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HQ 472730

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September 25, 2002

TMK-1 RR:IT:IP 472730 PBP

CATEGORY: TRADEMARKS

Heather C. Litman, Esq.
Stein Shostak Shostak & O’Hara
515 South Figueroa Street
Suite 1200
Los Angeles, CA 90071-3329

RE: “Color Labs” Brand Ink Jet Cartridge – Fair Use

Dear Ms. Litman:

This is in response to your letter dated June 6, 2002, received in this office on June 26, 2002, requesting a binding ruling under the Customs Regulations (19 CFR Part 177) on whether certain packaging for Color Laboratories’ printer cartridge product E321 infringes a federally-registered U.S. trademark.

FACTS:

Enclosed with the request for a binding ruling was a prototype of packaging for Color Laboratories’ E321 black printer cartridge. The product consists of a replacement ink jet printer cartridge compatible with Epson® “Stylus C-70” and “Stylus C-80“ printers; no sample of the product was enclosed with the aforementioned packaging. These Color Laboratories printer cartridges are intended for use with printer products that are not manufactured by Color Laboratories

The product’s packaging consists of a six-sided cardboard carton with its rear panel extending slightly higher than its front panel in order to provide a flap that may be used for hanging the product on a retail display. The front, back, and sides of the packaging bear the stylized mark “Color Labs 100% Guaranteed Inks” on a gold seal background resembling a medal and ribbon. In addition to this stylized mark (logo), the manufacturer’s name, Color

Laboratories, appears on the front and back panels of the packaging, and the words “Color Laboratories” underscored by a row of dots with the word “GUARANTEED” underneath, appears on both sides and the front panel of the carton. Color Laboratories’ internet domain address, www.colorlaboratories.com, is printed on the left and right sides of the carton. The manufacturer’s name, “Color Laboratories,” appears a total of five times and the Color Labs logo appears a total of four times on the proposed packaging.

Additional information on the front and top of the packaging, appearing in essentially the same typeface as the surrounding print, includes model numbers of Epson printers that the product can be used with and indicates that the cartridge replaces the EPSON TO32120 cartridge. Appearing in slightly smaller typeface than that used for the surrounding warnings and warranty information, on the back of the package, is: “Color Labs 100% Guaranteed Ink is a registered trademark. All other company products, part numbers and brand names are trademarks or registered trademarks of their respective owners.” Also, in slightly smaller typeface than the surrounding print, the words “[n]ot manufactured by EPSON ” appear on the packaging a total of five times.

Seiko Epson Kabushiki Kaisha (Epson) has registered the trademark “EPSON” with the U.S. Patent and Trademark Office in international class 002, which includes filled ink cartridges for computer printers, word processors, and copy machines, and has recorded that trademark with U.S. Customs (U.S. PTO Registration No. 2,144,386; Customs Recordation No. TMK 02-00062). Epson has also registered the trademark “EPSON STYLUS” with the U.S. PTO in international class 002, which includes filled ink cartridges for computer printers, word processors, and copy machines (U.S. PTO Registration No. 2,182,236. The trademarks consist of the typed drawings (word marks), “EPSON” and “EPSON STYLUS”, respectively.

ISSUE:

The issue presented is whether the submitted packaging prototype infringes Epson’s federally-registered trademarks (U.S. PTO Registration No. 2,144,386; U.S. PTO Registration No. 2,182,236).

LAW AND ANALYSIS:

The test for trademark infringement is whether use of the protected trademarks on Color Laboratories’ product packaging is likely to cause confusion, or to cause mistake, or to deceive the public such that an
appreciable number of consumers will mistake Epson as the origin, source, or sponsor of the Color Laboratories products. Section 33(b)(4) of the Lanham Act, 15 U.S.C. §1115(b)(4), provides for a "fair use" defense when:
the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, . . . or 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.

The statute, therefore, permits others to use protected marks to describe features of their own products, subject to the limitations that such descriptive use be “otherwise than as a mark” and employed “fairly and in good faith only to describe the goods or services.”

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 Federal Circuit held that a seller of replacement disks for a trademark owner’s harvesting machines did not infringe the mark by identifying its cutter blades as those that “fit” the trademark owner’s harvester. In that case, 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." Further, in Toro Co. v. R & R Products Co., 787 F. 2d 1208 (8th Cir. 1986) the 8th Circuit held that there was no likelihood of confusion under the Lanham Act where a seller of replacement parts for the trademark owner’s lawn mowers used the trademark owner’s part numbers preceded by the letter “R” and indicated that the parts were “to fit” or “replaces” the original parts and disclaimed that “any of our products are original equipment parts” and that any reference to the trademark owner was for identification purposes only. See also J.M. Huber Corp. v. Lowery Wellheads, Inc., 778 F. 2d 1467 (10th Cir. 1985) (use of trademark owner’s part numbers on seller’s replacement wellheads does not infringe the trademark where seller conspicuously used its own name).

In Selchow & Righter Co. 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:

Generally, 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 U.S.C. §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 products so long as it does not attempt to deceive consumers as to the origin of FORTE.

In that case, the court found that FORTE’s use of TRIVIAL PURSUIT in large print in numerous locations went beyond merely describing a use of the FORTE product and, rather, serves to sell its product. The court determined that the pervasive 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.

Regarding the submitted sample, “Color Labs 100% Guaranteed Inks” is prominently displayed on the front, back, and sides of the packaging in typeface proportionally larger than other printed information on the packaging. Use of the protected trademarks on the front of the packaging includes the terms "Replaces" and “For” followed by either the original Epson cartridge number or the model number of the Epson printer with which the cartridge may be used. In addition, disclaiming language “Not Manufactured by EPSON” is found in close proximity to each Epson trademark as well as on several other locations on the packaging.

The use of Epson trademarks on the submitted packaging prototype cannot be considered misleading or confusing. The terms “Replaces” and “For” describing the product as a replacement part for original Epson printer cartridges modifies the trademarks in all instances. The prominence of “Color Labs 100% Guaranteed Inks” and the appearance of the seller’s trade name in numerous places on the packaging also serve to prevent a consumer from being deceived and believing that the product is actually an Epson product. Additionally, disclaimer language on the packaging adequately informs the consumer that Epson does not produce the goods.

Inasmuch as we were presented only with samples of the product’s packaging, this ruling letter relates only to that packaging and not to products that may be contained therein.

HOLDING:

In conformity with the foregoing, the packaging described above, which you propose to use for imported inkjet printer cartridges, does not infringe the aforementioned federally-registered Epson trademarks

Sincerely,

Joanne Roman Stump
Chief, Intellectual Property Rights Branch


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