HQ 0735219 - Country of Origin Marking for Cosmetic Packaging; 19 CFR 134.46; 19 CFR 134.47; Application for Trademark. - United States International Trade Commision Rulings

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HQ 735219

July 22, 1993

MAR-2-05 CO:R:C:V 735219 RC

CATEGORY: MARKING

District Director of Customs
Charleston, S.C.

RE: Country of Origin Marking for Cosmetic Packaging; 19 CFR 134.46; 19 CFR 134.47; Application for Trademark.

Dear Sir:

This is in response to your memorandum of June 9, 1993, requesting Internal Advice regarding the location of the country of origin marking on cosmetic packaging. Submissions on behalf of the importer were also reviewed.

FACTS:

Esthetic Supply Company imports cosmetic cream manufactured in Germany for sale in the U.S. The submitted sample box is for "BIODROGA, AGE PROTECTION" which appears on the front panel, along with some words in German, and near the bottom "BADEN- BADEN PARIS" in approximately 9 points. (A point is a unit of type measurement equal to 0.01384 inch or nearly 1/72 inch, and all type sizes are multiples of this unit.) The "BADEN-BADEN PARIS" marking appears in gold on a gold background. The marking "Made in Germany", in approximately six points, appears on the side panel in white on a gold background. In a letter dated May 26, 1993, on behalf of Esthetic Supply Company, attorneys George H. Spencer and Michael A. Hertzberg indicate that Biodroga has a trademark application pending before the United States Patent and Trademark Office for the panel design of its cosmetics packaging encompassing "Biodroga" and a line on the top of the packaging panel, then a mirroring line and "BADEN-BADEN PARIS" on the bottom of the panel.

ISSUE:

Do the words "BADEN-BADEN PARIS" printed on cosmetics packaging require the country of origin marking to appear on the same side or surface to satisfy the marking requirements set forth in 19 U.S.C. 1304 and 19 CFR Part 134?

LAW AND ANALYSIS:

Section 304, Tariff Act of 1930, as amended (19 U.S.C. 1304), requires that articles of foreign origin or their containers be marked in a conspicuous place legibly, indelibly, and permanently to indicate to the ultimate purchaser in the U.S. the English name of the country of origin of the article.

Part 134, Customs Regulations (19 CFR Part 134) implements the country of origin marking requirements and exceptions of 19 U.S.C. 1304. Under section 134.46, Customs Regulations (19 CFR 134.46), when words indicating the name of a locality in a country other than the country of origin appear on an article, the name of the country of origin must appear "in at least comparable size" and "in close proximity" to such words preceded by "Made in", "Product of", or other words of similar meaning. Customs rulings interpret the "close proximity" requirement to mean the "same side or surface" where the name of the locality other than the country of origin appears. See HQ 708994 (April 24, 1978). This interpretation prevents the possibility of misleading or deceiving the ultimate purchaser for marking purposes.

Under section 134.47, Customs Regulations (19 CFR 134.47), a limited exception to 19 CFR 134.46 is created by providing that for souvenirs and articles marked with trademarks and trade names, the marking of the country of origin may appear either "in close proximity or in some other conspicuous location" (emphasis added) and must be preceded by the "Made in", "Product of", or similar words.

The submissions of Mr. Spencer and Mr. Hertzberg indicate that Biodroga has a trademark application pending for the panel design of its cosmetics packaging encompassing "Biodroga" and a line on the top of the packaging panel, then a mirroring line and "BADEN-BADEN PARIS" on the bottom of the panel. As such, it may be appropriate to apply the less restrictive requirements of 19 CFR 134.47.

The language of 19 CFR 134.47 pertains to a trademark or trade name with a location in the United States. Here, the trademark includes the words "BADEN-BADEN PARIS", signifying the cities in Germany and France, not a location in the U.S. Customs has generally held 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 section 134.47 was to include foreign trademark designations as well as domestic locales." HQ 731524 (December 18, 1989) (quoting HQ 710682 (June 26, 1979)).

At present, application for the "BADEN-BADEN PARIS" trademark has not been granted. Customs has previously accepted a trademark application as sufficient to qualify for the section 134.47 exception, pending final interpretation of the regulation. See HQ 734066 (July 15, 1991); HQ 734073 (July 10, 1991). In HQ 734455 (July 15, 1991), we stated 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 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 apply the lenient requirements of 19 CFR 134.47. We, therefore, find that "BADEN-BADEN PARIS" is a part of a trademark and falls within the exception of 19 CFR 134.47. The boxes for the cosmetic products must contain the country of origin of the cosmetics, and this marking must appear preceded by "Made in", "Product of", or other words of similar meaning; but the country of origin does not have to appear on the same panel as the trademark "Berlin".

Under the less restrictive requirements of 19 CFR 134.47, the country of origin marking needs only to 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, satisfies these requirements because the country of origin marking appears on the only panel with other pertinent product information including directions and ingredients printed in the English language. Additionally, the country of origin marking clearly appears in white print against a gold background.

HOLDING:

The cosmetic box, marked as described above satisfies the requirements of 19 U.S.C. 1304 and 19 CFR 134.47. Please furnish a copy of this decision to the importer.

Sincerely,

John Durant, Director

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