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HQ 734644


July 1, 1992
MAR-2-05 CO:R:C:V 734644 KR

CATEGORY: MARKING

Mr. Donald B. Cameron
Morrison & Foerster
2000 Pennsylvania Avenue, N.W.
Washington, D.C. 20006-1812

RE: Country of origin marking of a line of women's garments under the name Napa Valley for which the importer has applied for a trademark.

Dear Mr. Cameron:

This is in response to your letter dated May 18, 1992, requesting a country of origin marking ruling concerning a women's garment line with a prospective trademark of "NAPA VALLEY", but which is imported from various countries. You submitted three hang tags, and two sewn on labels for our review.

FACTS:

You state that Koret of California ("Koret") wishes to import a line of women's garments comprised of pants, skirts, blouses and jackets. The women's garment line you wish to import is a new product line. The product line is called "NAPA VALLEY". In your ruling request dated May 18, 1992, you state that you have applied for a trademark for the name "NAPA VALLEY". You submitted a copy of the application for trademark registration filed on March 20, 1992, with the U.S. Patent and Trademark Office. At this point the application for trademark is still pending.

You submitted samples of hang tags and sewn in labels for our review. The front has the word NAPA in white letters approximately 5/8 inch in size or 45 points. (A point is approximately .01384 inch or 1/72 of an inch). This is followed by an outline figure of a bird also in white ink. Immediately, below is the word "VALLEY" in red ink with the same size letters. "NAPA VALLEY" also appears on the back of the hang tag in approximately 13 point print. Below appears product information and the UPC code. 3/8 inch below this appears the country of origin with the words "MADE IN ..." in comparable size lettering. The size of the item appears 1/4 inch below the country of origin marking. "NAPA VALLEY" also appears on the sewn in label in approximately 27 point print. Below on an attached but separate sewn in label is the country of origin with the words "ASSEMBLED IN ..." in approximately 9 point print.

For the purposes of this ruling, we assume that the garments are eligible for importation under subheading 9802.00.80 and that "Assembled in" is permissible marking. See 19 CFR 10.22.

ISSUE:

Whether "NAPA VALLEY" qualifies as a trademark under 19 CFR 134.47, or must meet the more stringent marking requirements of 19 CFR 134.46.

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 retail purchaser of the garment.

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.

Similarly, 134.47, Customs Regulations (19 CFR 134.47), requires a slightly less restrictive marking. 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).

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.

In this case, since an application has been filed, the issue presented is whether the country of origin markings on the hang tag and the sewn in label satisfy the requirements of 19 CFR 134.47, i.e., whether they are conspicuous in light of the prominent reference to "NAPA VALLEY" on the front of the hang tag and the sewn in label. Even though the "NAPA VALLEY" references are more conspicuous than the country of origin markings, the origin markings are quite prominent and are easy to find. They appear in large black bold letters that are easy to find and easy to read. This is especially true in view of the fact that pertinent information about the garment (e.g. size and style number) appears on the same side of the tags as the country of origin. The words "MADE IN" or "ASSEMBLED IN" precede the country of origin as required by 19 CFR 134.47. Accordingly, we find that the requirements of 19 CFR 134.47 are satisfied.

HOLDING:

"NAPA VALLEY" will qualify as a trademark under 19 CFR 134.47. The country of origin marking on the hang tags and sewn in labels submitted by Koret comply with the requirements of 19 U.S.C. 1304, and 19 CFR 134.47.

Sincerely,

John Durant, Director

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