HQ 473802 - Trademark Infringement; Louis Vuitton Malletier Corporation “Epi” Design Trademark; U.S. Patent & Trademark Registration No. 2,263,903; Customs and Border Protection Recordation No. TMK 00-00545 - United States International Trade Commision Rulings

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HQ 473802

May 23, 2003

TMK-01-RR:IT:IP 473802 RSB

CATEGORY: TRADEMARKS

Mr. Derek Hydon
President, Ma Cher USA
11900 Olympic Blvd., Suite 540
Los Angeles, CA 90064

RE: Trademark Infringement; Louis Vuitton Malletier Corporation “Epi” Design Trademark; U.S. Patent & Trademark Registration No. 2,263,903; Customs and Border Protection Recordation No. TMK 00-00545

Dear Mr. Hydon:

This letter is in response to your letters dated December 16, 2002 and January 29, 2002, requesting a ruling on whether a travel document case made of material bearing an embossed wave-like pattern would infringe on the “Epi” design trademark (U.S. Patent & Trademark [USPTO] Registration No. 2,263,903; Customs and Border Protection [CBP] Recordation No. TMK 00-00545) registered and recorded in the name of Louis Vuitton Malletier Corporation (“Louis Vuitton”).

FACTS:

In your December 16, 2002 letter you state that the wave-like pattern on your travel document case is different from the aforementioned Louis Vuitton design trademark in that “it is not a heavy two tone emboss, the texture is completely different and the effect of the printing/emboss is slightly raised (not lowered).” In both the January 29, 2003 and December 16, 2002 letters, you state that the product will not be sold at retail and that it will be sold by your company to your client, Crystal Cruises to be given free of charge to its cruise passengers.

The sample Ma Cher travel document case provided to this office for examination is constructed of material with an embossed wave-like pattern in the color green. It also bears the phrase, “2003 World Cruise,” an embossed design of what appears to be a framed seahorse and a small design consisting of two seahorses separated by a crown. (A digital image of the travel document holder is provided below.)

Ma Cher Travel Document Case Close-up of Ma Cher Travel Document Case

The registered and recorded trademark at issue is the Louis Vuitton design trademark called “Epi” (USPTO Registration No. 2,263,903; CBP Recordation No. TMK 00-00545). This trademark consists of a wave-like pattern (a picture is provided below). The mark as used in commerce is an embossed wave-like pattern (photographs of the trademark as used in commerce are provided below). The trademark is protected for international class 18 inter alia, document cases, business card cases, billfolds and wallets.

Louis Vuitton “Epi” design trademark (USPTO Registration No. 2,263,903) as appears on the USPTO Trademark Registration Certificate Louis Vuitton “Epi” design trademark as used in commerce
www.vuitton.com
ISSUE:

Whether the wave-like design mark on the Ma Cher travel document case, as set forth in the FACTS section, infringes upon the registered and recorded Louis Vuitton “Epi” design trademark (USPTO Registration No. 2,263,903; CBP Recordation No. TMK 00-00545).

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 registered and recorded Louis Vuitton “Epi” trademark embodies an embossed wave-like design. The suspect mark on the Ma Cher travel document case embodies an almost identical embossed wave-like design. Although the Ma Cher design appears to be a less heavy two tone emboss than the “Epi” design and the Ma Cher embossing is raised less than on the “Epi” design, these factors do not help to substantially distinguish the Ma Cher design from the “Epi” design. Additionally, although we understand the arguments that the texture of the Ma Cher material is different from material used by Louis Vuitton and that the Ma Cher travel document case is not sold at retail, these points are not germane to determining whether the subject mark infringes on the protected trademark. As such, the design on the Ma Cher travel document case is substantially indistinguishable from the protected Louis Vuitton “Epi” design trademark.

HOLDING:

We find that the design on the Ma Cher travel document case is substantially indistinguishable from the Louis Vuitton “Epi” design trademark (USPTO Registration No. 2,263,903; CBP Recordation No. TMK 00-00545) and therefore the Ma Cher travel document case bears a counterfeit trademark. Accordingly, if the goods at issue are imported into the United States, they will be subject to seizure and forfeiture under 19 U.S.C. §1526(e).

Sincerely,

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

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