HQ 477375 - Toysmith Magic Cube; East Sheen’s 4x4x4 Four-Layer Intellectual Cube; Seven Towns’ Rubik’s Cube; U.S. Patent & Trademark Office Registration No. 1,265,094; U.S. Customs & Border Protection Recordation No. TMK 04-00292; Request for Infringement Determination - United States International Trade Commision Rulings

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HQ 477375

June 24, 2005

TMK-01-RR:IT:IP 477375 RSB

CATEGORY: TRADEMARKS

Gary D. Swearingen, Esq.
Garvey, Schubert, Barer
Second & Seneca Bldg.
1191 Second Avenue, 18th Floor
Seattle, Washington 98101-2939

RE: Toysmith Magic Cube; East Sheen’s 4x4x4 Four-Layer Intellectual Cube; Seven Towns’ Rubik’s Cube; U.S. Patent & Trademark Office Registration No. 1,265,094; U.S. Customs & Border Protection Recordation No. TMK 04-00292; Request for Infringement Determination

Dear Mr. Swearingen:

This letter is in response to your letter dated January 26, 2005, requesting an infringement determination. You assert that Toysmith’s Magic Cube (“Magic Cube”) and East Sheen’s 4x4x4 Four-Layer Intellectual Cube (“Intellectual Cube”) do not infringe the Seven Towns’ Rubik’s Cube (Rubik’s Cube”) design trademark (U.S. Patent & Trademark Office [USPTO] Registration No. 1,265,094; U.S. Customs & Border Protection [CBP] Recordation No. TMK 04-00292) and request a ruling to confirm your assertion.

FACTS:

In your January 26, 2005 letter, you state that you are the attorneys for Toy Investments, Inc. d/b/a Toysmith, owners of Magic Cube. You requested an infringement determination as to whether Magic Cube infringes on the Rubik’s Cube design trademark (USPTO Registration No. 1,265,094; CBP Recordation No. TMK 04-00292) owned by Seven Town’s, Ltd. (“Seven Towns”). You also state that although Toysmith does not own Intellectual Cube, it is interested in importing the product and as such you requested an infringement determination as to whether that product infringes the same Rubik’s Cube trademark.

In your letter you discuss the differences in the packaging of the products. As product packaging generally relates to trade dress, this office will not issue a determination on that basis, but will rather focus on whether the suspect items violate existing trademarks.

In your letter, you contend that there can be no trademark rights in the cube itself as “the claims of the expired patent are evidence of the functional aspects of the toy”. In addition, you contend that the Rubik’s Cube design trademark is color specific, and therefore, CBP must rely on the colors of the trademark in determining infringement. You provided this office with a sample Rubik’s Cube, Magic Cube and Intellectual Cube for examination.

Protected Work: Rubik’s Cube

The protected Rubik’s Cube trademark is employed in a three-dimensional twist cube puzzle. The trademark certificate describes the mark as follows: “The mark consists of a black cube having nine color patches on each of its six faces with the color patches on each face being the same and consists of the colors red, white, blue, green, yellow and orange.” An image of the protected Rubik’s Cube follows.

Magic Cube

Magic Cube is a three-dimensional white twist cube puzzle, which features nine color patches on each of its six faces with the color on each face being the same and consists of the colors fuchsia, aqua, black, lime green, yellow and pink. An image of the Magic Cube will follow.

Intellectual Cube

Intellectual Cube is a three-dimensional black twist cube puzzle which features sixteen color patches on each of its six faces with the color on each face being the same and consists of the colors red, green, blue, fuchsia, yellow and white. An image of Intellectual Cube will follow.

ISSUE:

The first issue is whether Magic Cube infringes on the Rubik’s Cube design trademark (USPTO Registration No. 1,265,094; CBP Recordation No. TMK 04-00292) owned by Seven Towns. The second issue is whether Intellectual Cube infringes on the same Rubik’s Cube design 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 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. §1124. 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 items at issue herein, in your first argument you assert that there can be no trademark rights in the cube itself. In support of this argument, you state that, as the patent for the Rubik’s Cube design has lapsed, the cube itself and its functional aspects are not at issue. Also, you quote from the Supreme Court case, Traffix Devices, Inc. v. Marketing Displays, Inc., which states that “trade dress protection must subsist with the recognition that in many instances there is no prohibition against copyright goods and products,” apparently to support your contention that the appearance of the item at issue cannot be protected. Traffix Devices, Inc. v. Marketing Displays, Inc., 523 U.S. 23, 58 USPQ2d 1001, 1004-1005 (2001).

In response to those arguments, we note that in Traffix, in order to receive protection for its trade dress, respondent had the burden of proving that the matter sought to be protected was non-functional and distinctive. Id. The distinction between Traffix and the case at issue is that there exists both a valid trademark registration on the U.S. Patent and Trademark Office Principal Register and a recordation of that trademark with CBP again, which covers a black cube having nine color patches on each of its six faces with the color patches on each face being the same and consists of the colors red, white, blue, green, yellow and orange. As such, a valid trademark for the design of the cube exists in this case and it must be afforded protection.

In turning to the first item, Magic Cube, both Magic Cube and the Rubik’s Cube are three-dimensional puzzles consisting of nine color patches on each of the six faces with the color patches on each face being the same. The two cubes also are similar in that both include the color yellow on one face, although the tone of the yellow on one differs from that of the other. The two items, however, differ in that Magic Cube is a white cube while Rubik’s Cube is a black cube. Also, the colors used in the Magic Cube design are fuchsia, aqua, black, lime green, yellow and pink while the colors used in the Rubik’s Cube design trademark are red, blue, green, yellow, orange and white.

While the structural aspects of the trademark, i.e. the number of faces and color patches constitute important features of the mark, because the protected trademark is color specific, the color component of the trademark must be given appropriate consideration. Although the structural aspects of the protected Rubik’s Cube and Magic Cube are similar, each of the colors used on the Magic Cube, from the cube itself to each of the colors on the faces, differ from those used in the Rubik’s Cube trademark. In examining the two marks, the white block structure and the use of entirely different colors on Magic Cube diminishes the likelihood of consumer confusion so much so as to render it non-violative of the protected mark.

As to the second item, Intellectual Cube is a three-dimensional puzzle with six faces similar to the Rubik’s Cube, but it differs from the Rubik’s Cube in that it consists of sixteen color patches on each face in contrast to the nine color patches in the Rubik’s Cube trademark. The Intellectual Cube design utilizes all but one of the same colors as the Rubik’s Cube: red, green, blue (the shade of the blues differ), yellow and white. However, the structural elements of the Intellectual Cube differ substantially from the protected mark. Due to its sixteen color patches on each face in contrast to the Rubik’s Cube nine colors patches on each face, combined with the fact that not all of the colors used on Intellectual Cube are the same, Intellectual Cube may be easily distinguished from the Rubik’s Cube. As such, the mark used on Intellectual Cube is not likely to confuse consumers, and therefore, it does not infringe the protected trademark at issue. .

HOLDING:

Based on the foregoing, neither Magic Cube nor Intellectual Cube infringes the Rubik’s Cube design trademark (USPTO Registration No. 1,265,094; CBP Recordation No. TMK 04-00292).

Sincerely,

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

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