HQ 474122 - Best Plan International, Ltd.; “BP”; Possible Trademark Infringement; Louis Vuitton Malletier Corporation Monogram Trademark; U.S. Patent & Trademark Office Registration No. 297,594; Customs and Border Protection Recordation No. TMK 03-00159 - United States International Trade Commision Rulings

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HQ 474122

July 31, 2003

TMK-01-RR:IT:IP 474122 RSB

CATEGORY: TRADEMARKS

Mr. Peter S. Herrick
3520 Crystal View Court
Miami, FL 33133

RE: Best Plan International, Ltd.; “BP”; Possible Trademark Infringement; Louis Vuitton Malletier Corporation Monogram Trademark; U.S. Patent & Trademark Office Registration No. 297,594; Customs and Border Protection Recordation No. TMK 03-00159

Dear Mr. Herrick:

This letter is in response to your letter dated May 30, 2003 requesting a ruling on whether a proposed mark would infringe on any registered and recorded trademarks. The registered and recorded trademark that is triggered in this case is the Louis Vuitton Monogram trademark (U.S. Patent & Trademark Office [USPTO] Registration No. 297,594; Customs and Border Protection [CBP] Recordation No. TMK 03-00159) registered and recorded in the name of Louis Vuitton Malletier Corporation (“Louis Vuitton”).

FACTS:

In your May 30, 2003 letter, you state that your client Best Plan International, Ltd. (Best Plan), an importer located in Los Angeles, California, is contemplating the use of a proposed mark on leather and imitation leather luggage including: traveling bags, trunks, valises, satchels, hat boxes, shoe boxes, pouches, shoulder bags, travel kits, vanity cases, rucksacks, shopping bags, beach bags, hand bags, pocket books, briefcase type portfolios, wallets, billfolds, passport cases, key cases, credit card cases, business card cases and change purses. (These goods are within international class 18.) You state that Best Plan has filed an “Intent to Use” trademark application with the USPTO and you have provided this office with copies of documents attesting to that fact. You also state that this request pertains to “prospective transactions” and that this prospective transaction has never been considered and is not currently being considered by CBP, the U.S. Court of International Trade, the U.S. Court of Appeals for the Federal Circuit or any court of appeal.

The proposed mark in question (BP design), as can be seen on the sample handbag provided to this office, consists of the initials “B” and “P” superimposed on each other surrounded by flower-like and diamond-shaped designs. The first design is an outline of what appears to be a four-petal flower with thick rounded petals. The second design is an outline of what appears to be a four-petal flower similar to a Greek cross but with pointed ends. The third design is a diamond-shaped form made up of four diamond-shaped fragments. All of the items appear in a recurring sequence, in varying colors of blue, green, yellow, orange and red against a black backdrop. (A digital image of the handbag is provided below.)

Sample of Best Plan International Ltd. Handbag Bearing the Mark at Issue

The registered and recorded trademark at issue is the Louis Vuitton Monogram trademark (USPTO Registration No. 297,594; CBP Recordation No. TMK 03-00159). This trademark consists of the letters “L” and “V” superimposed on each other and three variations of floral designs. The designs include: a flower with four pointed petals, a flower with four pointed petals within a diamond-shaped backdrop and a third flower with four rounded petals within a circle. The trademark is protected for international class 18 inter alia, trunks, valises, traveling bags, satchels, hat boxes, shoe boxes used for luggage, handbags, and pocketbooks. (A picture of the design as appears in the CBP database will follow. Also, following is a photograph of the trademark as used in commerce.)

Louis Vuitton Monogram Trademark as appears in the CBP IPR Module

Louis Vuitton Monogram Trademark as used in commerce
www.vuitton.com

ISSUE:

Whether the proposed BP design mark, as set forth in the FACTS section, would infringe upon the registered and recorded Louis Vuitton Monogram trademark (USPTO Registration No. 297,594; CBP Recordation No. TMK 03-00159).

LAW AND ANALYSIS:

Insofar as CBP administration of the trademark laws to protect against the importation of goods bearing counterfeit marks is concerned, 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 customs laws, where the trademark in question is registered with the USPTO and recorded with CBP. 19 U.S.C. §1526(e). See also, 19 C.F.R. §133.21(b). 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 C.F.R. §133.21(a).

CBP also maintains authority to prevent the importation of goods bearing "confusingly similar" marks which, although neither identical nor substantially indistinguishable from protected marks, are violative nonetheless. 15 U.S.C. §1114. See also, 19 C.F.R. §133.22.

In either regard, as a general proposition, the Lanham Act provides for a claim of trademark infringement when a trademark holder can demonstrate that the use of its trademark by another is “likely to confuse" consumers as to the source of a product. Indeed, statutory language of the Lanham Act specifically prohibits the use of marks that are “likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association.” (See, Lanham Act, sections 1-45, 15 U.S.C. 1051-1127, also, e.g., Section 43(a), 15 U.S.C. 1125(a); Soltex Polymer Corp. v. Fortrex Industries, 832 F.2d 1325 [2d Cir. 1987]). We note that a plaintiff in a trademark infringement case need not establish that all or even most customers are likely to be confused. Plaintiff need only prove that an appreciable number of ordinarily prudent consumers will be confused. Estee Lauder, Inc. v. The Gap, Inc., 932 F. Supp. 595 (S.D.N.Y. 1996).

The term “source” is construed liberally. That is, “likelihood of confusion" relates to any type of confusion, including confusion of source, confusion of affiliation, confusion of connection; or confusion of sponsorship. (See, McCarthy, Trademarks and Unfair Competition, Section 23:8 (Rel. 2 6/97). Lanham Act, Section 43(a). (See also, Champions Golf Club v. Champions Golf Club, 78 F3d 1111, (6th Cir., 1996); Eclipse Associates, Ltd. v. Data General Corp., 894 F.2d 434, (“A U.S. District Court’s primary task, is to make factual determinations as to whether the public would likely be deceived or confused by similarity of the marks as to source, relationship or sponsorship.”)(Emphasis added). In addition, the court in Merchant & Evans, Inc. v. Roosevelt Bldg. Products Co. Inc., 963 F.2d 628, (3d Cir. 1992) stated that trademark infringement only occurs when use sought to be enjoined is likely to confuse purchasers with respect to such things as product’s source, its endorsement by plaintiff, or its connections with plaintiff. (Emphasis added).

In order to establish “likelihood of confusion,” courts in each of the Federal Circuits have adopted the test first laid out in Polaroid v. Polarad Electronics Corp., 287 F2d 492, (2d Cir), cert. denied, 368 U.S. 820, 7 L. Ed. 2d 25, 82 S. Ct. 36 (1961). (See also, White v. Samsung Electronics America Inc., 971 F.2d 1395, amended, rehearing denied, 989 F.2d 1512, cert. denied, 113 S.Ct 2443 (9th Cir. 1992); E.A. Engineering, Science and Technology Corp. v. Environmental Audit, Inc.,703 F.Supp. 853 (C.D.Cal 1989); Escerzio v. Roberts, 944 F.2d 1235, rehearing denied (6th Cir. 1991). According to Polaroid, an analysis of factors including, but not limited to, the strength of the mark, the similarity of the marks, the proximity of the products, actual confusion and sophistication of the buyers are germane to establishing likelihood of confusion. Courts have been careful to note that no single Polaroid factor is more important than any other and that not all factors need be considered. Notwithstanding, in the vast majority of trademark infringement cases, “similarity of the marks” has been a factor upon which most courts have placed great emphasis.

In turning to the goods at issue herein, both the proposed BP design mark and Monogram trademark consist of two letters superimposed on each other surrounded by three different floral designs. The two marks differ in that each consists of two different letters; the proposed BP design mark consists of the letters “B” and “P” and the Monogram trademark consists of the letters “L” and “V.” Both marks employ floral-shaped designs; however, the two marks differ in that the Monogram trademark employs distinct floral designs while the BP design mark employs multi-colored floral-type designs employing much less detail. Although the overall BP design is reminiscent of the Louis Vuitton Monogram trademark, each element on the BP design mark differs from each element on the Monogram trademark. As such, goods bearing the BP design mark are not likely to confuse consumers to believing that its source is the same as that of goods bearing the Louis Vuitton Monogram trademark.

HOLDING:

Based on the foregoing, we find that the BP design mark does not infringe on the Louis Vuitton Monogram trademark (USPTO Registration No. 297,594; CBP Recordation No. TMK 03-00159).

Sincerely,

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

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