HQ 0451915 - Suspected infringement of R.D. Werner trademark on ladders (Registration No. 1,016,147; Customs Recordation Issuance No. 91- 00079) - United States International Trade Commision Rulings

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HQ 451915

October 10,1991

TRA CO:R:IT:I 451915 TPT

CATEGORY: TRADEMARKS

District Director of Customs
Lincoln Juarez Bridge, Bldg. 2
P.O. Box 3130
Laredo, Texas 78044-3130

RE: Suspected infringement of R.D. Werner trademark on ladders (Registration No. 1,016,147; Customs Recordation Issuance No. 91- 00079)

Dear Sir:

This is in response to a facsimile request dated September 13, 1991, wherein the Intellectual Property Rights Branch was asked to provide an opinion on the issue of trademark infringement regarding a shipment of ladders bearing the above referenced trademark.

ISSUE:

Whether the imported ladders, bearing a label which incorporates the registered and recorded trademark with accompanying words, infringes the trademark referenced above.

LAW AND ANALYSIS:

Under the Trademark Laws a certificate of registration issued by the U.S. Patent and Trademark Office (PTO) shall be prima facie evidence of the validity of a registered mark. 15 U.S.C. 1057(b). Section 1526(e) of the Customs Laws (19 U.S.C. 1526(e)) prohibits the importation of articles bearing a counterfeit trademark. Counterfeit marks are spurious marks that are identical with or substantially indistinguishable from the registered trademark. 15 U.S.C. 1127; 19 C.F.R. 133.23a(a). The Trademark Laws deny entry to articles bearing trademarks which copy or simulate registered trademarks (15 U.S.C. 1124) 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 2
which is identical or substantially indistinguishable from the registered mark.

In the instant matter R.D. Werner has a trademark registered with the PTO and recorded with U.S. Customs. The mark consists of a circle with two horizontal, parallel lines within the circle. Two five pointed stars are located at opposite ends within the parallel lines.

The labels affixed to the imported ladders incorporate this trademark. The labels bearing the registered and recorded mark differ in that within the circle words have been added. In the top half of the circle above the parallel lines the words "Manufacturer certifies conformance to" appear. Within the parallel lines and between the five pointed stars in bold letters, are the letters "OSHA." In the bottom portion of the circle below the parallel lines the words "ANSI code for Fiberglass Ladders" appear.

It has long been established that the addition of words to a trademark does not preclude the finding of infringement. See Menendez v. Holt, 128 U.S. 514 (1888) (appellant's name accompanied the trademarked words and the Court stated that such use is an aggravation and not a justification); A.T. Cross Company v. Jonathan Bradley Pens, Inc., 470 F.2d 689 (2d Cir. 1972) (addition of words does not save the day).

The importer states that this is the mark within which the manufacturer certifies conformance to OSHA and ASNI standards. It further states that it is prepared to obliterate the existing label by placing a new label over the existing label. Upon relabelling, the importer asserts that the shipment should be released pursuant to section 133.21(c)(4) of the Customs regulations.

Further, the importer argues that release of the merchandise after relabelling is available to it because the mark on the existing labels is not a counterfeit. It argues that the mark incorporated in the label is not an identical mark as defined in section 133.21(b) of the Customs regulations nor a copying or simulating mark as defined in section 133.21(a). The importer argues that because its name "Cuprum" appears on the label, a consumer would not associate the ladders with R.D. Werner.

The appearance of the name "Cuprum" on the label does not justify the use of a registered and recorded trademark. See Menendez, 128 U.S. at 521; A.T. Cross Company, 470 F.2d at 692. In reaching a determination that the imported ladders infringe the registered and recorded trademark, it is not necessary for us to engage in an actual finding of confusion. The Keds Corporation v. Renee International Trading Corp., 888 F.2d 215, 3

218 (1st Cir. 1989). When comparing the registered and recorded mark to the mark on the labels of the imported ladders, devoid of the additional words, the only difference one can detect is that the mark on the labels shows the parallel lines as centered within the circle while the protected mark shows the lines slightly off center toward the top.

The use of the mark on the importer's label is substantially indistinguishable from the registered and recorded trademark. Therefore, in accordance with section 1526(e) (19 U.S.C. 1526(e)) and section 1127 (15 U.S.C. 1127), a substantially indistinguishable mark is a counterfeit mark subject to seizure.

Section 1526 provides for specific dispositions of the merchandise when it is found to be counterfeit. Release to the importer after obliteration is not among the possible dispositions as requested by the importer.

HOLDING:

We find that the ladders bearing the labels which incorporate the registered and recorded mark are subject to seizure under 19 U.S.C. 1526(e) and the importer shall not be permitted to relabel the merchandise for the purpose of release of the goods. Final disposition of the merchandise should be in accordance with section 1526(e)(1)-(4) and 19 C.F.R.

Sincerely,

John F. Atwood, Chief

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