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HQ 468896

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March 9, 2000

IT:IP:RR 468896 MS

CATEGORY: TRADEMARKS

Phillip A. Kantor, Esq.
City Center West, Suite 500
7251 West Lake Mead Boulevard
Las Vegas, Nevada 8912-8348

RE: Ruling Request

Dear Mr. Kantor:

This is in response to your request dated December 16, 1999, for a binding ruling under 19 CFR 177.1 (a)(1) regarding packaging for "Just Wireless" products.

FACTS:

Enclosed with the request for a binding ruling were copies of packaging for three products. The products consist of cellular phone accessories such as batteries and carrying cases. These "Just Wireless" accessories are intended for use with cellular telephone products which are not manufactured by the producer of the "Just Wireless" products. Copies of three packaging samples were submitted.

Sample One

Just

The front of the packaging bears WirelessTM, with "Just" appearing in red typeface. A green bar runs vertically down the left side of the packaging and bears Fits Nokia® in white typeface. The reference to Nokia appears in significantly smaller typeface than the Wireless trademark mark appearing at the top of the packaging. Additional information on the front of the packaging includes information relating to product description.

Just
The back of the packaging bears WirelessTM centered at the top of the packaging. "Just Wireless'' appears in bold typeface in eight additional places on the packaging relating to product description and warranty information. In typesize similar to that used for the warranty information, but in bold, appears:

*Nokia® is the registered trademark of an independently owned and operated company. This product has not been licensed or endorsed by the manufacturer of Nokia® products. All other company names and product names are trademarks or registered trademarks of their respective companies.

The back of the packaging also includes information regarding other products available from Just Wireless.

Sample Two

Just

The front of the packaging bears WirelessTM, with "Just" appearing in red typeface. A blue bar runs vertically down the left side of the packaging and bears Fits Motorola® in white typeface. The reference to Motorola appears in significantly smaller typeface than the Wireless trademark mark appearing at the top of the packaging. Additional information on the front of the packaging includes information relating to product description.

Just

The back of the packaging bears WirelessTM centered at the top of the packaging. "Just Wireless" appears in bold typeface in eight additional places on the packaging relating to product description and warranty information. In typesize similar to that used for the warranty information, but in bold, appears:

*Motorola®, StarTac®, MicroTac®, Populous®, Profile®, iDEN®, i500®, i700®, i1000®, Elite®, Talkabout®, and Timeport® are registered trademarks of an independently owned and operated company. This product has not been licensed or endorsed by the manufacturer of Motorola® products. All other company names and product names are trademarks or registered trademarks of the respective companies.

The back of the packaging also includes information regarding other products available from Just Wireless.

Sample Three

Just
The front of the packaging bears WirelessTM, with "Just" appearing in red typeface. An orange bar runs vertically down the left side of the packaging and bears Fits Ericsson® in White typeface. The reference to Ericsson appears in significantly smaller typeface than the Wireless trademark appearing at the top of the packaging. Additional information on the front of the packaging includes information relating to product description.

Just

The back of the packaging bears WirelessTM centered at the top of the packaging. "Just Wireless" appears in bold typeface in five additional places on the packaging relating to product description and warranty information. In typesize similar to that used for the warranty information, but in bold, appears:

*Ericsson® is the registered trademark of an independently owned and operated company. This product has not been licensed or endorsed by the manufacturer of Ericsson® products. All other company names and product names are trademarks or registered trademarks of their respective companies.

The back of the packaging also includes information regarding other products available from Just Wireless.

The ruling request did not include samples of the products contained inside the packaging.

ISSUE:

Whether the submitted packaging samples infringe the registered Nokia, Motorla and Ericsson trademarks.

LAW AND ANALYSIS:

At issue is whether the use of the protected trademarks will confuse the public so as to believe that the products contained in the packaging emanate from Nokia, Motorola or Ericsson. Section 33(b)(4) of the Lanham Act, 15 USC 1115(b)(4), provides for a "fair use" defense which states:

The use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party.

In Selchow & Richter v. Decipher, Inc., 598 F. Supp. 1489, 1503 (E.D. VA. 1984), the court considered whether another company's use of the Trivial Pursuit trademark served a permissible function. The court noted that:

[g]enerally, a competitor may not use another’s registered trademark to sell its product without permission. A competitor can, however, use another's registered trademark to describe aspects of its own goods. 15 USC 1115(b)(4). Defendant Decipher, thus, has a legal right, under the Lanham Act, to use the TRIVIAL PURSUIT trademark to describe aspects of its FORTE product so long as it does not attempt to deceive consumers as to the origin of FORTE.

The court found that the prolific use of references to Trivial Pursuit and the use of bold lettering went beyond merely describing the use of the product and was used to sell the product. The court determined that the constant use of the Trivial Pursuit trademark did not serve a permissible functional purpose but rather caused the public to believe that the product was actually a Trivial Pursuit product.

In Porter v. Farmers Supply Service, Inc., 617 F. Supp. 1175, 1187 (D. Del. 1985, aff'd, 790 F. 2d 882 (Fed. Cir. 1986), the court found that "[m]erely specifying that a replacement part will be suitable for use in a product bearing a trademarked name lacks the requisite element of actual or foreseeable deception to the public."

Just
With regard to the submitted samples, WirelessTM is a strong contra indicator which appears in large bold typeface on the front of the packaging and in multiple places on the back of the packaging. The use of the protected trademarks on the front of the packaging includes the strong descriptive term "Fits". We also note that the back of the packaging includes disclaimer language, providing that the product contained inside the packaging has not been licensed or endorsed by Motorola, Nokia or Ericcson. The use of the Motorola, Nokia and Ericsson trademarks on the submitted packaging samples would not be described as prolific. The references to these trademarks along with "Fits" and the prominence of the "Just Wireless" trademark does not deceive the consumer into believing that the product is actually a Motorola, Nokia or Ericsson product. Additionally, the disclaimer language on the back of the packaging informs the consumer that the goods are not produced by Motorola, Nokia or Ericcson.

It is noted that the trademark “Wireless an Ericsson Newsletter!” was registered with the Patent and Trademark Office under Registration No. 2,126,608. The registration includes a disclaimer that states “no claim is made to the exclusive right to use “Wireless” and “Newsletter” in Int class 16 and “wireless” in Int class 38 apart from the mark as shown.” Accordingly, the “Just Wireless” trademark does not infringe the “Wireless Ericsson Newsletter Now!” trademark.

Inasmuch as we were presented only with samples of the packaging, this determination relates only to the packaging itself and not to products that may be contained within the packaging.

HOLDING:

The use of the Nokia, Motorola and Ericsson trademarks on the submitted packaging samples constitutes a permissible use under 15 USC 1115(b)(4).

Sincerely,

Joanne Roman Stump

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