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HQ 560596





October 20, 1997

MAR-2:05 RR:CR: SM 560596 RSD

CATEGORY: MARKING

Marianne Rowden, Esq.
Follick & Bessich
33 Walt Whitman Road
Suite 204
Huntington Station, New York 11746

RE: Country of Origin Marking of Footwear; Shoes; Conspicuous Location; Comparable Size; U.S. Reference as Part of a Registered Trademark; Hang Tags; 19 CFR 134.47 Dear Ms. Rowden:

This is in reference to your letter dated August 1, 1997, requesting a ruling on behalf of Geoffrey Allen Corporation, concerning the country of origin marking requirements applicable to Perry Ellis America shoes. A sample of the shoes and the boxes, in which they are imported and sold, accompanied your submission. We have also received a supplemental submission dated September 23, 1997, which contained a copy of the trademark registration and a photostatic copy of a proposed hang tag.

FACTS:

Geoffrey Allen Corporation (hereinafter GAC) of Secaucus, New Jersey is planning to import a line of shoes that will be sold under the name "Perry Ellis America". "Perry Ellis America" or "AMERICA Perry Ellis" are trademarks registered with the United States Patent and Trademark Office used by GAC under license. According to a catalog, the product line consists of various styles of footwear, including sneakers and boots.

The sample shoes contain different variations of the trademark "Perry Ellis America" in five different locations on each shoe of the pair. The trademark is on the top of the tongue, the outside of the heel, the side of the exterior of the shoe, the inner sole, and molded into the outer sole. On the inside tongue of the sneaker is a white label with black text which shows the style number, name, color, and size of the sneaker in lettering of one-eighth (1/8) inch typeface. Below that information, the country of origin marking "MADE IN CHINA" appears in bold lettering of about one-eight (1/8) of an inch. The trademark "America Perry Ellis" is also on three locations on the shoe boxes. The word "AMERICA" is in large letters on the top of the box. The country of origin marking "MADE IN CHINA" is also printed on the bottom of one of the side panels of the shoe box. GAC's U.S. address is also printed on the bottom of the shoe box.

In your supplemental submission, you have presented a photostatic copy of a two sided hang tag that GAC proposes to attach to the shoes. There will be writing on both sides of the hang tag. On one side of the hang tag, the trademark "PERRY ELLIS AMERICA" will be printed in large bold lettering. On the reverse side of the hang tag, "Perry Ellis America" will be shown again in smaller print. Below the trademark, there also will be language indicating that GAC is the world wide licensee of the Perry Ellis America label, and GAC's address in Secaucus, New Jersey is also provided for product inquiries. On the bottom of the hang tag, the words "Made in China" will be printed.

ISSUE:

Whether the proposed country of origin marking for imported footwear which features several references to the word "America" as part of a registered trademark is acceptable.

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 (or its container) imported into the United States shall be marked in a conspicuous place as legibly, indelibly and permanently as the nature of the article (or its container) will permit, in such a manner as to indicate to the ultimate purchaser in the United States the English name of the country of the article. Part 134, Customs Regulations (19 CFR 134), implements the country of origin marking requirements and exceptions of 19 U.S.C. 1304.

The primary purpose of the country of origin marking statute 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." United States v. Friedlaender & Co., 27 C.C.P.A. 297, C.A.D. 104 (1940). As provided in section 134.41(b), Customs Regulations (19 CFR 134.41(b)), the country of origin marking is considered conspicuous if the ultimate purchaser is able to find the marking easily and read it without strain.

In determining whether the country of origin marking on the imported footwear satisfies the requirements of 19 U.S.C. 1304, the presence of the trademarked language, "PERRY ELLIS AMERICA", which appears on the shoes and on the shoe boxes in several places must be taken into consideration. In cases where there is a reference to a location other than the country of origin on imported merchandise, the special marking requirements set forth in sections 134.46 and 134.47, Customs Regulations (19 CFR 134.46 and 19 CFR 134.47), may be applicable. The purpose of both provisions is the same, namely to prevent the ultimate purchaser from being misled or deceived when the name of a country or place other than the country of origin appears on an imported article or its container.

On August 20, 1997, a final rule document, Treasury Decision (T.D.) 97-62 was published in the Federal Register (62 FR 44211) amending section 134.46 of the Customs Regulations to the ease the requirement that whenever words appear on imported articles indicating the name of a geographic location other than the true country of origin of the article, the country of origin marking must appear in close proximity and in comparable size lettering to those words proceeded by the words "Made in", "Product of", or other words of similar meaning. The effective date of the amendment was September 20, 1997. Under the revised 19 CFR 134.46, the requirements of this section are triggered only if it is determined that the references to a locality other than the country of origin may deceive or mislead the ultimate purchaser regarding the actual country of origin of the article. 19 CFR 134.47 provides that when a trademark, trade name, or souvenir marking indicates the name of a country or locality other than the country of origin, the country of origin shall be indicated either "in close proximity or in some other conspicuous location" preceded by "Made in", "Product of", or similar words.

The critical difference between the two provisions is that 19 CFR 134.46 requires that the name of the actual country of origin shall appear "in close proximity" to the locality name and in lettering of at least comparable size. By contrast, 19 CFR 134.47 is less stringent, providing that when as part of a trade name, trademark or souvenir mark, the name of a location other than the country of origin appears, the name of the actual country of origin must appear in close proximity or "in some other conspicuous location". In other words, the latter provision triggers only a general standard of conspicuousness. In either case, the name of the country of origin must be preceded by "Made in", "Product of", or other similar words.

In this instance, the multiple appearances of the registered trademark "Perry ELLIS AMERICA" on the shoes and on the shoe box is a geographical reference which triggers the requirements of 19 CFR 134.47. Therefore, the country of origin marking must appear in "close proximity" to the word "America" or "in some other conspicuous location".

The multiple use and the prominence of the word "America" on the shoes and on their box is such that the country of origin marking solely on the label on the tongue of the shoes would not by itself be conspicuous. This conclusion is consistent with previous determinations in which we have found that marking, which might otherwise have been in a conspicuous place is inadequate because of the appearance of words and symbols which in their context might suggest to the ultimate purchaser a country of origin other than the actual country of origin of the foreign article. For example, in HQ 734085 dated June 4, 1993, we found that the country of origin marking on the back of packages of frozen vegetables was not in a conspicuous location because of the prominent appearance of the trademark "American Mixtures" on the front of the package. Although the back of the package was a usual location for the country of origin marking, in that case because of the "American Mixtures" trademark, the country of origin marking on the package was not adequate. We indicated that the circumstance and context dictated that the marking appear on the front side of the packaging. See also HRL 735206 dated September 3, 1993, where we determined that multiple references to the trademark "Manhattan" on a shirt and its poly bag was such that the country of origin marking solely on the label on the neck of the shirt would not by itself be conspicuous.
Because of the multiple use of the word America, we find it necessary to require an additional country of origin marking to give effect to the purpose of 19 CFR 134.47 so that the ultimate purchaser is not misled or deceived as to the actual origin of the product he/she is contemplating purchasing. We find that GAC's proposal to place an additional country of origin marking on a hang tag attached to the front of the shoes will satisfy this requirement. The hang tag will be prominently displayed on the front of the shoes. In this location, it is likely to attract the attention of a potential purchaser. The country of origin marking on the hang tag is also large enough and in such a location that it should be noticed from a casual inspection of the shoes. The country of origin marking will be in letters large enough, and assuming that the marking on the finished hang tag is printed clearly, the ultimate purchaser should be able to be read the marking without strain. Accordingly, the combination of putting the country of origin marking on a sewn-in label on the tongue of the shoes, on the shoe box, and on the hang tag attached to the shoes should inform the ultimate purchaser of the country of origin of the shoes and clarify any confusion as to the origin of the shoes due to the use of the trademark "PERRY ELLIS AMERICA". Thus the proposed markings on the hang tag, shoe box, and on the shoes will satisfy the conspicuousness requirement of 19 CFR 134.47.

We note also that the U.S. address of GAC will also be printed on the hang tag, for the purpose of advising consumers where to obtain additional product information. Despite the presence of this U.S. address, we believe that the requirements of 19 CFR 134.46 would not be triggered. GAC's address on the hang tag is not misleading with regard to the country of origin because it is apparent that the U.S. address is only provided so that consumers will know how to contact the company for additional product information. A potential purchaser should understand that GAC's U.S. address does not relate to the origin of the shoes. See HRL 732816 dated November 24, 1989. Even if 19 CFR 134.46 were triggered by the U.S. address on the hang tag, we note that the requirements of 19 CFR 134.46 will be satisfied by country of origin marking on the hang tag because the country of origin marking is in close proximity, in a comparable size to the U.S. address, and is preceded by the words "Made in". In addition, we also believe that GAC's U.S. address printed on the bottom of the shoe box is not misleading because an ultimate purchaser should understand that GAC's address does not relate to the origin of the shoes. Therefore, we conclude that GAC's U.S. address on the bottom of the shoe box does not trigger the requirements of 19 CFR 134.46.

HOLDING:

The combination of the country of markings on the sewn-in label on the tongue of each shoe in the pair, on the shoe box, and on a hang tag attached to the shoes is sufficient to satisfy the requirements of 19 CFR 134.47. GAC's U.S. address printed on the proposed hang tag and the bottom of the shoe box does not trigger the requirements of 19 CFR 134.46.

A copy of this ruling letter should be attached to the entry documents filed at the time the goods are entered. If the documents have been filed without a copy, this ruling should be brought to the attention of the Customs officer handling the transactions.

Sincerely,

John Durant, Director,
Commercial Rulings Division

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