HQ 459012 - Suspected infringement of "LYCRA" trademarks owned by DuPont Incorporated - United States International Trade Commision Rulings

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HQ 459012

TRA CO:R:IT:I 459012 VEA

CATEGORY: TRADEMARKS

Robert H. Dunlap
Legal Department
DuPont
Barley Mill Plaza 17-2212
Wilmington, Delaware 19898

RE: Suspected infringement of "LYCRA" trademarks owned by DuPont Incorporated

Dear Mr. Dunlap:

This letter is in response to your request for a ruling pursuant to 19 C.F.R. Part 177 of the Customs Regulations on whether certain terms are "confusingly similar" to the "LYCRA" trademarks recorded with U.S. Customs under ACS/IPR module No. 93-00436 (PTO Registration No. 673,321) and ACS/IPR module No. 93-00435 (PTO Registration No. 637,601).

FACTS:

Your letter dated September 14, 1995, on behalf of DuPont Incorporated, requests a ruling on whether the terms: "LAICRA", LICRA", "LIKRA", "LYKRA", "LYCRO" and "LYCRI" are "confusingly similar" to the "LYCRA" trademarks owned by DuPont and recorded with Customs Intellectual Property Rights Branch under the above-referenced recordation numbers. DuPont believes that garments with labels bearing these terms are being imported into the United States in violation of the Customs and intellectual property rights laws and is requesting that Customs take appropriate action to prevent the illegal importation of goods determined to infringe its marks.

ISSUE:

Whether the terms "LAICRA", "LICRA", "LIKRA", "LYKRA", "LYCRO" and "LYCRI" are "confusingly similar" to the "LYCRA" trademarks.

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. Section 1057 (b). Section 1526 (e) of the Customs laws, 19 U.S.C. Section 1526(e), prohibits the importation of articles bearing a counterfeit mark. Counterfeit trademarks are spurious marks that are identical with or "substantially indistinguishable" from the registered mark. 15 U.S.C. Section 1127; 19 C.F.R. Section 133.23a(a). 15 U.S.C. Section 1124 of the Trademark laws deny entry to imported goods bearing trademarks which "copy or simulate" (confusingly similar) marks recorded with U.S. Customs for import protection pursuant to Part 133 of the Customs Regulations, 19 C.F.R. Part 133. Articles imported or attempted to be imported in violation of Section 1124 are subject to seizure pursuant to Section 1595a(c), 19 U.S.C. Section 1595a(c).

The test for trademark infringement is whether the suspected mark is likely to cause confusion, or to cause mistake, or to deceive. See, 15 U.S.C. Section 1124. Courts generally evaluate a variety of factors to determine whether "likelihood of confusion" exists including: (1) the degree of similarity between the marks; (2) proximity of the products; (3) the strength of the mark; (4) sophistication of the buyer; (5) the defendant's good faith in adopting the mark; and (6) actual confusion. Polaroid Corp. v. Polarad Electronics Corp., 287 F. 2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

For purposes of this decision, the analysis will focus primarily on the first three factors. In evaluating the "degree of similarity" between marks, courts normally look to whether they are similar in appearance and sound. See Communications Satellite Corporation v. Comcet, Inc., 429 F. 2d 1245 (4th Cir. 1970); American Cyanamid Co. v. United States Rubber Co, 356 F. 2d 1008, 53 C.C.P.A. 994, 148 U.S.P.Q. 729 (1966); David Sherman Corp. V. Heublien, Inc., 340 F. 2d 377 (8th Cir. 1965) and G. D. Searle & Co. v. Chas Pfizer & Co., 265 F. 2d 385 (7th Cir. 1959). Applying the courts' reasoning in these cases, we find the terms "LAICRA", "LICRA", "LIKRA" and "LYKRA" to be "substantially indistinguishable" (counterfeit) from the "LYCRA" marks. We also find that the words "LYCRI" and "LYCRO" are "confusingly similar" to the recorded marks.

In Communications Satellite Corporation, the court held that the term "COMCET" infringed the trademark "COMSAT". It stated "{t}here can be no doubt about the resemblance of Comcet to Comsat. They sound almost identical and visual differences are slight. Whether the test be common law or statute, the likeness is so striking that it is apparent that Comcet-- though not requested to do so is using a colorable imitation of Comsat's name and mark." In American Cyanamid Co. v. United States Rubber Co. the court upheld the Trademark Trial and Appeal Board's decision to refuse to register the word mark "CYGON" for an insecticide on the
grounds that it would likely be confused with the mark "PHYGON" already registered with the U.S. Patent and Trademark Office for a combination fungicide-insecticide. The court noted that the similarity in sound and particularly the spelling was sufficient to create a likelihood of confusion and mistake, considering the close relationship of the goods in use.

In David Sherman Corporation v. Heublein, Inc., the court held that the term "SARNOFF" infringed the trademark "SMIRNOFF". It stated that "the words are identical in the first and final letters and differ only in the "a" as contrasted with the "mi". It also noted that the two terms are strikingly alike when spoken and the marks are used on identical products which are purchased and used by the same class of persons. Finally, in holding that the term "Bonamine" is likely to cause confusion and mistake among purchasers and to be associated with the registered trademark "Dramamine" the court in G.D. Searle & Co. noted that although these marks are readily distinguishable to the eye, their similarity in sound and the methods used for promotion and marketing of products bearing the marks could lead to confusion. Applying a phonetic test to evaluate the "degree of similarity in sound" between the two marks, the court noted that both contain the same number of syllables and have the same stress pattern with primary accent on the first syllable and secondary accent on the third syllable. It also stated that the last two syllables are identical, the initial sounds d' and b' are voiced plosives and the consonants m' and n' are nasal sounds. Finally, both the d' and b' and the m' and n' are acoustically similar.

Like the marks at issue in the above-referenced cases, the terms "LAICRA", "LICRA", "LIKRA" and "LYKRA" are almost identical in visual appearance to the recorded marks and contain only slight variations in spelling. For example, the letter Y' in "LYCRA" is replaced by the letters AI' in "LAICRA" and I' in the terms "LICRA" and "LIKRA". The letter C' in "LYCRA" is replaced by the letter K' in "LYKRA". Also, like the "LYCRA" marks, the words "LAICRA", "LICRA", "LIKRA" and "LYKRA" all begin with the letter L' and end with the letter A'. Finally, the letter A' in "LYCRA" is replaced by the letters I' and O' in "LYCRI" and "LYCRO". These two terms are not as close in visual appearance to the recorded marks as the others at issue. However, in our opinion, their appearance is close enough that the likelihood of confusion still exists.

Applying the phonetic test relied on by the court in G.D. Searle & Company to evaluate the similarity in sound between the terms "LAICRA", "LICRA", "LIKRA" "LYKRA" and the "LYCRA" trademarks, we find that they sound exactly alike. Each of these terms contains two syallables which like the "LYCRA" marks have the same stress pattern with primary accent on the first syllable ( LAI', LI' and LY') and secondary accent on the second syllable ( CRA' and KRA'). Also, "LYCRI" and "LYCRO" contain the same first syllable as the recorded marks, thus their pronunciation is the same. Although the pronunciation of their second syllable is not identical to that of the "LYCRA" trademarks, we believe it is close enough to create confusion.

Finally, your letter indicates that the terms at issue appear on labels on garments. The "LYCRA" trademarks are registered with the U.S. Patent and Trademark Office (PTO) for synthetic fibers and filaments and yarns and threads of synthetic fibers. Assuming that the imported goods are made of synthetic fibers, the class of goods for which the marks are registered, clearly a close nexus exists between these products. Also, the registration certificates issued by the PTO indicate that the "LYCRA" marks have been in use since 1958. Since lycra and its use with synthetic fibers have been identified with the DuPont Company for over thirty-five years, we believe that the striking visual and acoustic similarities between the terms at issue and the "LYCRA" marks would create a likelihood of confusion.

HOLDING:

We hold that the terms "LAICRA", "LICRA", "LIKRA" and "LYKRA" are "substantially indistinguishable" (counterfeit) and that the terms "LYCRI" and "LYCRO" are "confusingly similar" to the "LYCRA" trademarks recorded with Customs under ACS/IPR Module Nos. 93-00436 (PTO Registration No. 673,321) and 93-00435 (PTO Registration No. 637,601).

Therefore, pursuant to 19 C.F.R. Section 133.23a of the Customs Regulations and 19 U.S.C. Section 1526(e), shipments of garments with labels bearing the words "LAICRA", "LICRA", "LIKRA" and "LYKRA" should be seized unless the importer obtains the consent of the trademark owner. Also, shipments of goods bearing the terms "LYCRI" and "LYCRO" should be detained under 19 C.F.R. Section 133.22 to provide the importer with an opportunity to establish that any of the circumstances in 19 C.F.R. Section 133.21(c) are applicable. If the importer is unable to show that the circumstances in these provisions are applicable, the goods should be seized and forfeited pursuant to 19 U.S.C. Section 1595a(c).

John F. Atwood, Chief
Intellectual Property Rights Branch

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