HQ 0734455 - Country of origin marking of a cosmetic line with a trademark of "Berlin JOOP!" which is imported from France; 19 CFR 134.47; application for trademark. - United States International Trade Commision Rulings

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HQ 734455

July 1, 1992

MAR-2-05 CO:R:C:V 734455 KR

CATEGORY: MARKING

Ms. Joni A. Laura
Graham & James
2000 M Street, N.W.
Suite 700
Washington, D.C. 20036-3113

RE: Country of origin marking of a cosmetic line with a trademark of "Berlin JOOP!" which is imported from France; 19 CFR 134.47; application for trademark.

Dear Ms. Laura:

This is in response to your letter dated December 19, 1991, requesting a country of origin marking ruling concerning a cosmetic line with a trademark of "Berlin JOOP!" which is imported from France. You submitted a photocopy of a sample box which will be used to package the cosmetics. You have also submitted an actual sample box to show what the box will look like and the print size. You submitted a photocopy of an application for trademark, filed with the U.S. Patent and Trademark Office date stamped January 10, 1992.

FACTS:

You state that Lancaster Group USA wishes to import cosmetic products manufactured by Parfums JOOP!. The cosmetics you wish to import are a new product line. The product line is called "Berlin JOOP!". In your ruling request dated December 19, 1991, you state that a trademark registration was already pending. However, the actual application for trademark registration with the Patent and Trademark Office is dated January 10, 1992. You state that the cosmetics will be imported in individual boxes of similar but not necessarily identical sizes. The boxes for each item will have markings which are identical in form, but the product-type name (i.e. "perfume" or "body cream"), ingredients and volume will be different.

On April 10, 1992, you sent Customs a list of the cosmetics you wish included in this ruling. These cosmetics are:

Perfumery, eau de toilette, soaps, bath and shower additives, sun protection and sun care antiperspirant, deodorants for personal use, cremes, powder, rouge, eyebrow pencil, eyeshadow, eyelash black, lipsticks, lotions, face lotions, face masks, articles for hair care, hair shampoo, depilatory, shaving creme, shaving foam, aftershave, skin cleaner, body lotion, nail enamel, and nail enamel remover.

On May 28, 1992, you sent Customs four pages of material concerning the creator/namesake of the "JOOP!" cosmetic line and his reasons for creating and naming the cosmetic line "BERLIN JOOP!".

In your ruling request you enclose a photocopy of a sample box showing where the markings on the box will be placed. In a meeting held January 10, 1992, you brought a sample box which you explained was not to be used for placement of the markings on the box, but instead to show the box dimensions, the print size and style.

The photocopy of the box, combined with the sizes and style from the sample box, shows the front and side panels of the box are 3 and 7/8 inches long x 3 and 3/8 inches high. The name "BERLIN" appears on the front panel of the box with a metallic silver or gold colored bar underlining it. "BERLIN" will appear in approximately 10 point print. (A point is approximately .01384 inch or 1/72 of an inch). Below this and centered on the panel will be the name "JOOP!". "JOOP!" will appear in approximately 32 point print. Along the bottom of the front panel will be the name of the product-type and the volume of the contents. These will appear in approximately 8 point print.

On the back panel of the box, in approximately 5 point print, the ingredients will be listed and below will appear the words:

DIST: LANCASTER__GROUP USA
NEW YORK, N.Y. 10022

Below this will appear a drawing/symbol. Below the symbol will be the words "PARFUMS JOOP!, in approximately 9 point type. Below that will be "PARIS" in approximately 5 point type. Finally, just below "PARIS" will be the words "MADE IN FRANCE" in approximately 5 point print. French words, including the manufacturer's name appear on the bottom panel of the box in approximately 5 point print.

ISSUE:

What packaging and labeling is required when a cosmetic line's name includes the word "BERLIN", for which an application for trademark was filed, and when "USA" and "NEW YORK" appear on the box, when the actual country of origin of the product is France?

LAW AND ANALYSIS:

Section 304 of the Tariff Act of 1930, as amended (19 U.S.C. 1304), provides that, unless excepted, every article of foreign origin imported into the U.S. shall be marked in a conspicuous place as legibly, indelibly, and permanently as the nature of the article (or container) will permit, in such a manner as to indicate to the ultimate purchaser in the U.S. the English name of the country of origin of the article. The Court of International Trade stated in Koru North America v. United States, 701 F. Supp. 229, 12 CIT 1120 (CIT 1988), that "in ascertaining what constitutes the country of origin under the marking statute, a court must look at the sense in which the term is used in the statute, giving reference to the purpose of the particular legislation involved. The purpose of the marking statute is outlined in United States v. Frielaender & Co., 27 CCPA 297 at 302, C.A.D. 104 (1940), where the court stated that: "Congress intended that the ultimate purchaser should be able to know by an inspection of the marking on the imported goods the country of which the goods is the product. The evident purpose is to mark the goods so that at the time of purchase the ultimate purchaser may, by knowing where the goods were produced, be able to buy or refuse to buy them, if such marking should influence his will."

Part 134, Customs Regulations (19 CFR Part 134), implements the country of origin marking requirements and exceptions of 19 U.S.C. 1304. Section 134.41(b), Customs Regulations (19 CFR 134.41(b), mandates that the ultimate purchaser in the U.S. must be able to find the marking easily and read it without strain. Section 134.1(d), Customs Regulations, (19 CFR 134.1(d)), defines the ultimate purchaser as generally the last person in the U.S. who will receive the article in the form in which it was imported. In this case the ultimate purchaser is the consumer who will use the cosmetic product.

In addition, 134.46, Customs Regulations (19 CFR 134.46), requires that when the name of any city or locality in the U.S., or the name of any foreign country or locality other than the name of the country or locality in which the article was manufactured or produced, appear on an imported article or its container, there shall appear, legibly and permanently, in close proximity to such words, letters or name, and in at least a comparable size, the name of the country of origin preceded by "Made in," "Product of," or other words of similar meaning. Customs has ruled that in order to satisfy the close proximity requirement, the country of origin marking must appear on the same side(s) or surface(s) in which the name of the locality other than the country of origin appears. HQ 708994 (April 24, 1978). The purpose of 19 CFR 134.46 is to prevent the possibility of misleading or deceiving the ultimate purchaser as to the origin of the imported article. In this case, "USA" and "NEW YORK" appear below the list of ingredients. The box is marked with the country of origin, "MADE IN FRANCE" below this, on the same side, and in the same type size. This satisfies the requirements of 19 CFR 134.46, for the "USA" and "NEW YORK" locations appearing on the box.

Customs Regulations 19 CFR 134.47, requires a slightly less restrictive marking than 134.46 when the location name other than the country of origin appears as part of a trademark. Under 134.47, when the name of a place other than the country of origin appears as part of a trademark or trade name or as part of a souvenir marking, the name of the actual country of origin must appear in close proximity to the place "or in some other conspicuous location". In other words, if the question concerns a trade name or trademark, the country of origin marking needs only to meet the general standard of conspicuousness. In either 134.46 or 134.47, the name of the country of origin must be preceded by "Made in", "Product of", or words of similar meaning. See HQ 734175 (February 24, 1992); HQ 734277 (December 24, 1991).

The language of 19 CFR 134.47 pertains to a trademark or trade name with a location in the United States. In this case the trademark is "BERLIN", signifying the German city, not a U.S. location. Customs has held, however, that "[t]he rationale for granting a special exemption for trademarks and trade names containing the name of a domestic locality applies at least as strongly to trademarks bearing the name of a foreign locality. Accordingly, it is our opinion that the intent of 134.47 was to include foreign trademark designations as well as domestic locales." HQ 731524 (December 18, 1989) (quoting HQ 710682 (June 26, 1979)).

In this case, the application for trademark was first filed on January 10, 1992, twenty three days after the ruling request to Customs was dated. The application has not been granted. Previously Customs allowed an application for trademark to be sufficient to qualify for the 134.47 exception pending Customs final interpretation of the regulation. See HQ 734066 (July 15, 1991); HQ 734073 (July 10, 1991). Customs has had some concern about the scope of 19 CFR 134.47 for some time in that regard. Customs has been developing an interpretation of 19 CFR 134.47, concerning what is required to establish a trademark. In HQ 734066 (July 15, 1991), we stated that:
an application for trademark registration has been filed with the U.S. Patent and Trademark Office.... Although Customs is reviewing the issue of whether evidence of trademark registration is required to invoke the provisions of 19 CFR 134.47 (as opposed to the more stringent requirements of 19 CFR 134.46), until publication of a contrary view, evidence of trademark registration is not required to invoke the provisions of 19 CFR 134.47.

Further, in HQ 734073, (July 10, 1991) we stated similarly that:

An application is now pending before the U.S. Patent and Trademark Office .... Customs is currently reviewing the issue of whether or not a trademark must be registered in order to trigger the requirements of 19 CFR 134.47. Until Customs has resolved this issue and published its position, the requirements of 19 CFR 134.47 rather than 19 CFR 134.46 will be applied to all trademarks with a U.S. reference, registered or not.

Although 19 CFR 134.47 applies when a locality reference appears as part of a trademark, the regulation does not specify what evidence is needed to establish a trademark. In view of the fact that the regulation does not specify that trademark registration is required, we have not previously required such evidence. However, absent evidence of registration, other evidence of trademark is required. The question presented in this case is whether the mere filing of an application for registration is sufficient evidence to establish a trademark for purposes of 19 CFR 134.47. We have concerns about whether this is enough, especially when the application is based on an intent to use the purported trademark. We are considering soliciting public comments on the broad issue of what evidence of trademark is necessary to invoke the requirements of 19 CFR 134.47. Nonetheless, because the above two rulings applied the requirements of 19 CFR 134.47 when the only evidence of trademark was the pending application, until further notice we will continue to accept a filed application with the U.S. Patent and Trademark Office as sufficient evidence of a trademark for the purposes of 19 CFR 134.47. However, if for some reason the application is denied, then the requirements of 19 CFR 134.46 will have to be complied with.

Therefore, in this case, although only an application for registration of a trademark exists, Customs will allow the more lenient requirements of 19 CFR 134.47 to apply here. We, therefore, find that "BERLIN" is a trademark within the exception of 19 CFR 134.47. The box for the cosmetic products must contain the country of origin of the cosmetics, and this must appear with the words "Made in" or "Product of" or other similar words; but the country of origin does not have to appear on the same panel as the trademark "BERLIN". The less restrictive requirements of 19 CFR 134.47 will apply, requiring only that the country of origin appear in a legible, conspicuous, permanent manner in close proximity to the trademark, or in some other conspicuous location. We find that the box, as described above will satisfy these requirements. However, because of the wide range of cosmetics sought to be imported, this ruling is limited to a box with the dimensions and print size described above.

HOLDING:

The cosmetics listed above and packaged in the boxes described above and marked as described above, satisfy the requirements of 19 U.S.C. 1304 and 19 CFR 134.47.

Sincerely,

John Durant, Director
Commercial Rulings Division

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