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HQ 474458





October 30, 2003

ENF-4-02-RR:IT:IP 474458 LLO

CATEGORY: TRADEMARKS

Stephen S. Spraitzar
Law Offices of George R. Tuttle
Three Embarcadero Center, Suite 1160
San Francisco, California 94111

RE: Trademark Infringement; ASICS Tiger “Two Pairs of Crossed Stripes” (U.S. Patent & Trademark Office [USPTO] Registration No. 1,273,615; U.S. Customs and Border Protection [CBP] Recordation No. TMK 02-01061)

Dear Mr. Spraitzar:

This is in response to your September 13, 2003 letter requesting enforcement action by U.S. Customs and Border Protection (CBP) against Company A, Inc. for the importation of Prospirit, Cruiser II and Aero shoes into the U.S., for sale to Company F, with respect to the Prospirit shoes, and Company B with regard to the Cruiser II and Aero Shoes. You request enforcement action against Company A, Inc. on behalf of your client, Asics Tiger Corporation for its registered and recorded mark consisting of two pairs of crossed stripes (U.S. Customs and Border Protection Recordation No. TMK 89-00280; U.S. Patent & Trademark Registration No. 1,303,804).

In order to promote the sound administration of Customs we are exercising our administrative discretion as set forth in 19 CFR §177.7(a), by declining to issue a ruling with respect to the Prospirit shoe, since questions concerning alleged infringement are already pending before a federal district court. However, you aver in your latest correspondence dated September 3, 2003, that “there is no litigation on the Cruiser II and Aero shoes.” You further assert that your client “has not brought any action against Company B for the sale of the Aero and Cruiser II shoes, nor are the Aero and Cruiser II shoes specifically mentioned in the Company F suit.” Since you initially aver that “there is no litigation on the Cruiser II and Aero shoes,” a ruling as to whether either infringes your client’s registered and recorded mark follows.

FACTS:

You allege on behalf of your client, ASICS Tiger Corporation (Asics), of Irvine, California, that the “Cruiser II” and “Aero” Style shoes, infringe the registered and recorded “Design of Two Pairs of Crossed Stripes,” (CBP Recordation No. TMK-89-00280; U.S. Patent & Trademark Registration No. 1,303,804). The allegedly offending shoes are imported by Company A, Inc, of Nashville, Tennessee, and sold to Company B for sale to the public. You state that based upon information available, the alleged seller of the infringing shoes Seller C Industries, LTD., is located in Hong Kong. You further allege that the shoes are probably manufactured by factories in Country X and exported from City D or City E.

ISSUE:

Whether the “Cruiser II” and “Aero” style shoes imported by Company A and distributed by Company B bear marks counterfeit of the registered and recorded Asics Tiger Corporation (USPTO Registration No. 1,303,804; CBP Recordation No. TMK 89-00280).

LAW & ANALYSIS:

Pursuant to 19 CFR § 133.21, a “counterfeit trademark” is a spurious trademark that is identical to, or substantially indistinguishable from, a registered trademark. Any articles of domestic or foreign manufacture imported into the United States bearing a counterfeit trademark shall be seized and, in the absence of the written consent of the trademark owner, forfeited for violation of the Customs laws.

Company A, Inc.’s allegedly infringing marks as used in commerce follow:

Images of Asics Tiger Corporation’s registered and recorded trademarks:

Insofar as our 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 the customs laws, where the trademark in question is registered with the U.S. Patent & Trademark Office and recorded with Customs (U.S. Customs and Border Protection, hereinafter "CBP"). See, 19 U.S.C. § 1526(e). See also, 19 CFR § 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 CFR § 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 CFR § 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. 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)). 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).

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 F.2d 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. Regarding "similarity" between marks, it has been noted that "a mark should not be dissected and considered piece-meal; rather, it must be considered as a whole in determining likelihood of confusion." Franklin Mint v. Master Mfg. Co., 667 F.2d 1005, 1007 (C.C.P.A. 1981).

In turning to the goods at issue herein, the critical factor in our analysis is the similarity of the registered and recorded trademark and the suspect marks at issue. With regard to the Cruiser II, the only difference between the protected trademark and the suspect mark is that the suspect mark is missing one of the double stripes that runs the length of the shoe, showing instead a single stripe. On the genuine Asics shoe, as shown above, double stripes run the length of the shoes with another set of double stripes vertically intersecting the horizontal set of stripes. Based upon these similarities we conclude that the suspect Cruiser II shoes bear a mark that is substantially indistinguishable from the registered and recorded trademark as it appears on genuine Asics athletic shoes.

With regard to the Aero shoes, the Aero mark differs from the registered and recorded mark to a some degree, but are alike in many respects. Although there are horizontal double stripes that run the length of the shoe that are intersected by the vertical double stripes, the horizontal double stripes on the Aero shoe start from a different point on the shoe, to present a “V” shape, as is the case on the genuine article. Additionally, although the vertical double stripes on the Aero shoe do not interconnect with the horizontal lines on the shoes, as is the case with genuine Asics shoes, they are similarly patterned in an alternating manner with the horizontal stripes appearing in a latticed fashion. Considering the similarities between Asics’ registered and recorded trademarks and the suspect mark appearing on the Aero style shoe, we conclude that the marks appearing on the Aero style shoes, is properly characterized as confusingly similar to the Asics’ registered and recorded mark.

CONCLUSION:

Based on the foregoing, we conclude that the Cruiser II style shoe in issue does bear a mark that is substantially indistinguishable from the “Design of the Two pairs of Crossed Stripes” owned by Asics Tiger Corporation and that the mark appearing on the “Aero” shoes properly characterized as confusingly similar to the protected mark.

Accordingly, the Cruiser II shoe bearing the suspect mark would be subject to seizure and forfeiture in accordance with 19 U.S.C. § 1526(e), as implemented by 19 CFR § 133.21, if imported. In addition, Aero shoes bearing the suspect mark would be subject to detention and possible seizure under 19 U.S.C. §1595a (c)(2)(c) as implemented by 19 CFR §133.22, if imported.

Should you have further questions, please contact Leandra Ollie of my staff at (202) 572-8707.

Sincerely,

George Frederick McCray, Esquire
Chief, Intellectual Property Rights Branch

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