Sir:

This is in response to a July 11, 1990, request for a Headquarters ruling forwarded by Import Specialist John Amaya concerning a shipment of shoes suspected of bearing infringing trademarks.

FACTS:

Customs detained a shipment of sports footwear imported from Mexico on July 10, 1990, for suspicion of bearing counterfeit or confusingly similar trademarks. Customs officers found that the shipment of footwear consisted of the suspected marks on the footwear and on the boxes for the footwear. Customs officers contacted the trademark owner's legal counsel and were informed that there was no authorized manufacturer in Mexico for its trademarked goods. Additionally, Customs was informed that the trademark owner was engaged in its own investigation of the unauthorized use of the trademark in Mexico. The trademark owner's representative provided Customs with the name of the suspected Mexican manufacturer. The unauthorized manufacturer's name matched the name appearing on the invoice for the imported goods.

ISSUE:

Whether sports footwear and its packaging which bears the marks "BRITISH KNIGHTS," "BRITISH NIGHTS," or "BRITISH HIGHTS" infringe the registered and recorded mark "BRITISH KNIGHTS"?

LAW AND ANALYSIS:

Title 19, U.S.C., section 1526(e), prohibits the importation of articles bearing a counterfeit trademark. Counterfeit marks are spurious marks that are identical with or substantially 2
indistinguishable from the registered trademark. 15 U.S.C. 1127; 19 C.F.R. 133.23a(a). Title 15, U.S.C., section 1124, denies entry to articles bearing trademarks which copy or simulate registered trademarks recorded with Customs for import protection pursuant to Part 133 of the Customs Regulations (19 C.F.R. Part 133).

The test for trademark infringement is whether the use of the suspected mark is likely to cause confusion, or to cause mistake, or to deceive. See 15 U.S.C. 1114. Also, the test is to determine whether the suspected mark is a counterfeit mark which is identical or substantially indistinguishable from the registered mark.

First, we note that the registered and recorded mark is the words "BRITISH KNIGHTS". Shoe boxes were imported bearing these words on the them. Both the registered and recorded mark and the mark appearing on the boxes are in simple block letters. The registered and recorded mark shows the words in upper case letters and so too are the letters on the boxes. Therefore, as to those imported articles bearing the words "BRITISH KNIGHTS", we conclude that they bear counterfeit marks and should be seized and forfeited in accordance with 19 U.S.C. 1526(e).

Next, the shipment also included shoes bearing the words "BRITISH NIGHTS". When comparing the registered and recorded mark with the suspected mark, the comparison must be of the overall impression created by the mark. Aveda Corporation v. Evita Marketing, Inc., 706 F. Supp. 1419, 1429 (D. Minn. 1989)(quotation omitted). Here, we conclude that the suspected mark is substantially indistinguishable from the registered and recorded mark. The lack of the letter "K" removes only one letter from the overall appearance of the mark, but leaves 13 letters identical to the registered and recorded mark. Additionally, it is significant that even without the letter "K" the sound of the two marks remains identical. Sounds of marks are an element in the determination of similarity of marks. See generally Id. at 1428. Therefore, we conclude that the articles bearing "BRITISH NIGHTS" are substantially indistinguishable from the recorded trademark and should be seized and forfeited in accordance with 19 U.S.C. 1526(e).

Finally, we have examined the articles bearing the words "BRITISH HIGHTS". Compared phonetically the two marks have the same number of syllables and the same stress pattern. The overall appearance remains similar to the recorded mark, but is not as similar as the two marks discussed above. However, since this mark still appears on the same type of product, footwear, and has a very similar sound as the protected mark we conclude that the mark is a confusingly similar mark. Aveda at 1430; see G.D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385 (7th Cir. 1959), cert. denied, 361 U.S. 819 (1959). Therefore, the articles which bear the mark "BRITISH HIGHTS" should be seized under 19 U.S.C. 1595a(c) as an 3
importation contrary to law, a violation of 15 U.S.C. 1124.

HOLDING:

The articles bearing the mark "BRITISH KNIGHTS" or "BRITISH NIGHTS" are counterfeit marks since they are identical to or substantially indistinguishable from the registered and recorded trademark and should be seized in pursuant to 19 U.S.C. 1526(e) and 19 C.F.R. 133.23a(a). The articles bearing the mark "BRITISH HIGHTS" are confusingly similar to the registered and recorded mark and should be seized pursuant to 19 U.S.C. 1595a(c) for a violation of 15 U.S.C. 1124.

Sincerely,

John F. Atwood, Chief

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