TMK CO:R:IT:I 459018 VEA
Leonard Zimmerman
Mi Mo International Inc.
220-22 Hillside Avenue
Queens Village, N.Y. 11427
RE: Suspected infringement of "Jonathan Martin & Design" trademark recorded with U.S.
Customs
Dear Sir:
This letter is in response to your inquiry dated July 26, 1994, requesting our advice on
whether a label bearing a unicorn design and the words "JONATHAN MARTIN" infringe any of
the trademarks recorded with U.S. Customs.
FACTS:
Mi Mo International is interested in purchasing wearing apparel from a Chinese company
which contains a label bearing the mark "JONATHAN MARTIN" and a unicorn design. Company
officials have discovered that this could be a registered U.S. trademark and question whether
foreign manufactured goods bearing the label would be seized by Customs if imported into the
U.S. The trademark at issue consists of a rectangular design containing a unicorn and the words
"JONATHAN MARTIN". It is owned by Harkham Industries Inc. and is recorded with Customs
Intellectual Property Rights Branch (IPR Branch) as TMK93-00133 and the U.S. Patent and
Trademark Office as 1,408,401.
ISSUE:
Whether the label bearing the words "JONATHAN MARTIN" and a unicorn design
infringes the trademark owned by Harkham Industries, Inc.?
LAW AND ANALYSIS:
The test for trademark infringement is whether the suspected mark is likely to cause
confusion, or to cause mistake, or to deceive. See, 15 U.S.C. Section 1114. In determining the
"likelihood of confusion", courts generally evaluate a variety of factors including: (1) the degree of
similarity between the marks, (2) proximity of the products; (3) actual confusion; (4) sophistication
of the buyers; (5) the defendant's good faith in adopting the mark; and (6) the strength of the
registered mark. Polarad Electronics Corp., 287 F. 2d 492 (2d Cir.) cert denied, 368 U.S. 820
(1961). For purposes of this case, it is only necessary to evaluate the degree of similarity between
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the design at issue and the recorded mark. Based on a comparison of the two designs, it is our
opinion that the label bears a design which is "substantially indistinguishable" or a counterfeit of the
recorded mark.
The trademark consists of a rectangular design containing a unicorn and the words
"JONATHAN MARTIN" in capital letters. The design on the label at issue also includes a unicorn
design and the words "JONATHAN MARTIN" in capital letters. The only difference between the
two designs is the depiction of the unicorn figures. The trademark design contains a full-bodied
unicorn, but the unicorn on the label only includes the head. However, this minor difference does
not negate our finding that this label is "counterfeit" since it clearly copies the key features of the
trademarked design. Finally, under Section 1526(e) of the Tariff Act, 19 U.S.C. Section 1526(e),
U.S. Customs has the authority to seize and forfeit imported goods bearing a counterfeit
trademark.
HOLDING:
The label bearing the words "JONATHAN MARTIN" and a unicorn design infringe the
trademark recorded with U.S. Customs under TMK 93-00133 and owned by Harkham Industries
Incorporated.
John F. Atwood, Chief
Intellectual Property Rights Branch