HQ W480158 - Toysmith Magic 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; Ruling Request - United States International Trade Commision Rulings

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HQ W480158

November 13, 2006

TMK-01-RR:BSTC:IP 480158 KMR

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; 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; Ruling Request

Dear Mr. Swearingen:

This letter is in response to your letter dated October 11, 2006, resubmitting your request of for a ruling, originally dated March 21, 2005. In your March 21, 2005 request, you assert that four samples of Toysmith’s Magic Cube (“Magic 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 March 21, 2006 letter, enclosed with your October 11, 2006 letter, you state that you are the attorneys for Toy Investments, Inc. d/b/a Toysmith, owners of Magic Cube. You requested a ruling as to whether four distinct Magic Cube samples infringe 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 enclosed the four distinct Magic Cube samples with your request.

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 point out that none of the four samples is on a black or dark-colored cube, none bear the colors of the Seven Towns trademark registration, of those colors only white is on any of the samples, and one of the cubes includes a laser-cut design that differentiates the colors. Further, you point out that the four sample cubes are not materially different than the sample submitted January 2005, which was found non-infringing in a June 24, 2005 infringement determination. Finally, you enclose your letter of January 26, 2005, which you claim “provides a discussion of [your] view of the legal framework in which these toy products should be viewed, including discussion of the expired patent and that trademark cannot protect the functional aspects of the cubes.”

Protected Work: Rubik’s Cube

The protected Rubik’s Cube trademark is embodied by 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 Sample 1

Magic Cube Sample 1 is a three-dimensional white twist cube puzzle, featuring nine color patches on each of its six faces, where the color patches on each face are the same. The colors consist of fuchsia, light blue, aqua, lime green, yellow and pink. Below are images of Magic Cube Sample 1.

Magic Cube Sample 2

Magic Cube Sample 2 is a three-dimensional red twist cube puzzle, featuring nine color patches on each of its six faces, where the color patches on each face are the same. The colors consist of fuchsia, aqua, white, lime green, yellow, and pink. Below are images of Magic Cube Sample 2.

Magic Cube Sample 3

Magic Cube Sample 3 is a three-dimensional bright green twist cube puzzle, featuring nine color patches on each of its six faces, where the color patches on each face are the same. The colors consist of fuchsia, aqua, purple, orange, yellow, and pink. Below are images of Magic Cube Sample 3.

Magic Cube Sample 4

Magic Cube Sample 4 is a three-dimensional grey twist cube puzzle, featuring nine color patches on each of its six faces, where the color patches on each face are the same. The colors consist of a reflective laser-cut design based on the colors blue, purple, green, yellow, silver, and rose. Below are images of Magic Cube Sample 4.

ISSUE:

The issue is whether any of the Magic Cube samples infringes on the Rubik’s Cube design trademark (USPTO Registration No. 1,265,094; CBP Recordation No. TMK 04-00292) owned by Seven Towns.

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).

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.

Regarding your ruling request, you appear to reiterate that there are no trademark rights in the cube itself. In support of this argument, in your January 26, 2005 letter you state that because 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 Traffix, 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. On the other hand, in this case 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. As set forth above, the trademark 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 consisting of the colors red, white, blue, green, yellow, and orange. Thus, a valid trademark for the design of the cube exists in this case and it must be afforded protection.

Turning to the sample Magic Cubes at issue, both the Magic Cube and the Rubik’s Cube are three-dimensional puzzles consisting of nine color patches on each of the six faces, where the color patches on each face are the same color. But while the structural aspects of the Rubik’s Cube 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 the colors on the faces, substantially differ from those used in the Rubik’s Cube trademark. For example, sample 1 is a white cube, sample 2 is a red cube, sample 3 is a bright green cube, and sample 4 is a grey cube. None of the four samples include a black cube, as in the protected mark. Furthermore, in sample 1, the only color found in the Rubik’s Cube mark is yellow. In sample 2, the common colors are white and yellow. In sample 3, the common colors are orange and yellow. Every other color is different. Although sample 4 includes the colors blue, green, and yellow, also found in the Rubik’s Cube mark, these colors are integrated into a reflective laser-cut design and, therefore, sample 4 is distinguishable.

Because the four Magic Cube samples consist of different colors from the protected mark, both on the cube itself as well as on almost all of their faces, they are unlikely to confuse consumers. Therefore, none of the four Magic Cube samples infringe the protected Rubik’s Cube trademark.

HOLDING:

Based on the foregoing, none of the Magic Cube samples infringe 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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