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TMK/COP R:IT:I 459411 VEA

CATEGORY: TRADEMARKS

Jerry Jackson
Hawaii Intercontinental Corporation
99-1221 Halawa Valley Street
Aiea, Hawaii 96701-3280

RE: Ruling request on whether a lizard design and the words "GECKO HAWAII" infringe the "GECKO" trademark recorded with U.S. Customs under ACS Recordation No. TMK 92-00178; U.S. Patent and Trademark Office (PTO) Registration No. 1,510,173

Dear Mr. Jackson:

This letter is in response to your inquiry requesting a ruling on whether caps bearing a caricature of a gecko or lizard figure wearing sunglasses and the words "GECKO HAWAII" infringe the above referenced trademark recorded with Customs Intellectual Property Rights (IPR) Branch.

FACTS:

The merchandise at issue consists of a black cap bearing a caricature of two lizards or Geckos and the words "GECKO HAWAII". The lizards are wearing red or blue swim trunks with yellow flower-like designs and sun glasses. The invoice and documents submitted with your ruling request indicates that a shipment of these goods was imported into the United States through the port of Honolulu, Hawaii and that two samples were retained by U.S. Customs.

The "GECKO" mark recorded with the IPR Branch is owned by Gecko Trading Company and registered with the PTO for clothing including hats. Our records also indicate that a copyright titled "HAPPY SHIRTS-GECKO" is recorded with Customs under ACS No. COP 92-00112; U.S. Copyright Office Registration No. VA 260-113 and is registered by Happy Shirts Incorporated. The copyright consists of creative artwork depicting a caricature of a lizard wearing sunglasses and the following words: (1) "GECKO and Brothers/HAWAII"; (2) "GECKO and Daughters/HAWAII"; or (3) "HANG LOOSE GECKO/Hawaii". The copyright is registered for sportswear including fabric and imprinted sportswear.

ISSUES:

I. Whether the lizard design and words "GECKO HAWAII" on the cap infringe the "GECKO" trademark recorded with U.S. Customs?

II. Whether the lizard design and words "GECKO HAWAII" infringe the "HAPPY SHIRTS- GECKO" copyright recorded with U.S. Customs?

LAW AND ANALYSIS:

ISSUE # 1

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. Polaroid Corp. v. 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 words on the imported articles and the recorded trademark.

Based on a comparison of the two marks, we conclude that the imported article bears a trademark which is a "counterfeit" of the recorded mark. The recorded mark consists of the word "GECKO" and the trademark on the imported article includes the words "GECKO HAWAII". The addition of the word "HAWAII" does not negate our finding of "likelihood of confusion" because the recorded mark has been copied in its entirety and appears on caps, articles which are closely akin to hats, the class of goods for which the mark is registered.

Imported articles bearing marks which are identical or substantially indistinguishable to a recorded trademark are subject to seizure as counterfeit merchandise pursuant to 19 U.S.C. 1526(e) of the Tariff Act and 19 C.F.R. 133.23a of the Customs Regulations.

ISSUE # 2

To prove infringement in copyright cases, the copyright owner must demonstrate: (a) ownership of a valid copyright; (b) unauthorized copying of the protected material; and that the copying constituted unlawful appropriation. Arnstein v. Porter, 154 F. 2d 464 (2nd Cir.

1946); Warner Bros. Inc., v. American Broadcasting Companies, 654 F. 2d 204 (2nd Cir. 1981); William F. Patry, Latman's The Copyright Law 189-255 (6th ed. 1986).

Under Section 410 of the Copyright Act, 17 U.S.C. 410(c), "a certificate of registration made before or within five years after the first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the certificate". Happy Shirts Incorporated has provided Customs with a copy of the registration certificate issued by the U.S. Copyright Office for the copyrighted work.

Proof that a copyrighted work has been copied may be shown by direct or indirect evidence. Direct evidence such as an admission by the importer or testimony by a witness to the copying is unavailable in this case. The copyright owner may prove copying by indirect or circumstantial evidence such as proof of access to the copyrighted work or similarities between the two works that are unlikely to have occurred without copying. Latman, supra at 191.

In determining whether an infringing article unlawfully appropriates a copyrighted work, courts generally apply a "substantial similarity" test. A finding of "substantial similarity" means that the infringing article copies a substantial and material amount of the protected work. Atari, Inc. v. North American Philips Consumer Electronics Corp., 672 F. 2d 607 (7th Cir. 1982), cert denied, 549 U.S. 880 (1982); Heim v. Universal Pictures Co., 154 F. 2d 480 (2d Cir. 1946). The standard courts apply to determine whether an infringing article is "substantially similar" to a copyrighted work is that of the "ordinary observer". Courts have held that an article is infringing if it is so similar to the copyrighted work that an "ordinary reasonable person" would conclude that the suspect article unlawfully appropriates a material amount of the protected work.

Applying this test to the imported articles, we find that the lizard caricatures and the words "GECKO HAWAII" on the caps are so similar to the "HAPPY SHIRTS - GECKO" copyright that an ordinary observer would conclude that they unlawfully appropriate a substantial and material amount of the protected work. The expression of the idea of a lizard wearing sunglasses is identical to the registered copyright recorded with the IPR Branch. The imported article also contains the words "GECKO and HAWAII", two of the terms found in the protected work.

Moreover, the differences between the copyrighted work and the design and wording on the imported article are minor. There are slight variations in the feet, tail and mouth of the lizard on the imported article, however, the expression of the caricature of a lizard is the same. Also, the copyrighted artwork contains additional words such as "Brothers", "Daughters" or "HANG LOOSE". Since these differences are minor and a substantial and material amount of the protected work has clearly been copied, we find substantial similarity. 

HOLDING:

We hold that the terms "GECKO HAWAII" on the imported caps are "substantially indistinguishable" (counterfeit) from the trademark recorded with Customs under ACS/IPR Module No. TMK 92-00178. Therefore pursuant to 19 C.F.R. 133.23a of the Customs Regulations and 19 U.S.C. 1526(e), shipments of hats bearing these terms should be seized unless the importer obtains the consent of the trademark owner.

We also find that the lizard caricature and terms "GECKO HAWAII" on the imported caps are "substantially similar" to the copyright recorded with Customs under ACS/IPR Module No. COP 92-00112. Shipments of hats bearing this design and terms should be seized as "piratical" pursuant to 19 C.F.R. 133.42 of the Customs Regulations and 17 U.S.C. 603 of the Copyright Act.

John F. Atwood, Chief
Intellectual Property Rights Branch


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