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HQ 473581

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February 12, 2003

TMK-01-RR:IT:IP 473581 RSB

CATEGORY: TRADEMARKS

Ms. Georgina Enthoven
Yellowwood Wine Company
2737 Polk St., #3
San Francisco, CA 94109

Dear Ms. Enthoven:

This letter is in response to your letter dated December 9, 2002, requesting a ruling regarding whether wine bearing the “Waterford” name on the wine label would be infringing on any registered and recorded trademarks.

FACTS:

You state that your company, Yellowwood Wine Company, represents in the United States a South African winery called “Waterford Wine Estate” and your company wishes to import wine (Cabernet Sauvignon) from the Waterford Wine Estate bearing the word mark “Waterford” on its label. In an effort to avoid the possibility of detention or seizure by Customs of your wine upon importation into the United States, you requested a decision regarding the admissibility of the wine label bearing the “Waterford” name.

The registered and recorded trademark triggered in this case is the word mark “Waterford” (USPTO Registration No. 951,941; Customs Recordation No. TMK 93-00603) registered and recorded in the name of Waterford Wedgewood PLC Corporation. This trademark is protected for international class 21 goods, inter alia, houseware and glass.

The mark in question is the word “Waterford” on a wine label. The word “Waterford” is at the center of the label. A design of a fountain stands above the word and the words “Stellenbosch” and “Cabernet Sauvignon“ are printed underneath the word. A picture of the label will follow.

The label bearing the “Waterford” mark in question

ISSUE:

Whether the “Waterford” mark on the subject wine label, as set forth in the FACTS section, infringes upon the registered and recorded word mark “Waterford” (USPTO Registration No. 951,941; Customs Recordation No. TMK 93-00603) of the Waterford Wedgewood PLC Corporation.

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 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 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).

In certain cases, trademark protection may be extended to related goods. As is the case in determining trademark infringement of competitive goods, the modern rule of law on related goods gives the trademark owner protection against use of its mark on any product or service which would reasonably confuse the buying public as to the source, sponsorship, affiliation or connection of the product or service. 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition at §24:6, 24:24 (4th ed. 1999). Trademark protection extends to related goods to guard against “numerous evils” such as possible market expansion by the trademark owner, consumer confusion, tarnishment of reputation and unjust enrichment. Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987); 4 McCarthy §24:18.

The issue in this case is whether the merchandise in question bears a mark that is counterfeit of or confusingly similar to the “Waterford” trademark (USPTO Registration No. 951,941; Customs Recordation No. TMK 93-00603). 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 first three Polaroid factors: the strength of the mark, the degree of similarity between the registered and recorded trademark and the suspect mark, and the proximity of the products.

The strength of a mark refers to its distinctiveness or tendency to identify goods as emanating from a particular source. Gruner + Jahr USA Pub., 793 F. Supp. 1222 (S.D.N.Y. 1992), aff’d, 991 F.2d 1072. Also, the mark’s commercial strength should be considered in assessing the strength of the mark. As a general matter, the stronger the mark, the greater degree of protection it will be afforded. Champions Golf Club v. Champions Golf Club, 78 F.3d 1111 (6th Cir. 1996).

“Waterford” is the name of the town in which the “Waterford” glass-making company was founded. As “Waterford” is a name, it is not an inherently strong mark; however, the name has become synonymous with fine crystal through the company’s long history of producing fine crystal and its marketing efforts. As such, “Waterford” has become a strong mark for quality crystal.

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). 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 is the word “Waterford” (USPTO Registration No. 951,941; Customs Recordation No. TMK 93-00603). The mark that could presumably be infringing on the “Waterford” mark is the word “Waterford” that appears on the wine label together with a design of a fountain and the words “Stellenbosch Cabernet Sauvignon.“ The dominant elements on the wine label are the word “Waterford” and the fountain. As the protected mark is the “Waterford” word mark, that should be the focus of the analysis in examining the wine label, not the other elements surrounding the word. The protected word mark and the dominant word on the wine label are identical.

In regard to the proximity of the products, if the goods are non-competing, then one should determine if the goods are “related” so as to lead to consumer confusion in regard to source, sponsorship, affiliation or connection. 4 McCarthy at §24:6. Triangle Publications, Inc. v. Standard Plastic Products, Inc., 241 F. Supp. 613 (E.D. Pa. 1965). Courts have extended trademark protection under the “related goods” doctrine to areas of probable expansion by the trademark owner; this is also referred to as “bridging the gap.” 4 McCarthy §24:18. “Bridging the gap” refers to two possibilities. First, that the trademark owner presently intends to expand his sales efforts to the area in question. Or second, while there is no present intention to bridge the gap, consumers will assume otherwise and conclude, in this era of corporate diversification, that the parties are related companies. Lambda Electronics Corp. v. Lambda Technology, Inc., 515 F. Supp. 915 (S.D.N.Y. 1981).

The “Waterford” trademark is protected for class 21 goods (houseware and glass). Yellowwood Wine Company intends to import wine. Glass and houseware are items used for the home and for decorating purposes. The proximity between houseware and glass with wine is vast. The Waterford Wedgewood Corporation has not shown an intention to expand into any area of consumeable products. In fact, the “Waterford” mark has been granted to other companies for a variety of goods including a number of consumeable goods. Additionally, wine and winemaking is a very specialized field, as such the probability that a company known for fine glassmaking would venture into winemaking is highly unlikely. Due to this fact, consumers would not mistake the source of wine bearing the name “Waterford” as the same company that makes fine crystals. Therefore, the “related goods” doctrine cannot be applied here in “bridging the gap.”

We find the following: “Waterford” is a strong mark, but primarily in association to glassware; the marks are identical; the proximity between the goods is vast and the “related goods” doctrine cannot be applied in this case.

HOLDING:

In light of the above analysis, we find that the wine proposed to be imported by Yellowwood Wine Company bearing the “Waterford” mark on the label does not infringe on the “Waterford” trademark (USPTO Registration No. 951,941; Customs Recordation No. TMK 93-00603). We offer, however, no opinion as to whether other government agency restrictions may apply or whether other government agency requirements have been satisfied.

Sincerely,

Joanne Roman Stump, Chief
Intellectual Property Rights Branch

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