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HQ 475322

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February 11, 2005

TMK-01-RR:IT:IP 475322 RSB

CATEGORY: TRADEMARKS

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

RE: HQ 474600 RSB; Dae Young Company; Boutique Jaquard Design

Dear Mr. Herrick:

This is in reference to Headquarters Ruling Letter (HQ) HQ 474600, dated November 5, 2003, whereby this office determined that the fabric design entitled “Dae Young Boutique Jaquard,” which you submitted to this office for review, would not infringe on any protected trademark or copyright in light of the facts available at that time. The ruling letter also stated that the determination would be subject to change if and when contrary evidence became available. Contrary evidence has been presented and as such we are issuing the following new ruling.

FACTS:

In your original submission dated July 14, 2003, you stated that your client, Dae Young Company (“Dae Young”), an importer located in Los Angeles, California, was contemplating importing various goods bearing a design entitled “Dae Young Boutique Jaquard.” The Dae Young Boutique Jacquard design consists of a recurring pattern of two letters “B” superimposed on each other and two inverted letters “D” superimposed on each other. An image of that design appears below.

Image of “Dae Young Boutique Jaquard” design as provided by Dae Young

In examining the design and the facts readily available at that time, this office determined that the Dae Young Jacquard design, which although protected as a copyright, was not and is not protected as a federally registered trademark, would not infringe on any known protected trademark or copyright so far as CBP’s civil administrative enforcement was concerned. Since the issuance of that ruling; however, new information has been presented to this office that warrants reexamination.

CBP has since learned that, at the time of your ruling request, Dooney & Bourke, Inc. has owned a trademark (“DB”) consisting of recurring letters “D” and “B” superimposed on each other, which is registered on the Principal Register of the U.S. Patent and Trademark Office (USPTO) (USPTO Registration No. 2,771,012) and recorded with Customs and Border Protection (CBP) (CBP Recordation No. TMK 04-00202). Said trademark was registered on October 7, 2003. An image of the protected trademark appears below.

Rain hat bearing the DB trademark as appears in the Dooney & Bourke 2002 catalogue

ISSUE:

Whether the “Dae Young Boutique Jaquard” infringes on Dooney & Bourke, Inc.’s “DB” trademark.

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 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. 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 item at issue herein, the Dae Young Jacquard design closely imitates several elements of the Dooney & Bourke design including the letters used (“B” and “D”), the typography, the positioning of the letters, and the repeating pattern. The only difference is that the Dae Young Jacquard design pairs together the letters “B” and the letters “D” while the Dooney & Bourke design pairs together a “D” with a “B.” Upon comparing the Dae Young Jacquard design to the Dooney & Bourke “DB” mark, given the similarities, it is our view that the Dae Young Jacquard design would be likely to confuse consumers to associating it to the Dooney & Bourke trademark so as to constitute an impermissible use properly characterized as counterfeit.

HOLDING:

Based on the foregoing, we find that the Dae Young Jacquard design is substantially indistinguishable from the protected Dooney & Bourke trademark and is therefore properly characterized as counterfeit. Accordingly, imported goods bearing this mark, for which the protected trademark is registered and recorded, are subject to seizure and forfeiture under 19 U.S.C. § 1526(e) as implemented by 19 CFR § 133.21(b).

Sincerely,

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

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