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HQ 473447





March 12, 2003
TMK-01-RR:IT:IP 473447 RSB

CATEGORY: TRADEMARKS

Marnie Wright Barnhorst, Esq.
The Trademark Group
A Professional Law Corporation
2200 Symphony Towers
750 B Street
San Diego, CA 92101

Dear Ms. Barnhorst:

This letter is in response to your letter dated December 23, 2002, received in this office via e-mail on December 24, 2002, requesting a ruling regarding whether the purple bottle bearing the label “Luna di Luna” infringes on your client’s, Fratelli di vini LLC, various trademarks (U.S. Patent and Trademark Office Registration No. 2,261,166; Customs Recordation No. TMK 03-00006 and U.S. Patent and Trademark Office Registration No. 2,647,556-Supplemental Register; not recorded with Customs).

FACTS:

In your letter, you state that your client, Fratelli di vini LLC (“Fratelli di vini”), holds a trademark for a bottle configuration design in the color purple (U.S. Patent and Trademark Office Registration No. 2,261,166; Customs Recordation No. TMK 03-00006) on the U.S. Patent and Trademark Office (USPTO) Principal Register. You also state that Fratelli di vini holds a separate trademark for the color purple as applied to the bottle design (USPTO Registration No. 2,647,556) on the USPTO Supplemental Register. You allege that the “Luna di Luna” bottle infringes on Fratelli di vini’s various trademarks.

You provided this office, along with your letter, photographs of your client’s bottle. You also provided photographs of the allegedly infringing bottle.

With regard to USPTO Registration No. 2,647,556, according to 15 U.S.C. §1096, “Registration on the supplemental register or under the Act of March 19, 1920, shall not be filed in the Department of the Treasury or be used to stop importations.” See also 19 C.F.R. § 133.1. As provided by 15 U.S.C. §1096, Customs has no authority to protect this color purple trademark (USPTO Registration No. 2,647,556).

We instead focus our analysis on the Fratelli di vini purple bottle design trademark (USPTO Registration No. 2,261,166; Customs Recordation No. TMK 03-00006). According to the trademark registration certificate, the mark represents a bottle shaped in the form of a malformed droplet, indented on the top, right side of the bottle. (A drawing will follow.) The text on the certificate states that, “The drawing is lined for the color purple. The mark consists of the distinctive shape of the container of the goods.”

Fratelli di vini bottle design trademark as appears on its trademark registration certificate

The protected mark as used in commerce is represented by a bottle which is purple and shaped as previously described. A stylized letter “V” appears on the center, front of the bottle and the words “vinuva,” “pinot grigio” and “Italy” appear superimposed over the letter “V.” A label bearing the alcohol content and other information appears on the back of the bottle. A metallic foil bearing the letter “V” is wrapped on the top portion of the bottle. (The photographs you provided will follow.)

Protected Fratelli di vini wine bottle as used in commerce

The allegedly infringing “Luna di Luna” bottle is in the shape of a traditional wine bottle: tubular through three-fourth’s of the bottle, curved to narrow for the remaining one-fourth of the bottle. The name “Luna di Luna” is imprinted and raised on the top portion of the bottle before the bottle narrows. The bottle is colored purple, but “Luna di Luna” wines are also sold in green, blue and red bottles. On the front center of the bottle is an oval shaped label with the words “Luna di Luna,” the name(s) of the grape(s) used to make the wine and a picture of a maiden. Below the label is a signature. On the back of the bottle is a label bearing the alcohol content and other information. (The photographs you provided will follow.)

Luna di Luna wine bottle

ISSUE:

Whether the “Luna di Luna” bottle, as set forth in the FACTS section, infringes upon the registered and recorded design mark (USPTO Registration No. 2,261,166; Customs Recordation No. TMK 03-00006) of Fratelli di vini LLC.

LAW AND ANALYSIS:

Section 526(e) of the Tariff Act of 1930, as amended (19 U.S.C. §1526(e)) provides that merchandise bearing a counterfeit mark (within the meaning of section 1127 of Title 15) that is imported into the United States 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, where the trademark in question is registered with the U.S. Patent and Trademark Office and recorded with Customs. 19 U.S.C. §1526(e). See also, 19 CFR §133.21(b). The term “counterfeit” is defined as a “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(a).

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 customhouse of the United States

The 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, to cause mistake or to deceive. 15 U.S.C. §1114. In this regard, a central inquiry is whether the use of the suspect mark creates 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 simply confused, as to the source of the goods in question.” Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 199 USPQ (2d Cir. 1978).

The issue in this case is whether the “Luna di Luna” wine bottle infringes on the registered and recorded Fratelli di vini wine bottle (USPTO Registration No. 2,261,166; Customs Recordation No. TMK 03-00006). A mark is considered infringing upon a registered trademark, if it is “likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. §1114. In determining the likelihood of confusion as to the source of a product, the Second Circuit in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d.Cir.), cert. denied, 368 US 820 (1961) set forth the following factors to be considered in a trademark infringement action:
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 reciprocal of defendant’s good faith in adopting its own mark, the quality of defendant’s product, and the sophistication of the buyers.

The determinative value of each factor varies case-by-case. These factors are to be used only as an aid in determining the ultimate issue of likelihood of confusion. Therefore, it is not necessary to discuss all of the factors in every instance where the Polaroid test is employed. In this case, our inquiry focuses on the second Polaroid factor, the degree of similarity between the registered and recorded trademark and the suspect mark.

In determining the similarity of marks, courts often follow the three-part test of the 1938 Restatement §729(a) often characterized as the “sound, sight and meaning” trilogy. Plough, Inc. v. Kreis Laboratories, 314 F.2d 635 (9th Cir. 1963). That is, the conflicting marks are to be compared with respect to similarity of pronunciation, appearance, and verbal translation. Watkins Products, Inc. v. Sunway Fruit Products, Inc., 311 F.2d 496 (7th Cir. 1962). For design marks, similarity of appearance is controlling. 3 McCarthy §23:25. Similarity of appearance is determined by examining the marks overall impression. It is really nothing more than a subjective “eyeball” test. 3 McCarthy §23:25. The marks do not have to be identical; it is sufficient that enough be taken to deceive the public. 3 McCarthy §23:20. See, McLean v. Fleming, 96 U.S. 245 (1878).

The registered and recorded mark represents a purple bottle in the shape of a malformed droplet (USPTO Registration No. 2,261,166; Customs Recordation No. TMK 03-00006). The mark that is allegedly infringing is the “Luna di Luna” purple bottle in the shape of a traditional wine bottle. The two items are similar in that they are purple and that they are bottles for wine, but due to the different designs of the two bottles, one does not evoke an image of the other. The bottle designs are so dissimilar that confusion on the basis of the subject mark alone is very unlikely.

HOLDING:

In light of the above analysis, we find that the “Luna di Luna” wine bottle does not infringe on the Fratelli di vini wine bottle ((USPTO Registration No. 2,261,166; Customs Recordation No. TMK 03-00006).

Sincerely,

George Frederick McCray, Esq.
Chief, Intellectual Property Rights Branch

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