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HQ 475061




January 22, 2004

ENF 4-2 RR:IT:IP 475061 GG

CATEGORY: TRADEMARKS

TARIFF NO.: 8527.32.10.10

Mr. Mark E. Sullivan, Esq.
General Counsel, Bose Corporation
The Mountain
Framingham, MA 01701

RE: Ruling Request Regarding Infringement Determination; Bose Corporation; Configuration of Radio Enclosure, Miscellaneous Design; U.S. Patent & Trademark Office [USPTO] Registration Number 2,299,158, U.S. Customs and Border Protection [CBP] Recordation Number TMK 00-000083

Dear Sir:

This is in response to your request for a binding ruling under 19 CFR § 177, dated October 29, 2003, submitted on behalf of Bose Corporation, concerning certain imported Tozai clock radios the design of which you allege infringes the design of Bose’s above-referenced registered and recorded configuration trademark.

FACTS:

In a meeting at the OR&R offices on October 30, 2003, the Bose Corporation (hereinafter “Bose”) submitted a request for "a Customs ruling for an infringement determination on Bose Corporation’s trademark entitled ‘MISCELLANEOUS DESIGN’” (hereinafter “Trapezoidal Design”). Under cover of a letter signed by Mark Sullivan, General Counsel for Bose, dated October 29, 2003 which was submitted at the October 30th meeting by Walter Raheb, Senior Policy Advisor for Thelen Reid & Priest LLP, on behalf of Bose, information was provided concerning certain clock radios which Bose alleges infringe its registered and recorded configuration trademark. Samples of the allegedly infringing article and the genuine product were submitted at that time.

The trademark at issue owned by Bose, is registered with the U.S. Patent & Trademark Office (USPTO 2,299,158) and recorded with U.S. Customs and Border Protection (CBP TMK 00-00083), for radios in international class 9, and consists of the configuration of a radio enclosure of generally trapezoidal shape. As described in its trademark registration certificate, “[t]he mark consists of a configuration of a radio enclosure of generally trapezoidal cross section and its image. The broken lines [i.e., those covering the front (grill), sides, top, keypad area and display bezel] show matter that is not part of the mark and serves only to show the position of the mark.” The image of the subject trademark as it appears on its registration certificate is displayed below.

The protected Bose mark is represented by the configuration of a radio in a general trapezoidal shape, and is utilized in commerce as the “Bose Wave” Radio.” As used in commerce, the subject mark is approximately 14 inches wide, 8 and 1/2 inches deep, and stands 4 and 3/8 inches in height. An image of the Bose Wave radio as used in commerce is displayed below.

The product bearing the suspect mark consists of the configuration of a portable AM/FM alarm clock radio receiver, which is manufactured in China, imported by Tozai Corporation (hereinafter “Tozai”), distributed by East West Distributing Co., in Deerfield, Illinois, and sold at Walgreen’s stores. The suspect radio is approximately 9 and 1/4 inches wide, 5 inches deep, and stands 3 and 1/2 inches in height. In addition, the suspect radio appears in a general trapezoidal shape. A photograph of the allegedly infringing article is displayed below.

Bose is a commercially well-known name in the audio industry, particularly for its “Bose Wave” radios. The “Trapezoidal Design” mark at issue has been in wide used since May of 1993, and it has been the subject of extensive marketing and promotional campaigns. The distinctive “Trapezoidal Design” configuration mark enables consumers to readily identify the product as being a Bose product. The public associates the product configuration with Bose; indeed, the trademark was registered on the basis of having acquired distinctiveness pursuant to section 2(f) of the Lanham Act. 15 U.S.C. § 1052(f). The “Bose Wave” radio has, without question, become a strong mark due to its continued use in the marketplace. Therefore, as a strong mark, the Bose Wave radio is entitled to a great degree of protection.

ISSUE:

The issue presented is whether the design employed by the Tozai radio infringes the above-referenced registered and recorded Bose Trapezoidal Design configuration trademark.

LAW AND ANALYSIS:

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 J. Thomas McCarthy, McCarthy on 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 consumers 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).

The degree of similarity between two marks is generally determined by comparing the overall impression created by the marks, their pronunciation, and the meanings of their words and pictorial representations (i.e., the “sound, sight and meaning” trilogy). The mark should be compared with respect to similarity of appearance, pronunciation, verbal translation of designs (drawings and pictures), and suggestion (of the marks). 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Section 25:21 (4th ed. 1999). McCarthy further states that similarity of appearance amounts to a “subjective ‘eyeball’ test.” McCarthy, Section 23:25 at 23-64.2.

In turning to the goods at issue herein, the subject registered and recorded trademark put forward by Bose as being infringed by Tozai is the configuration of a radio enclosure, as described above. The allegedly infringing product also consists of the configuration of a radio. Both marks are used in connection with goods of the same international class, namely radios in international class 9.

The configuration that constitutes the registered and recorded Bose “Trapezoidal Design” mark, has three straight sides, one curved side, and four sharply angled corners. The front of the Bose Wave radio constituting the curved side consists of a distinctive arch, which extends outwardly along an arc between two of the straight sides.

The allegedly infringing Tozai radio also exhibits three straight sides and one curved side in a trapezoidal fashion. Although its corners are more rounded than the sharp corners found on the Bose Wave radio, the front of the suspect Tozai radio is also curved, and the outward arch is not as pronounced as the curved arch on the front side of the Bose Wave radio.

Although the Tozai radio is only one-half the size of the Bose Wave radio, its configuration is very similar, in overall appearance, to the configuration that is embodied in and protected by the registered and recorded Bose trademark. Despite the size difference between the Tozai radio and the Bose Wave radio, the overall impression created by the marks is essentially the same. Both configurations are of a radio enclosure of a generally trapezoidal shape. As can be seen in the images displayed above, the two configurations are similarly shaped and proportioned. This supports a finding that the suspect mark is confusingly similar to the registered and recorded Bose configuration mark. 3 McCarthy on Trademarks, § 23.53 (4th ed.).

On the basis that the Bose configuration is a strong mark, the proximity of the goods, and the similarity of the configurations, a likelihood of confusion as to source, sponsorship, or affiliation exists. Inasmuch as consumers associate the trapezoidal mark with Bose, another’s use of the mark is likely to suggest an affiliation with, or sponsorship by, the Bose Corporation. In addition, due to the similarity of the marks and the proximity of the products, there is a strong likelihood of post sale confusion. Accordingly, a finding of likelihood of confusion is warranted in this case.

HOLDING:

In light of the foregoing analysis, we find that the suspect mark, the shape of the Tozai radio, is confusingly similar to the registered and recorded Bose “Trapezoidal Design” trademark. As such, the Tozai radios would be subject to initial detention pursuant to 19 CFR §§ 133.22 and 133.25 and potential subsequent seizure and forfeiture pursuant to 19 U.S.C. § 1595a(c)(2)(c) for violation of 15 U.S.C. § 1124.

Sincerely,

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

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