HQ 471485 - Trademark; leather belts; TMK 96-00084; TMK 97-00771 - United States International Trade Commision Rulings

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HQ 471485

February 28, 2002

TMK-1 RR:IT:IP 471485 CK

Mr. Leibert Greenberg, Esq.
Law Offices of Leibert L. Greenberg
475 Park Avenue South, Suite 2500
New York, NY 10016

RE: Trademark; leather belts; TMK 96-00084; TMK 97-00771

Dear Mr. Greenberg:

This is in reply to your letter dated August 9, 2001, on behalf of your client, Golden Kitty Group, Inc., in which you request a ruling as to whether four samples of belts you provided violate any federally registered trademarks.

FACTS:

The four samples presented for our consideration are as follows:

The first item is style BW2001, which are brown or black leather belts with a silver-colored metal buckle. The name “Golden Kitty” appears on the underside of the buckles. You state that the actual belts to be imported will not have the name printed on the underside of the buckle. On the front or outer side of the buckle, a Greek key design is printed in two rows along the rectangular belt buckle. In the center of the buckle, there is a raised circle emblem that is ringed in the Greek key design with a face appearing therein. On the other piece of the buckle which holds the belt in place is an open circle in silver; it has the Greek key design and two very small, raised animal faces in a circle that appear at 3 o’clock and 9 o’clock positions on the circle. Two photographs appear below.

Style BW 2001

Style BW 2001

The second sample is style BW2003, which is a brown or black leather belt with a silver belt buckle. On the belt buckle and the loop part of the buckle, the words “BigBOSS” is stamped into the metal. On the underside of the belt buckle, the sample contains the words “Golden Kitty,” but that will not be on the actual imported belts. A photograph of style BW 2003 appears below.

Style BW 2003
The third sample is style 6422, which is a brown or black leather belt with a silver buckle. The buckle and the metal portion of the loop are both stamped with “501.” According to the ruling request, the actual imported merchandise will bear the number “507” not “501”. Once again, the underside of the sample belt buckle contains the words “Golden Kitty,” but that will not be on the actual imported belts. A photograph of style BW 6422 appears below.

Style 6422

The fourth sample is style 1117, which is a brown or black leather belt with a silver buckle. The belt buckle is stamped with the letters “G K.” Again, the underside of the sample belt buckle contains the words “Golden Kitty,” but that will not be on the actual imported belts. A photograph of style 117 appears below.

Style 1117

All four samples are stamped with “TM,” denoting a common law trademark and the ruling requester states that there are registration applications filed with the U.S. Patent and Trademarks Office for all four of these samples.

There are two federally registered trademarks that we will consider in our analysis. Pictured below is the “stylized CK” trademark owned by Calvin Klein Trademark Trust. It is registered at the U.S. Patent and Trademark Office as reg. no. 2,080,100, for, among other goods, belts, and the mark is recorded with Customs as TMK 97-00771.

TMK 97-00771

Pictured below is the “Medusa head design” owned by Gianni Versace S.P.A. registered with the U.S. Patent and Trademark Office as reg no.1,733,048 for belts. The mark is recorded with Customs as TMK 96-00084.

TMK 96-0084

ISSUES:

Whether belt buckle style BW2001, which bears “a raised animal like head within a circle” design mark, violates Gianni Versace’s “Medusa head” design, registered and currently recorded with Customs as TMK 96-00084?

Whether belt buckle style BW2003, which bears the mark “Big BOSS,” violates a trademark that is registered and currently recorded with Customs?

Whether belt buckle style BW6422, which bears the mark “507,” violates a trademark that is registered and currently recorded with Customs?

Whether belt buckle style BW1117, which bears the mark “GK,” violates Calvin Klein Trademark Trust’s “stylized CK” trademark that is registered and currently recorded with Customs as TMK 97-00771?

LAW AND ANALYSIS:

For purposes of this response pursuant to 19 CFR 177.1 our reply is limited to those trademarks that are currently recorded with the U.S. Customs Service. It is not possible for Customs to identify the universe of trademarks, outside of the Customs IPR module that may possibly be infringed or violated by the marks on the submitted belts. This ruling may not be relied on for trademarks that may be registered with the U.S. Patent and Trademark Office, but not recorded with Customs. Merchandise that bear marks which are registered with the U.S.P.T.O., but not recorded with Customs may be subject to seizure pursuant to 19 U.S.C. 1595a(c)(2)(C) for violation of 18 U.S.C. 2320.

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.

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.

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 and, in the absence of the written consent of the trademark owner, forfeited for violation of the customs laws. See also, 19 CFR 133.21(b). In the civil administrative enforcement of goods which bear counterfeit marks, it is Customs policy to seize under 19 U.S.C. 1526(e) where the trademark in question is registered with the U.S. Patent and Trademark Office and recorded with Customs.

In pertinent part, 15 U.S.C. 1124 provides that:

[N]o article of imported merchandise which shall copy or simulate the name of any domestic manufacture, or manufacturer, or trader, or of any manufacturer or trader located in any foreign country , or which shall copy or simulate a trademark registered in accordance with the provisions of this chapter shall be admitted to entry at any customshouse of the United States

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.” McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1130 (2d Cir. 1979), quoting, Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978), cert. denied, 439 U.S. 1116 (1979).

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).

“The question is one of fact, the determination of which involves a consideration of all the circumstances surrounding the parties’ simultaneous use of the disputed mark.” Phoenix Manufacturing Co., v. Plymouth Mfg. Co., 286 F. Supp. 324 (District Ct. Mass. 1968) quoting Durox Co. v. Duron Paint Manufacturing Co., 320 F. 2d 882, 885 (4th Cir. 1963).

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. Accordingly, for purposes of this decision we have focused our analysis on the first three Polaroid factors, and in particular, on the similarities between the marks.

In this case, the style BW2001 with the raised “animal-like figure” design is reminiscent of Gianni Versace’s “Medusa head design.” The “Medusa head design” is registered and recorded for belts. The recordation is currently effective until November 17, 2002. As a general matter, the courts have categorized marks into four classes in increasing order of strength or distinctiveness: generic; descriptive; suggestive; or fanciful or arbitrary. E.g., Arrow Fastener Co., Inc. v. The Stranley Works, 59 F.3d 384, 391(1995). Strong marks are entitled to the highest degree of protection. The Versace name and its trademarks are renowned in the fashion industry. There is no question that Versace’s “Medusa head design” is recognized around the world, and as such is a strong mark. Additionally, the mark is a fanciful picture, it is distinctive in its appearance, and based on that distinctiveness, its use is associated with Versace. As for the proximity of the products the ruling request does not provide information where the belts will be sold. Versace merchandise is sold in high-end department stores and boutique shops. Versace merchandise can also be found on the Internet. It is entirely possible that both Versace’s merchandise and the subject belts will reach the same consumers. As for the degree of similarity that exists between the mark on the subject belt and Versace’s “Medusa head design” there appears to be little similarity. While the subject belt buckle is reminiscent of the “Medusa head design” upon inspection there is actually very little similarity. Versace’s trademark is a human head with snakes for hair. The mark on the subject belt appears to be a lion with a mane. It is unlikely that a consumer will mistake the mark on the subject belt for Versace’s “Medusa head design.” Based on the dissimilarity of the marks, we conclude that the mark on belt style BW2001 is not counterfeit of, nor confusingly similar to the registered and recorded Gianni Versace “Medusa head design” (TMK 96-00084). As such, there is no intellectual property restriction upon importation of the subject belts.

The second sample is of the belt buckle for style BW2003, which bears the word mark “Big BOSS.” There are numerous expired recordations for “BOSS” such as Hugo Boss A.G.’s for leather goods; Brookhurst, Inc.’s “BOSS” for clothing; and Ford Motor Company’s “BOSS” for toy replicas of automobiles. There are two current recordations for “BOSS,” owned by Hugo Boss A. G., but the mark is registered and recorded for perfumes and sunglasses. Since the mark “BOSS” was registered and recorded by three different companies, the strength of the mark is questionable. Two different companies used the word mark “BOSS” for clothing. In comparing the “BOSS” mark to the “Big BOSS” mark it is apparent there is some degree of similarity between them, but not to such an extent that consumer confusion would arise from the use of “Big BOSS” on the belt buckle. As such, there are currently no recordations with the Customs Service that are violated or infringed by the proposed importation of the belts with the “Big BOSS” mark of style BW2003.

The third belt buckle sample is style 6422, which bears the number mark “507.” The actual sample has the number “501” stamped in it; however, we note that the ruling requester states that the actual belts to be imported will bear the number “507.” There are currently no recordations that employ the numbers “501,” or “507,” or any variation that approximates the numbers “501” or “507.” Therefore, belt buckle style 6422, which will have “507” stamped into it does not violate or infringe a recorded trademark as of the date of this ruling. The fourth belt buckle sample is style 1117, which bears the mark “G K.” The stylized “CK” owned by Calvin Klein Trademark Trust, is registered with the U.S.P.T.O. and is recorded with Customs as TMK 97-00771. It is registered and recorded for a variety of wearing apparel, including belts. As stated earlier, the strongest marks are entitled to the greatest degree of protection. Calvin Klein’s “CK” is a well-known name on an international scale. Additionally, in HQ 467503, dated July 20, 1999, we found that Calvin Klein’s “CK” mark is strong, and entitled to the highest degree of protection. In regard to the proximity of the products, the subject merchandise consists of belts, for which TMK 97-00771 is also registered and recorded. Where the belts will be sold was not submitted in the ruling request, but it may be presumed that “CK” belts may be sold in the same channels as the proposed “GK” belts. However, in terms of the similarity of the marks, the mark on the subject merchandise, as opposed to the merchandise in HQ 467503, (in which that merchandise was found to be counterfeit), the “GK” is not stylized. The “G” and “K” measure the same height on the sample belts. In HQ 467503, which involved a “GK” on wallets, the “G” and “K” measured the same heights as the stylized “CK” in TMK 97-00771, (that is the “G” was proportionally as small as the “C” and the “Ks” were also the same height) and the letters were virtually identical to the “CK” mark except for the use of the “G” in place of the “C.” In this case, there is no style to the “GK;” they are merely two capitalized letters of the same height and there is a space/gap that separates the letters “G” and “K” unlike that of the stylized “CK.” The similarity between the marks in HQ 467503 is not found here, and thus that case is distinguishable from the present case. In the instant case, although Calvin Klein’s mark is strong, we find that the dissimilarity in the marks as used on the goods, i.e., a non-stylized “GK” on buckle style 1117, is not counterfeit of nor confusingly similar to, Calvin Klein Trademark Trust’s “stylized CK,” TMK 97-00771.

HOLDINGS:

1. The mark on belt style BW2001 is not counterfeit of, nor confusingly similar to the registered and recorded Gianni Versace “Medusa head design” (TMK 96-00084); and the subject belt, as represented above, would not violate any intellectual property rights that are registered and recorded on the date of this ruling.

2. There are no recordations with the Customs Service that are violated or infringed by the proposed “Big BOSS” mark on style BW2003 as of the date of this ruling.

3. There are no recordations with the Customs Service that belt buckle style 6422, which will have “507” stamped into it that violates or infringes as of the date of this ruling.

4. The non-stylized “GK” featured on belt buckle style 1117, as represented above, is not counterfeit of nor confusingly similar to, Calvin Klein Trademark Trust’s “stylized CK,” TMK 97-00771.

Please note that our reply is limited to those trademarks that are currently recorded with the U.S. Customs Service and have “live” underlying trademark registrations. This ruling may not be relied on for trademarks that may be registered with the U.S. Patent and Trademark Office, but not recorded with Customs. We also note that merchandise that bear marks which are registered with the U.S.P.T.O., but not recorded may be subject to seizure pursuant to 19 U.S.C. 1595a(c)(2)(C) for violation of 18 U.S.C. 2320.

Sincerely,

Joanne Roman Stump, Chief

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