OT:RR:BSTC:IPR
Scott Warner, Esq.
Garvey, Schubert, Barer
Second & Seneca Bldg.
1191 Second Avenue, 18th Floor
Seattle, Washington 98101-2939
RE: Toy Investments Inc., d/b/a “Toysmith,” Toysmith “Magic Cube”; East Sheen’s 4x4x4 Four-Layer “Intellectual Cube”; Seven Towns’ Rubik’s Cube; USPTO Trademark Office Registration No. 1,265,094; Customs & Border Protection (CBP) Recordation No. TMK 04-00292; Request for Infringement Determination. U.S. International Trade Commission Exclusion Order 337-TA-112 (issued December 30, 1982, published January 1983); CBP Recordation No. TMK 04-00292. Prior determinations HQ 477375 (June 24, 2005); and HQ W480158 (November 13, 2006).
Dear Mr. Swearingen:
This letter is in response to your letter dated January 26, 2005, requesting two infringement determinations; and your letter October 11, 2006, requesting infringement determinations. In the January 26, 2005 letter, it was asserted that Toysmith’s “Magic Cube” was not infringing upon the Seven Towns’ Rubik’s Cube (“Rubik’s Cube”) design trademark, US Patent & Trademark Office (USPTO) Reg. No. 1,265,094, and CBP Recordation No. TMK 04-00292. In the same letter, it was also asserted that East Sheen’s 4x4x4 Four-Layer “Intellectual Cube” was not infringing upon the Seven Towns’ Rubik’s Cube (“Rubik’s Cube”) design trademark, USPTO Reg. No. 1,265,094, and CBP Recordation No. TMK 04-00292. In the October 11, 2006 letter, 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”). This letter supersedes the original determinations: HQ 477375, dated June 24, 2005; and HQ W480158, dated November 13, 2006.
Pursuant to section 625(c), Tariff Act of 1930 (19 U.S.C. §1625(c)), as amended by section 623 of Title VI (Customs Modernization) of the North American Free Trade Agreement Implementation Act, Pub. L. 103-182, 107 Stat. 2057, 2186 (1993), notice of the proposed modification was published on December 26, 2008, in the Customs Bulletin and Decisions, Volume 43, No. 1. One letter with comments was received in response to this notice and is addressed in this ruling.
FACTS:
In both of your letters, the January 26, 2005 letter and the October 11, 2006 letter, you requested on behalf of your client, Toy Investments, Inc., d/b/a “Toysmith,” an infringement determination as to whether the “Magic Cube” infringes on the Rubik’s Cube design trademark (USPTO Reg. No. 1,265,094, and CBP Rec. No. TMK 04-00292) owned by Seven Town’s, Ltd. (“Seven Towns”). In the January 26, 2005 letter you also requested an infringement determination as to whether the “Intellectual Cube” infringes on the Rubik’s Cube design trademark (USPTO Reg. No. 1,265,094, and CBP Rec. No. TMK 04-00292) owned by Seven Town’s, Ltd. (“Seven Towns”).
DISCLOSURE OF NEW MATERIAL FACTS and RELATED DOCUMENTS:
The determination for each of the “Magic Cube” and the “Intellectual Cube” is being re-examined in light of new factual information which was not addressed in the determinations HQ 477375, dated June 24, 2005; and HQ W480158, dated November 13, 2006. It is imperative that we re-examine this matter in light of the fact that the prior determination failed to address the U.S. International Trade Commission (ITC) Exclusion Order referenced as 337-TA-112, issued on December 30, 1982, and published in January 1983 in USITC Publication 1334.
U.S. Customs and Border Protection (CBP) initiates this amended determination, which shall supersede the prior determination. Such determinations by CBP require consideration of certain elements in order to be valid. Pursuant to 19 CFR § 177.2(b)(1), each ruling requires all material facts related to the transaction be included in consideration of the determination, and pursuant to 19 CFR § 177.2(b)(4), each ruling requires all directly related documents be included in consideration of the determination. The existence of the ITC Exclusion Order “In the Matter of CERTAIN CUBE PUZZLES, Investigation No. 337-TA-112,” USITC Publication 1334, published January 1983, is a material fact and a directly related document to the determination at hand. Insofar as the initial determinations failed to consider all required relevant matters, they may no longer be relied upon, and this determination shall supersede the prior determinations.
ITC EXCLUSION ORDER 337-TA-112
The ITC Exclusion Order provides that, “Cube puzzles that infringe Ideal’s common-law trademark in its Rubik’s Cube puzzle are excluded from entry into the United States;” and “Packages consisting of a cylindrical black plastic base and a cylindrical clear plastic cover, the plastic base and plastic cover sealed by a strip of black and gold tape, that infringe Ideal’s common-law trademark are excluded from entry into the United States.” CBP enforcement of ITC Exclusion Orders is required pursuant to 19 CFR § 12.39(b),(c), as well as pursuant to the final order issued on September 9, 2005 in Eaton, enjoining CBP from permitting entry of merchandise subject to an ITC Exclusion Order. Eaton Corp. v. United States, 395 F.Supp. 2d 1314, 1329 (2005).
Trademark protected by ITC Exclusion Order 337-TA-112
The protected Rubik’s Cube trademark (USPTO Reg. No. 1,265,094, and CBP Rec. No. TMK 04-00292) 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 [square] color patches on each of its six faces with the color patches on each face being the same [when the puzzle is purchased, and when the puzzle is solved] and consists of the colors red, white, blue, green, yellow and orange.” An image of the protected Rubik’s Cube is provided below.
The ITC Exclusion Order 337-TA-112 (issued December 30, 1982, and published in January 1983) is accompanied by images of both the protected and infringing merchandise, and these images provide examples of the protected merchandise, and of merchandise found to be infringing by the ITC Section 337 investigation. These images provide examples of merchandise that falls within the scope of the Exclusion Order 337-TA-112. Images from ITC Exclusion Order 337-TA-112 are provided below.
Subject Merchandise: The “Intellectual Cube” and the “Magic Cube”
East Sheen’s, 4x4x4, Four-Layer “Intellectual Cube”
The “Intellectual Cube” is a three-dimensional 4x4x4, twist cube puzzle which features sixteen square color patches on each of its six faces with the color on each face being the same, when the puzzle is solved, and when the puzzle is purchased. An image of “Intellectual Cube” is provided below.
Toysmith’s, 3x3x3, “Magic Cube”
The “Magic Cube” is a three-dimensional 3x3x3, white background twist cube puzzle, which features nine square color patches on each of its six faces with the color on each face being the same, when the puzzle is purchased and when the puzzle is solved, and consists of the colors red, blue, black, green, yellow and pink. A selection of images of the “Magic Cube” are provided below.
ISSUE:
The first issue is whether the “Intellectual Cube” falls within the scope of the USITC Exclusion Order 337-TA-112. The second issue is whether the “Magic Cube” falls within the scope of the USITC Exclusion Order 337-TA-112.
LAW AND ANALYSIS:
Insofar as our 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 the customs laws, where the trademark in question is registered with the U.S. Patent & Trademark Office and recorded with Customs (U.S. Customs and Border Protection, hereinafter "CBP"). 19 U.S.C. § 1526(e). 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. 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, 1125, 1127. 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. 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. (McCarthy, Trademarks and Unfair Competition, Section 23:8 (Rel. 2 6/97); Lanham Act, Section 43(a)). 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).
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 F.2d 492, (2d Cir), cert. denied, 368 U.S. 820, 7 L. Ed. 2d 25, 82 S. Ct. 36 (1961). 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 "similarity" between marks, it has been noted that "a mark should not be dissected and considered piece-meal; rather, it must be considered as a whole in determining likelihood of confusion." Franklin Mint v. Master Mfg. Co., 667 F.2d 1005, 1007 (C.C.P.A. 1981).
In your requests, dated January 26, 2005, and October 11, 2006, it is alleged that there can be no trademark rights in the cube itself. In support of this argument, you state that, as the patent (USPTO Patent Reg. No. 4,378,116, March 29, 1983) 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. Traffix Devices, Inc. v. Marketing Displays, Inc., 523 U.S. 23, 58 USPQ2d 1001, 1004-1005 (2001). 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 (USPTO Reg. No. 1,265,094) and a recordation of that trademark with CBP (CBP Rec. No. TMK 04-00292), 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. Additionally, the USITC fully addressed the functional/non-functional issue with respect to Rubik’s Cube in its investigation and in the ITC Exclusion Order 337-TA-112 (issued December 30, 1982, and published January 1983).
The “Intellectual Cube”
The first article, the “Intellectual Cube” is a 4x4x4 three-dimensional puzzle with six faces, consisting of sixteen square color patches on each face in contrast to the nine square color patches in the Rubik’s Cube trademark. The structural elements of the “Intellectual Cube” differ substantially from the Rubik’s Cube protected design mark. Due to its 4x4x4 puzzle structure, and its sixteen square color patches on each face, in contrast to the Rubik’s Cube nine square colors patches on each face, the two cube puzzles are distinctly different. Additionally, the ITC Exclusion Order 337-TA-112 specifically cites to the Rubik’s Cube in its Order, and the Order Remedy provides protection only for 3x3x3 cube puzzles. Accordingly, we find the “Intellectual Cube” does not fall within the scope of the ITC Exclusion Order 337-TA-112, and is permitted entry into the United States.
The “Magic Cube”
As for the second article, the “Magic Cube”, both “Magic Cube” and the Rubik’s Cube are 3x3x3, three-dimensional puzzles consisting of nine square color patches on each of the six faces with the color patches on each face being the same, when the puzzle is purchased and when the puzzle is solved. The two items, however, differ in that “Magic Cube” is a white cube while Rubik’s Cube is a black cube. The ITC Exclusion Order (337-TA-112) specifically states in the ‘Remedy’ that, “The plastic background can be any color, including black, white, blue, or grey.” (emphasis added.) ITC Exclusion Order 337-TA-112, Remedy, at 34. Therefore, pursuant to the order, the difference in the background color is irrelevant. Additionally, several images of cube puzzles without a black background, and found to be infringing merchandise by the ITC appear in the Exclusion Order images provided above.
While the structural aspects of the trademark, i.e. the number of faces and square color patches constitute important features of the mark, the ITC Exclusion Order also names colors. The ITC Exclusion Order includes images of “representative infringing cube puzzles,” which are provided above, and clearly provide examples of merchandise found to be infringing with variations of shades of colors that fall within the scope of the order. The Rubik’s Cube design trademark is protected for the color patch colors of red, white, blue, green, yellow, and orange. The colors used in the “Magic Cube” design are red, blue, black, green, yellow and pink. (Letter of January 26, 2005). The colors used in the “Magic Cube” designs are as follows: for sample one: purple, green, yellow, red, blue, and another blue; sample two: green, red, white, blue, yellow, purple; sample three: blue, red, orange, yellow, purple, pink; sample four: purple, silver, green, red, blue, yellow. (Letter of October 11, 2006). At least four of the colors used by the “Magic Cube” (red, blue, green, and yellow, (and orange in place of green for sample three) (and possibly pink as pink also appears in the images of infringing merchandise in the Exclusion Order 337-TA-112)) are the same as for the protected Rubik’s Cube, and thereby the “Magic Cube” falls completely within the scope of the ITC Exclusion Order 337-TA-112. In order to comply with its enforcement obligations, CBP is required to enforce Exclusion Orders in accordance with Eaton, and this ITC Exclusion Order provides images that represent a variety of shades of colors already determined to be infringing by the ITC. Therefore, CBP shall comply with such determinations and CBP shall enforce the ITC Exclusion Order 337-TA-112. Eaton Corp. v. United States, 395 F.Supp. 2d 1314, 1329 (2005) supra. Accordingly, the Intellectual Property Rights and Restricted Merchandise Branch at CBP finds the 3x3x3 “Magic Cube” puzzle falls clearly within the scope of the ITC Exclusion Order 337-TA-112 and is subject to exclusion from entry into the United States pursuant to the order.
The comments were submitted by the law firm of Garvey Schubert Barer, on behalf of their client Toysmith. In the letter received January 25, 2009, Garvey Shubert Barer, on behalf of Toysmith, states the firm received a letter containing the proposed revocation on December 23, 2008. The comments submitted by Toysmith were timely received in response to the formally published notice of proposed revocation.
One of the comments presented by Garvey Shubert Barer on behalf of Toysmith states the International Trade Commission (ITC) Exclusion Order 337-TA-112, issued on December 30, 1982 and published in January 1983 is not new factual information because it is a “26-year old ITC order.” The original rulings issued by CBP did not address the ITC Exclusion Order 337-TA-112, and such a related document is required to be addressed in accordance with 19 CFR § 177.2. Although Toysmith claims the ITC Exclusion Order was included in its ruling requests, contrary to this assertion, Toysmith did not include such Exclusion Order with its prior submissions as required by § 177.2.
One of the comments presented by Toysmith states that the colors used on the sample magic cubes were found to be characterized differently within the original rulings than in the proposed revocation. The colors examined in the notice of proposed revocation were compared with the images of infringing articles provided by the ITC as exhibits and demonstrative examples of merchandise falling within the ITC Exclusion Order 337-TA-112. The colors on the sample magic cubes were found to fall within the colors appearing on such images of articles subject to exclusion. In accordance with 19 U.S.C. § 1337(e), (g), (k) and 19 CFR § 210.76, if Toysmith believes the order is subject to modification or rescission due to a change in conditions of fact or law, the proper agency authorized for modification or rescission of exclusion orders is the International Trade Commission.
One of the comments presented by Toysmith states that it has not had the opportunity to see the images of the infringing articles provided by the ITC. The ITC Exclusion Order is dated December 30, 1982 and was published in January 1983, Toysmith has had adequate time to contact the ITC and inspect and examine the images provided by the ITC of articles subject to exclusion. Additionally, Toysmith claims that trademark rights do not remain constant over time. In accordance with 19 U.S.C. § 1337(e), (g), (k) and 19 CFR § 210.76, if Toysmith believes the order is subject to modification or rescission due to a change in conditions of fact or law, the proper agency authorized for modification or rescission of exclusion orders is the International Trade Commission.
One of the comments presented by Toysmith states that CBP proposes to expand protection beyond the “relatively narrow ambit afforded under current law governing trademarks in product configuration color elements,” as well as functionality and non-functionality. As pointed out above, the ITC fully addressed the functional/non-functional issue with respect to Rubik’s Cube in its investigation and in the ITC Exclusion Order 337-TA-112 (issued December 30, 1982, and published January 1983). Toysmith has asserted there has been a change in the facts and the law. In accordance with 19 U.S.C. § 1337(e), (g), (k) and 19 CFR § 210.76, if Toysmith believes the order is subject to modification or rescission due to a change in conditions of fact or law, the proper agency authorized for modification or rescission of exclusion orders is the International Trade Commission.
One of the comments presented by Toysmith states that the ITC Order was based on now-obsolete legal standards and a materially different factual context. As provided in 19 CFR § 210.76, “Whenever any person believes that changed conditions of fact or law, or the public interest, require that an exclusion order, cease and desist order, or consent order be modified or set aside, in whole or in part, such person may file with the Commission a petition requesting such relief. The Commission [ITC] may also on its own initiative consider such action.” (emphasis added.) The ITC has had ample time to initiate action on its own and has not taken such action. In accordance with 19 U.S.C. § 1337(e), (g), (k) and 19 CFR § 210.76, if Toysmith believes the order is subject to modification or rescission due to a change in conditions of fact or law, the proper agency authorized for modification or rescission of exclusion orders is the International Trade Commission.
The ITC has not taken action for modification or rescission of ITC Exclusion Order 337-TA-112. See 19 CFR § 210.76. In order to comply with its enforcement obligations, CBP is required to enforce Exclusion Orders in accordance with Eaton, and this ITC Exclusion Order provides images that represent a variety of shades of colors already determined to be infringing by the ITC. Therefore, CBP shall comply with such determinations and CBP shall enforce the ITC Exclusion Order 337-TA-112. Eaton Corp. v. United States, 395 F.Supp. 2d 1314, 1329 (2005), supra.
HOLDING:
Based upon the foregoing, we find the “Intellectual Cube” does not fall within the scope of the USITC Exclusion Order 337-TA-112 and is permitted entry into the United States.
Based upon the foregoing, we find the “Magic Cube” does fall within the scope of the USITC Exclusion Order 337-TA-112, and is subject to exclusion from entry into the United States.
EFFECT ON OTHER RULINGS:
HQ 477375, dated June 24, 2005 is hereby REVOKED.
HQ W480158, dated November 13, 2006 is hereby REVOKED.
Sincerely,
George Frederick McCray, Esq.
Chief, Intellectual Property Rights Branch