HQ 459018 - Suspected infringement of "Jonathan Martin & Design" trademark recorded with U.S. Customs - United States International Trade Commision Rulings

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TMK CO:R:IT:I 459018 VEA

CATEGORY: TRADEMARKS

Leonard Zimmerman
Mi Mo International Inc.
220-22 Hillside Avenue
Queens Village, N.Y. 11427

RE: Suspected infringement of "Jonathan Martin & Design" trademark recorded with U.S. Customs

Dear Sir:

This letter is in response to your inquiry dated July 26, 1994, requesting our advice on whether a label bearing a unicorn design and the words "JONATHAN MARTIN" infringe any of the trademarks recorded with U.S. Customs.

FACTS:

Mi Mo International is interested in purchasing wearing apparel from a Chinese company which contains a label bearing the mark "JONATHAN MARTIN" and a unicorn design. Company officials have discovered that this could be a registered U.S. trademark and question whether foreign manufactured goods bearing the label would be seized by Customs if imported into the U.S. The trademark at issue consists of a rectangular design containing a unicorn and the words "JONATHAN MARTIN". It is owned by Harkham Industries Inc. and is recorded with Customs Intellectual Property Rights Branch (IPR Branch) as TMK93-00133 and the U.S. Patent and Trademark Office as 1,408,401.

ISSUE:

Whether the label bearing the words "JONATHAN MARTIN" and a unicorn design infringes the trademark owned by Harkham Industries, Inc.?

LAW AND ANALYSIS:

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 1114. In determining the "likelihood of confusion", courts generally evaluate a variety of factors including: (1) the degree of similarity between the marks, (2) proximity of the products; (3) actual confusion; (4) sophistication of the buyers; (5) the defendant's good faith in adopting the mark; and (6) the strength of the registered mark. Polarad Electronics Corp., 287 F. 2d 492 (2d Cir.) cert denied, 368 U.S. 820 (1961). For purposes of this case, it is only necessary to evaluate the degree of similarity between
the design at issue and the recorded mark. Based on a comparison of the two designs, it is our opinion that the label bears a design which is "substantially indistinguishable" or a counterfeit of the recorded mark.

The trademark consists of a rectangular design containing a unicorn and the words "JONATHAN MARTIN" in capital letters. The design on the label at issue also includes a unicorn design and the words "JONATHAN MARTIN" in capital letters. The only difference between the two designs is the depiction of the unicorn figures. The trademark design contains a full-bodied unicorn, but the unicorn on the label only includes the head. However, this minor difference does not negate our finding that this label is "counterfeit" since it clearly copies the key features of the trademarked design. Finally, under Section 1526(e) of the Tariff Act, 19 U.S.C. Section 1526(e), U.S. Customs has the authority to seize and forfeit imported goods bearing a counterfeit trademark.

HOLDING:

The label bearing the words "JONATHAN MARTIN" and a unicorn design infringe the trademark recorded with U.S. Customs under TMK 93-00133 and owned by Harkham Industries Incorporated.

John F. Atwood, Chief
Intellectual Property Rights Branch

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