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HQ 965021




March 19, 2002

CLA-2 RR:CR:GC DBS

CATEGORY: CLASSIFICATION INTELLECTUAL PROPERTY RIGHTS

TARIFF NOS.: 3005.10.50; 3917.33.00; 3406.00.00; 3605.00.00; 3919.10.20; 3920.20.00; 3926.20.90; 4202.92.90; 4203.29.15; 4803.00.40; 5609.00.40; 8211.93.00; 8506.80.00; 8513.10.20; 8544.41.80

Ms. Leslie Araki
SST International, Inc.
10415 S. La Cienega Blvd.
P.O. Box 45055
Los Angeles, CA 90045

RE: Emergency Roadside Kits; GRI 3(b) sets; IPR Infringement

Dear Ms. Araki:

This is in response to your letter of April 5, 2001, to the Director, National Commodity Specialist Division, New York, on behalf of California Safety Limited, requesting the classification of an auto emergency kit, under the Harmonized Tariff Schedule of the United States (HTSUS). Your letter was referred to this office for reply. A sample was submitted. We regret the delay in responding.

FACTS:

The “Auto Emergency Kit” consists of a siphon pump, polyethylene poncho, polyethylene safety vest, tea light candles, matches, flashlight, batteries, emergency thermal blanket, 14’ tow rope with forgen hooks and plastic guards, 8’ booster cable, retractable utility knife with blade, bungee cord, roll of radiator repair tape, self-adhesive bandages and paper towellettes, a pair of work gloves of suede leather and woven man-made fabric, all packed inside a soft-sided plastic, reinforced, zippered bag with straps. The black bag is monogrammed on one side with a picture of a broken-down car with a man looking under the hood and a small red triangle signifying a hazard is behind the car. The kit is intended to be stored in a vehicle. The kit will ultimately be packed and sold in a box marked with the country of origin.

The battery in the Auto Emergency Kit is a “AA” sized dry cell battery. Approximately three quarters of the battery is black, and one fourth is copper colored. The copper colored portion is at the positive side of the battery. On the black portion of the battery are the words “new TITEN,” in copper, and a rainbow line underlines the words. “TITEN” is followed by the ® symbol. There is an additional warning and size information. Below are pictures of the battery at issue:

TMK 02-00064 (Reg. No. 1,144,787)

According to the registration certificate for Gillette Co.’s “copper top and black” design battery trademark, U.S. Patent and Trademark Office registration number 1,144,787, which is pictured above, the drawing is lined or marked for the color metallic brown, embodying a copper tint. The copper color is located at the top of the battery, which would be the positive side of the battery. The trademark is registered for dry cell batteries in international class 009. Below is a photograph of Gillette’s “copper and black” battery design as used in commerce from Filmart.com:

ISSUE:

Whether the Auto Emergency kit may be classified as goods put up in sets for retail sale.

II. Whether the battery contained in the instant Auto Emergency Kit bears a mark that is counterfeit of Gillette’s “copper and black” design trademark registered with the P.T.O. (reg. no. 1,144,787) and recorded with Customs (TMK 02-00064)?

LAW AND ANALYSIS:

I. Classification

Classification under the HTSUS is made in accordance with the General Rules of Interpretation (GRIs). GRI 1 provides that articles are to be classified by the terms of the headings and relative Section and Chapter Notes. For an article to be classified in a particular heading, the heading must describe the article, and not be excluded therefrom by any legal note. In the event that goods cannot be classified solely on the basis of GRI 1, and if the headings and legal notes do not otherwise require, the remaining GRIs may then be applied.

There is a variety of merchandise at issue, classifiable in numerous headings. GRI 3 must be considered in the classification of merchandise put up in sets for retail sale. GRI 3(b) provides that:

Mixtures, composite goods consisting of different materials or made up of different components, and goods put up in sets for retail sale, which cannot be classified by reference to 3(a), shall be classified as if they consisted of the material or component which gives them their essential character, insofar as this criterion is applicable.

In understanding the language of the HTSUS, the Harmonized Commodity Description and Coding System Explanatory Notes (ENs) may be utilized. ENs, though not dispositive or legally binding, provide commentary on the scope of each heading of the HTSUS, and are the official interpretation of the Harmonized System at the international level. Customs believes the ENs should always be consulted. See T.D. 89-80, 54 Fed. Reg. 35127, 35128 (August 23, 1989).

EN (X) to GRI 3(b) sets forth the following criteria for classification as goods put up in sets for retail sale. The merchandise must:

(a) consist of at least two different articles which are, prima facie, classifiable in different headings. Therefore, for example, six fondue forks cannot be regarded as a set within the meaning of this Rule;

(b) consist of products or articles put up together to meet a particular need or carry out a specific activity; and

(c) are put up in a manner suitable for sale directly to users without repacking (e.g., in boxes or cases or on boards).

The subject kit “consist[s] of at least two different articles which are, prima facie, classifiable in different headings,” and the kit is “put up in a manner suitable for sale directly to users without repacking.” However, the kit does not “consist of products or articles put up together to meet a particular need or carry out a specific activity.”

Customs has consistently maintained that a roadside emergency is not a particular need or specific activity. See HQ 083828, dated June 9, 1989; HQ 950678, dated December 30, 1991; HQ 950332, dated December 30, 1991; HQ 951092, dated February 11, 1992; HQ 951943, dated June 26, 1992. The exemplar sets in EN(X) fall within the meaning of GRI 3(b) because the items within the sets are related to one another in such a fashion that they interact together to serve a distinct purpose or function to enable a singular result to be achieved. For example, in EN(X)(2) hairdressing sets consisting of a pair of electric hair clippers, a pair of scissors, a brush and a towel, put up in a leather case, are sets within the meaning of 3(b) because all of the items are used in concert to achieve groomed hair.

The goods at issue do not interact together to meet a particular need or carry out a specific activity. Rather, the items remedy a variety of automobile and other roadside emergencies, such as taping a broken hose or holding an overloaded trunk closed with the bungee cord. Only a few of the items may be used in concert. A dead battery would require the use of no more than the flashlight and batteries (if needed for visibility), the safety vest, or poncho (if it is raining) and the booster cables. The bandages can be used for various things (a cut, a blister), but would not be used while siphoning gas. There are various needs fulfilled by this kit, but no one particular need. Therefore, the kit is not classifiable as goods put up in a set for retail sale. Accordingly, each item must be classified individually.

II. IPR Infringement

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. 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.

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

The trademark at issue (P.T.O. reg. no. 1,144,787; Customs TMK 02-00064) is for the design of color metallic brown, embodying a copper tint on the top portion of a cylindrical battery. The mark is the design only. The “TITEN” battery contained in the instant Auto Emergency Kit has a copper brown colored top. The name “TITEN” and Gillette’s name “Duracell” are not at issue. The sole basis of the trademark is the design, and as such, that is the only factor to be considered in this case. We note that the copper color on the “TITEN” battery is almost the same exact shade as the “metallic brown, embodying a copper tint” as used in commerce by Gillette. The “TITEN” batteries use of copper and black is substantially indistinguishable from Gillette’s “copper top and black” design trademark that is the subject of registration number 1,144,787 and recorded with Customs (TMK 02-00064). Therefore, the “TITEN” battery bears a mark that is counterfeit of Gillette’s “copper top and black” design trademark, as defined in 19 CFR 133.21.

We note, that our search of the U.S. Patent and Trademark Office’s website, www.uspto.gov, for the “TITEN,” trademark was unsuccessful. The mark does not appear to be registered in the United States.

HOLDING:

CLASSIFICATION:
The articles contained within the Auto Emergency kit are classified as follows:

The siphon pump is classifiable in subheading 3917.33.00, HTSUS, which provides for “Tubes, pipes and hoses and fittings therefor (for example, joints, elbows, flanges), of plastics: other tubes, pipes and hoses: other, not reinforced or otherwise combined with other materials, with fittings.”

The polyethylene poncho and polyethylene safety vest are classifiable in subheading 3926.20.90, HTSUS, which provides for “Other articles of plastics and articles of other materials of headings 3901 to 3914: Articles of apparel and clothing accessories (including gloves): other: other.”

The tea light candles are classifiable in subheading 3406.00.00, HTSUS, which provides for “Candles, tapers and the like.”

The matches are classifiable in subheading 3605.00.00, HTSUS, which provides for “Matches, other than pyrotechnic articles of heading 3604.”

The flashlight is classifiable in subheading 8513.10.20, HTSUS, which provides for “Portable electric lamps designed to function by their own source of energy (for example, dry batteries, storage batteries, magnetos), other than lighting equipment of heading 8512; parts thereof: lamps: flashlights.”

The batteries would be classifiable in subheading 8506.80.00, HTSUS, which provides for “Primary cells and primary batteries; parts thereof: other.”

The emergency blanket is classifiable in subheading 3920.20.00, which provides for “Other plates, sheets, film, foil and strip, of plastics, noncellular and not reinforced, laminated, supported or similarly combined with other materials: of polymers of propylene.”

The bungee cord and tow rope are classifiable in subheading 5609.00.40, HTSUS, which provides for “Articles of yarn, strip or the like of heading 5404 or 5405, twine, cordage, rope or cables, not elsewhere specified or included: other.”

The battery booster cable is classifiable in subheading 8544.41.80, HTSUS, which provides for “Insulated (including enameled or anodized) wire, cable (including coaxial cable) and other insulated electric conductors, whether or not fitted with connectors; optical fiber cables, made up of individually sheathed fibers, whether or not assembled with electric conductors or fitted with connectors: other electric conductors, for a voltage not exceeding 80 V: fitted with connectors: other.”

The retractable utility knife with blade is classifiable in subheading 8211.93.00, HTSUS, which provides for, “Knives with cutting blades, serrated or not (including pruning knives), other than knives of heading 8208, and blades and other base metal parts thereof: other: knives having other than fixed blades.”

The roll of radiator repair tape is classifiable in subheading 3919.10.20, HTSUS, which provides for “Self-adhesive plates, sheets, film, foil, tape, strip and other flat shapes, of plastics, whether or not in rolls: In rolls of a width not exceeding 20 cm: other.”

The self-adhesive bandages are classifiable in subheading 3005.10.50, HTSUS, which provides for “Wadding, gauze, bandages, and similar articles (for example dressings, adhesive plasters, poultices) impregnated or coated with pharmaceutical substances or put up in forms or packings for retail sale for medical surgical or veterinary purposes: adhesive dressings and other articles having an adhesive layer: other.”

The paper towellettes are classifiable in subheading 4803.00.40, HTSUS, which provides for “Toilet or facial tissue stick, towel or napkin stock and similar paper of a kind used for household or sanitary purposes, cellulose wadding and webs of cellulose fibers, whether or not creped, crinkled embossed, perforated, surface-colored, surface decorated or printed, in rolls or sheets: other.”

The work gloves are classifiable in subheading 4203.29.15, HTSUS, which provides for “Articles of apparel and clothing accessories, of leather or of composition leather: other: gloves of horsehide or cowhide (except calfskin) leather: other: with fourchettes or sidewalls which, at a minimum, extend from fingertip to fingertip between each of the four fingers.”

The soft-sided case that houses the kit is classifiable in subheading 4202.92.90, HTSUS, which provides for “ Trunks, suitcases, vanity cases, attache cases, briefcases, school satchels, spectacle cases, binocular cases, camera cases, musical instrument cases, gun cases, holsters and similar containers; traveling bags, toiletry bags, knapsacks and backpacks, handbags, shopping bags, wallets, purses, map cases, cigarette cases, tobacco pouches, tool bags, sports bags, bottle cases, jewelry boxes, powder cases, cutlery cases and similar containers, of leather or of composition leather, of sheeting of plastics, of textile materials, of vulcanized fiber or of paperboard, or wholly or mainly covered with such materials or with paper: other: other: other.”

HOLDING:

INTELLECTUAL PROPERTY RIGHTS:
The “TITEN” battery in the instant Auto Emergency Kit bears a mark that is counterfeit (substantially indistinguishable) of the registered (1,144,787) and recorded (TMK 02-00064) mark owned by Gillette for its “copper top and black” design.

Sincerely,

John Durant, Director
Commercial Rulings Division

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