TRA R:IT:I 460360 VEA

District Director U.S. Customs Room 1001, Terminal Island 300 S. Ferry Street Los Angeles, California 90371

Attn: Import Specialist Sean Frankel or Paul Meripol

RE: Suspected Infringement of paint spray gun configuration trademark owned by Binks Manufacturing Company (U.S. Patent and Trademark Office (PTO) Registration No. 1, 415,580; U.S. Customs ACS/IPR Module No. TMK87-00365)

Dear Sir:

This is in response to your request for our opinion on whether a shipment of paint spray guns are "confusingly similar" to the configuration of a paint spray gun trademark owned by Binks Manufacturing Company referenced above.

FACTS:

The shipment at issue was imported by Coleman POWERMATE Compressors, Incorporated and imported into the United States through the port of Los Angeles. Pursuant to 19 C.F.R. 133.22 of the Customs Regulations it was detained on suspicion of infringing Binks' configuration trademark and a 30-day detention notice issued. On June 12, 1995, counsel for Coleman POWERMATE met with the Branch Chief of the Intellectual Property Rights Branch and a staff attorney at Customs Headquarters to argue its position that the POWERMATE paint spray guns are not "confusingly similar" to the trademarked configuration. A written submission was subsequently also provided.

The trademarked configuration consists of the design of a paint spray gun and includes three components: a hanging hook; a barrel and a handle. Although the configuration has the traditional pistol-grip appearance normally associated with paint spray guns, it contains distinctive design features. For example, the configuration design has an overall rounded shape. The barrel consists of two distinct horizontal round tubular shapes. The first tubular shape forms the top part of the barrel and is approximately four inches long. The hanging hook resembles a slightly

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elongated circle or C-shape and is attached to the first tubular shape. The second tubular shape forms the bottom part of the barrel and is connected to the handle. It is approximately two inches long. The inside part of the handle forms a relatively straight line and contains a center ledge under which the user's fingers rest. A rounded block-like shape protrudes outward from the upper back part of the handle. Finally, the bottom of the handle lacks a ledge for securing the user's small finger and lower portion of the hand to the gun.

The imported article also has the traditional pistol-grip appearance associated with paint spray guns and contains a hanging hook, a barrel and a handle. However, its configuration has more of an angular boxy look. The barrel consists of two horizontal rectangular shapes. The first rectangular shape on which the hanging hook is prominently located forms the top part of the barrel and is approximately four inches long. The hanging hook is squared-off and forms a smaller circular or c-shape. The second rectangular shape is two inches long and forms the bottom part of the barrel to which the handle is attached.

Also, the top inside part of the handle protrudes outward at an angle whereas the bottom forms a straight line. The inside handle also contains two ledges, one in the center on which the user's index finger and thumb rests, and the other at the bottom of the handle on which the user's little finger rests. A square box-like shape protrudes outward from the upper back part of the handle. The word "Powermate" is displayed in raised letters on the front and back of the handle. Finally, Coleman POWERMATE holds a license to the design pattern (Des 313,270) on its POWERMATE spray gun issued by the U.S. Patent and Trademark Office (PTO). ISSUE:

Whether the paint spray gun imported by Coleman POWERMATE Compressors, Inc. infringes the configuration trademark for a paint spray gun owned by Binks Manufacturing Company and recorded with U.S. Customs? 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. 1114. In determining the "likelihood of confusion", courts generally evaluate a variety of factors including: (1) the degree of similarity between the marks; (2) similarity of the products; (3) actual confusion; (4) sophistication of the buyers; (5) the defendant's good faith in adopting the mark; (6) the strength of the registered mark; and (7) channels of trade. Polaroid Corp. V. Polarad Electronics Corp., 287 F. 2d 492 (2d Cir.), cert. denied 368 U.S. 820 (1961). For purposes of this administrative

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decision, the analysis will focus on the similarity between the marks. Also, it is undisputed that the products are both paint sprayers and evidence demonstrating whether there is actual confusion by purchasers of these products, the defendant's good faith in adopting the mark, the strength of the mark and sophistication of the buyers is unavailable.

In evaluating "the degree of similarity" in cases involving configuration trademarks where the configuration is common to products of the type at issue, courts generally look to whether the suspect mark incorporates the distinctive features which are unique to the registered configuration trademark so as to cause confusion between consumers. Chemlawn Servs. Corp. v. GNC Pumps, Inc., 690 F. Supp. 1560 (1988). In this case, the distinctive design features of the registered configuration which distinguish it from other paint spray guns include: (1) a round, tubular look; (2) uniform inside handle almost forming a straight line; and (3) the lack of a bottom ledge to secure the user's small finger and lower portion of the hand to the gun. Two of the component parts, the hanging hook and barrel, on the registered mark have a rounded tubular appearance. The barrel consists of two distinct horizontal round tubular shapes, and the hanging hook forms a slightly elongated circular shape. The inside handle is uniform and almost forms a straight line. Finally, a rounded block-like shape protrudes outward from the upper part of the handle.

Although the imported article has the traditional pistol-grip appearance, it fails to incorporate the distinct design features of the registered trademark and in our opinion is unlikely to be associated with the registered configuration. The POWERMATE paint spray gun has a square boxy look versus the more rounded look of the trademarked configuration. The two horizontal shapes which make up the barrel and the hanging hook on the imported article have an angular squared-off/flattened look. The squared-off/flattened look causes the hanging hook to form a smaller c-shape compared to the larger, more circular C-shape of the hook found on the registered mark. A square box-like shape protrudes outward from the upper back part of the handle as opposed to the rounded block-like shape on the registered mark.

Moreover, the inside handle on the POWERMATE paint spray gun unlike the registered mark is not uniform and does not form a straight line. The top inside part of the handle juts outward at an angle whereas the bottom part forms more of a straight line. Finally, the imported article contains a ledge at the bottom of the inside handle which provides the user with a mechanism to secure the lower portion of the hand to the gun. No such ledge exists on the trademarked configuration.

In evaluating "similarity between marks", courts have held that when two products are similar, the manufacturer's labeling of its product with its own brand name is a significant factor in reducing likelihood of confusion among consumers as to the source of the product. Ziebart Intern. Corp. v. After Market Associates, 802 F. 2d 220 (7th Cir. 1986), cited in G. Heileman

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Brewing Co. v. Anheuser-Busch, Inc., 873 F. 2d 985 (7th Cir. 1989). The spray gun manufactured by Coleman POWERMATE includes the word "Powermate" displayed in raised black letters on both sides of the handle. Coleman POWERMATE's conspicuous use of its own trademark on the imported article clearly indicates the source of the product and should alleviate confusion among purchasers as to whether it is associated with Binks Manufacturing Company.

In assessing whether the two products at issue are sold through the same channels of trade so as to increase the "likelihood of confusion", courts generally consider whether there is a relationship in use, promotion, distribution, or roles, between the parties' goods. Forum Corp. Of North America v. Forum, Ltd., 903 F. 2d 434 (7th Cir. 1990). In its submission, the importer states that the spray guns at issue are marketed through mass merchant retailers such as Sam's Club (WalMart) and Builders Square (K-Mart) and its intended purchasers are avid hobbyists and do-it yourself users. Also, to the importer's knowledge, spray guns bearing the configuration mark are sold through jobbers who cater to professionals who use the Binks guns commercially. In the absence of any evidence to the contrary, the different channels of distribution and intended consumers for these products appear to reduce the chances for likelihood of confusion in this case.

Finally, the importer holds a license to the design patent (Des 313,270, date December 25, 1990) on its POWERMATE spray gun which we find to be a significant factor in this case. As the administrative agency with enforcement authority to protect intellectual property rights at the border, Customs recognizes trademarks or patents registered by the PTO and has no authority to question the validity of the registration. A finding of infringement in this case would result in prohibiting the importer from importing goods into the United States manufactured in accordance with its design patent. In view of the differences in similarities between the marks at issue, the channels of distribution and intended users, and the existence of a design patent on the imported paint spray guns, we find that they are not infringing.

HOLDING:

We hold that the spray guns imported by Coleman POWERMATE are not "confusingly similar" to the configuration of a paint spray gun trademark owned by Binks Manufacturing Company. Therefore, the shipment should be released to the importer.

John F. Atwood, Chief Intellectual Property Rights Branch