HQ 471389 - Ruling request; plaid pattern; Burberrys Limited; U.S.P.T.O. registration number 1,214,222; U.S. Customs Service recordation number TMK 85-00069; likelihood of confusion; NY H83045 - United States International Trade Commision Rulings

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HQ 471389

January 31, 2002

TMK-1 RR:IT:IP 471389 CK

Eui Man Kim
ABI Customs Brokers
177-25 Rockaway Blvd.
Jamaica, NY 11434

RE: Ruling request; plaid pattern; Burberrys Limited; U.S.P.T.O. registration number 1,214,222; U.S. Customs Service recordation number TMK 85-00069; likelihood of confusion; NY H83045

Dear Mr. Kim:

Your classification ruling request submitted on behalf of your client, Cheveux Corp., to the National Commodity Specialist Division in New York was forwarded to the Office of Regulations and Rulings on July 19, 2001. Specifically, your request and samples were forwarded to the Intellectual Property Rights Branch for a determination as to whether the mufflers your client intends to import bear a mark that violates Burberrys Limited’s plaid design that is recorded with Customs. The samples are being returned to our NY office.

FACTS:

You submitted five samples of fabrics that will be made into mufflers. The mufflers are constructed of woven 100% acrylic fabric and feature a plaid pattern. Below are photographs of the samples and photographs of Burberrys’ trademarked plaid design.

Tan pattern of Cheveux Corp.

Gray pattern of Cheveux Corp.

Black pattern of Cheveux Corp.

Blue pattern of Cheveux Corp.

Green Pattern of Chevaux Corp.

Image from TMK 85-00069 (Reg. No. 1,241,222)

Burberrys Plaid

Burberrys as used in commerce

Burberrys as used in commerce

Burberrys as used in commerce

According to the U.S. Patent and Trademark Office website
www.uspto.gov Burberrys Limited’s registration number 1,241,222 (U.S. Customs recordation TMK 85-00069) is registered for goods in international class 25, which includes, interalia, capes, scarves, and shawls. The mark is described as “the designated colors are a feature of the mark and the colors and shades of colors are light tan, dark tan, light brown, dark brown, black, white, very dark red, dark red, medium red, light red, dark grey, medium grey and light grey.”

The Burberrys plaid design (TMK 85-00069) as can be seen above, consists of a tan background, that has three black lines with two white lines running in between the black, that intersect at a perpendicular angle with three black lines which have two white lines which run in between the black, forming a square. Around the black and white intersecting squares are red lines that form larger red squares.

The samples submitted with the ruling request, specifically the tan, contains a tan background that has four black lines with three white lines running in between the black, and these lines are intersected at a perpendicular angle by four black lines with three white lines running in between the black, forming a square. Around the black and white intersecting squares are red lines that form larger red squares.

ISSUE:

Whether the submitted samples bear marks that are violative of Burberrys Limited’s plaid design trademark recorded Customs as TMK 85-00069?

LAW AND ANALYSIS:

Customs makes a distinction between trademarks that are registered with the U.S. Patent and Trademark Office and recorded with Customs, and those that are registered but not recorded. See, generally, Montres Rolex, S.A. v. Snyder, 718 F.2d 524, 220 U.S.P.Q. 10 (2d Cir. 1983), cert. denied, 465 U.S. 1100 (1984), and Ross Cosmetics Distribution Centers v. United States, 18 CIT 979 (1994), for a discussion of the statutory schemes. In regard to recordation with Customs, see also, section 42 of the Act of July 5, 1946 (the “Lanham Act,” codified at 15 U.S.C. §§ 1051-1127), 15 U.S.C. § 1124.

Section 1526(e) of the Tariff Act of 1930, as amended (19 U.S.C. 1526(e)), provides that merchandise bearing a counterfeit mark that is imported into the U.S. in violation of 15 U.S.C. 1124, shall be seized for violation of the customs laws, where the trademark in question is registered with the U.S. Patent and Trademark Office and recorded with Customs. The term “counterfeit” is defined as “a spurious mark that is identical with, or substantially indistinguishable from, a registered mark.” 15 U.S.C. §1127. See also, 19 CFR 133.21.

Customs’ legal standard for determining infringement where the suspect mark is not counterfeit is “confusingly similar.” Under this standard, the dispositive issue is whether the suspect mark is likely to cause confusion, or to cause mistake, or to deceive. 15 USC §1114. In this regard, a central inquiry is whether there exists a “likelihood of confusion,” i.e., whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed, simply confused, as to the source of the goods in question.” Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 199 U.S.P.Q. (2d Cir. 1978).

Consumer confusion may take a number of forms, such as: initial interest confusion; post sale confusion; confusion as to source, sponsorship, affiliation, or connection. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition at 23.5 (4th ed. 1999).

In trademark cases, courts generally evaluate a variety of factors based on the decision in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d. Cir.), cert. denied, 368 U.S. 820 (1961), in order to determine whether there exists a “likelihood of confusion.” In Polaroid, the U.S. Court of Appeals for the Second Circuit set out an eight factor test consisting of: the strength of the mark; the degree of similarity between the two marks; the proximity of the products; the likelihood that the prior owner will bridge the gap; actual confusion; the defendant’s good faith in adopting its mark; the quality of the defendant’s product; and the sophistication of buyers.

We note that in most trademark cases administratively determined by Customs it is not necessary to address each and every one of the Polaroid factors. See, e.g., Headquarters memorandum (HQ) 467216, dated January 4, 2000 at page 3; HQ 469034, dated February 11, 2000 at page 3; and HQ 471283, dated January 11, 2002 at page 6. Accordingly, for purposes of this decision we have concentrated our analysis on the first three Polaroid factors.

In applying a likelihood of confusion test, “each factor must be evaluated in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product.” Lois Sportswear U.S.A., Inc. v. Levi Strauss Co., 799 F.2d 867, 872 (2d Cir. 1986). No single factor is preeminent or determinative. Thompson Medical Co. Inc. v. Pfizer, Inc. 753 F.2d 208, 214 (2d. Cir. 1985).

One of the first factors to be considered is the strength of the trademark. The strength of the mark is important in determining the scope of protection that is granted. In this case, Burberrys Limited’s plaid pattern is registered with the United States Patent and Trademark Office (PTO) as registration number 1,241,222, and is recorded with Customs as TMK 85-00069. The mark was registered on the Principal Register on the basis of acquired distinctiveness pursuant to section 2(f) of the Lanham Act. 15 U.S.C. §1052(f). Any mark registered on the Principal Register is prima facie evidence of the registrant’s ownership of the mark and its right to use the mark in commerce. 15 U.S.C. §1115(a).

In regard to non-verbal marks such as the plaid pattern at issue there is no primary meaning. Instead, the expression “secondary meaning” refers in this instance to the fact that the mark has come to be associated with, or identify, a particular source of goods. McCarthy on Trademarks at §15:9. This is pertinent in the instant case inasmuch as the PTO determined, at the time of registration, that the plaid pattern was associated with or identified a specific source, in this case, Burberrys Limited.

In assessing the strength of the mark, it is also relevant to consider the mark’s commercial strength. As a general matter, the stronger the mark, the greater the degree of protection that it will be afforded. Id. at § 11:72 (citing, Champions Golf Club v. Champions Golf Club, 78 F.3d 1111 (6th Cir. 1996). The strength of a trademark is generally the same as its commercial strength. Id. at §11:73.

In this case, while plaids of different colors and designs are used in fashion, Burberrys Limited is an international corporation, and its plaid is a very well-known mark. Based on the public’s association of the plaid pattern to Burberrys, the plaid pattern was registered on the principal register. The trademark plaid has been registered since 1983 and the mark is known, sold, and worn on an international scale.

The second factor to evaluate is the similarity of the design or marks. This factor is considered the pre-eminent factor in Customs determinations. See, HQ 467216, dated January 4, 2000 at page 3. In this case, both pieces of material are of a tan background fabric. Each consists of black lines with white lines running between the black lines. These black and white lines are intersected on a perpendicular angle by more black and white lines. On both pieces red lines form larger squares around the black and white lines. While the ruling samples have four black lines and three white lines and Burberrrys’ has three black lines and two white lines, the design of each mark is almost the same. The repeating pattern and the color scheme are remarkably similar.

Although the number of black and white lines in Burberrys’ plaid pattern may be different than the number in Cheveux’s design, the color scheme and the repeating pattern of the plaid used by Cheveux’s is the same as Burberrys’ trademarked plaid. The similarities are easily recalled and dissimilarities between the trademarked plaid design and the Cheveux mufflers, such as the number of intersecting lines, are not easily called to mind. The overall commercial impression created by the subject mufflers is remarkably similar to the impression created by Burberrys’ plaid design.

The third factor is the similarity between the products and services provided by the two parties. The greater the similarity between the products and services, the greater the likelihood of confusion. In this case, the ruling requester is producing the same merchandise for which the Burberry plaid trademark is registered, i.e., scarves in international class 25. We do not know where Cheveux, the ruling requester, intends to sell the mufflers. Burberrys’ plaid pattern trademark which is registered for clothing and scarves in international class 25 are sold in Burberrys stores, and in high-end department stores. It is possible that Cheveux will sell its mufflers in the same stores as Burberrys merchandise. Even if the Cheveux mufflers are not sold in the same stores as Burberrys’ merchandise, direct competition is not necessary.

Based on the three factors to which Customs gives greatest weight: strength of the mark; proximity of the goods; and the similarity of the marks, we conclude that the mufflers Cheveux Corp. proposed to import bear marks that are confusingly similar to the registered and recorded Burberrys Limited’s plaid pattern.

HOLDING:

The mufflers Cheveux Corp. proposes to import bear marks that are confusingly similar, as defined in 15 U.S.C. 1124, to the registered and recorded Burberrys Limited’s plaid pattern, and as such, may be subject to detention and seizure under 19 U.S.C. 1595(a)(c)(2)(C) for violation of 15 U.S.C. 1124.

Sincerely,

Joanne Roman Stump, Chief
Intellectual Property Rights Branch

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