HQ 0454063 - Suspected infringement of registered and recorded GM trademark - United States International Trade Commision Rulings

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HQ 454063

April 13, 1993

TRA CO:R:IT:I 454063 TPT

CATEGORY: TRADEMARKS

Office of the Regional Counsel
U.S. Customs
ATTN: Karen A. Kuhn
1 World Trade Center
Suite 741
Long Beach, CA 90831

RE: Suspected infringement of registered and recorded GM trademark

Dear Ms. Kuhn:

This is in response to a case file forwarded to this Branch from you wherein an importer requests that we reconsider an initial determination of infringement.

FACTS:

A shipment of key caps were imported bearing the word and letters "FOR GM." The word "FOR" appears above the letters "GM" and the lettering of the word "FOR" is approximately a quarter of the size of the letters "GM." Based upon a suspicion of trademark infringement, a sample was sent to the IPR Branch. The IPR Branch rendered an initial advisory determination of trademark infringement dated February 25, 1992 (452656), to the office of the Regional Counsel.

The file of importer's arguments is now before us with a request to reconsider our February 25, 1992 advisory decision.

ISSUE:

Whether the use of the word "FOR" in conjunction with the trademarked letters "GM" results in a permissive use of the the trademark.

LAW AND ANALYSIS:

Under the Trademark Laws a certificate of registration issued by the U.S. Patent and Trademark Office 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). General Motors "GM" trademarks are recorded with the Customs Service (Recordation Numbers 89-00604, 90-00004, 90- 00354, 91-00398, and 91-00399).

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.

The importer argues that it is not unlawful to use another's mark as long as it does not create confusion as to origin of the product. As to this proposition, we would agree and have confirmed that the cited cases also state a similar proposition of law. See Selchow & Righter Company v. Decipher, Inc., 598 F. Supp. 1489, 1501 (E.D. Va. 1984) ("a competitor may use the trademark of another to describe aspects of its own goods. . .."). However, it should be noted that the defendant in Selchow was found to have overstepped the bounds of permissible use of another's trademark because the trademark was used to sell its own product rather than describing aspects of its product. Id. at 1503. In the instant matter, the way GM appears on the key caps leads us to conclude that the use was to increase the selling power of the importers product.

The importer further cites Cuisinarts, Inc. v. Robot-Coupe International Corporation, 580 F. Supp. 634 (S.D.N.Y. 1984), for the proposition that the use of another's trademark may not infringe, so long as misrepresentations are not made. Id. at 637. Again, we agree that such a proposition exists. However, the facts of that case differ from the instant matter in that the case involved two advertisements; the first ad was "It Used To Be Pronounced Cuisinart" and the other was "Robot-Coupe 21/Cuisinart 0." Id. Despite the court's statement of this proposition, it did find both ads to be misleading. Id.

The importer also cites as support for non-infringing use a Customs decision (C.S.D. 89-17, 1988). In that case Customs found no infringement of the Nintendo trademark. In fact, this decision found that, in accordance with the propositions stated by the courts in the cases cited above, the use of Nintendo did not overstep the permissible bounds of non-infringing use. We point out that the facts differ in the instant matter. The opinion in C.S.D. 89-17 states that the packaging of the suspected item used the word Nintendo, but that Nintendo was not used in a predominant fashion and that in some instances other words appeared two or three times larger than the word Nintendo. In the instant matter, the letters GM are predominant and are several times larger than the word FOR on the key caps. Further, on the packaging the bold lettering highlights the words "FIND YOUR GM KEYS QUICKLY."

The importer further asserts the mark appearing on the key caps is not a counterfeit mark and cites to Customs decision C.S.D. 80-77 (which found that "Bolivia" appearing on a watch infringed the registered trademark "Bulova"). A counterfeit mark is one which is identical to or substantially indistinguishable from the registered mark. 15 U.S.C. 1127. The mark on the imported item bears the letters GM in capital letters. The registered marks are in capital letters and the letters are underlined. The difference is in the appearance of the word "FOR" appearing above the GM and the lack of the underline. As discussed above, the word "FOR" is substantially smaller on the key caps than the "GM."

It is our opinion that the addition of the word "FOR" on the article is not used for advertising purposes, but may reinforce the association with General Motors, the owner of the registered and recorded trademark. Furthermore, the fact that the article bears the letters GM in such a predominant manner weighs against the importer. It is an accepted axiom that greater force and effect is given to the dominant feature of a mark. Giant Food Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir. 1983); Blumenfeld Development Corporation v. Carnival Cruise Lines, Inc., 669 F. Supp. 1297, 1320 (E.D. Pa. 1987).

HOLDING:

Based upon the foregoing, we find that the mark as applied to the imported key caps is substantially indistinguishable from the registered and recorded trademark. Therefore, these imported items are subject to seizure under 19 U.S.C. 1526(e).

Sincerely,

John F. Atwood, Chief

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