HQ 475868 - Ruling letter; Trademark; Sheehan Sales Associates, Inc.; Design for Footwear Liners; U.S. Patent and Trademark Office Registration No. 2,024,892 and CBP Recordation No. TMK 02-00220 - United States International Trade Commision Rulings

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HQ 475868

February 10, 2005

TMK-01-RR:IT:IP 475868 RSB

CATEGORY: TRADEMARKS

Charles Hieken, Esq.
Fish & Richardson P.C.
225 Franklin Street
Boston, MA 02110-2804

RE: Ruling letter; Trademark; Sheehan Sales Associates, Inc.; Design for Footwear Liners; U.S. Patent and Trademark Office Registration No. 2,024,892 and CBP Recordation No. TMK 02-00220

Dear Mr. Hieken:

This ruling letter is in response to your letter dated April 5, 2004, requesting a ruling for trademark infringement against the design of footwear liners imported by Shock Doctor, Inc.

FACTS:

In your letter you state that your client, Sheehan Sales, Inc. (Sheehan), owns a design trademark, U.S. Patent and Trademark Office (USPTO) Registration No. 2,024,892 and CBP Recordation No. TMK 02-00220. The trademark is described on the USPTO Registration Certificate as follows: “The mark consists of the design formed by a first set of parallel strips interleaved with a second set of parallel strips with the first set of strips forming an angle with the second set of strips significantly different from 90 degrees.” You claim that Shock Doctor, Inc. is importing and selling footwear liners that incorporate a design that infringes on your client’s trademark.

You provided us with a sample of both the protected footwear liner and the allegedly infringing footwear liner for our examination. Images of the protected trademark will follow.

Drawing as appears on the USPTO Registration Certificate USPTO Registration No. 2,024,892; CBP Recordation No. TMK 02-00220

Protected trademark at issue as it appears in commerce

The allegedly infringing design on the Shock Doctor footwear liner consists of one set of parallel strips interleaved with a second set of parallel strips with the first set of strips forming an angle with the second set of strips. An image of the allegedly infringing design appears below.

Allegedly infringing Shock Doctor footwear liner

ISSUE:

Whether the design of the Shock Doctor footwear liner infringes on the Sheehan 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 items at issue herein, in comparing the protected trademark to the allegedly infringing footwear liner, it is readily apparent that both present with a design formed by a first set of parallel strips interleaved with a second set of parallel strips with the first set of strips forming an angle such that the two designs are substantially indistinguishable from each other.

HOLDING:

Based on the foregoing, we find that the Shock Doctor product incorporates a design that is counterfeit of the Sheehan protected design trademark. Imported goods bearing this mark, for which the protected trademark is registered and recorded, are therefore 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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