TRA CO:R:P IPR 450180 TPT
District Director of Customs
P.O. Box 3130
Laredo, Texas 78041-3130
RE: Suspected infringement of the trademark "BRITISH KNIGHTS",
Patent and Trademark Office Reg. No. 1,324,699 and Customs
Recordation Issuance No. 88-019.
Dear Sir:
This is in response to a July 11, 1990, request for a
Headquarters ruling forwarded by Import Specialist John Amaya
concerning a shipment of shoes suspected of bearing infringing
trademarks.
FACTS:
Customs detained a shipment of sports footwear imported from
Mexico on July 10, 1990, for suspicion of bearing counterfeit or
confusingly similar trademarks. Customs officers found that the
shipment of footwear consisted of the suspected marks on the
footwear and on the boxes for the footwear. Customs officers
contacted the trademark owner's legal counsel and were informed
that there was no authorized manufacturer in Mexico for its
trademarked goods. Additionally, Customs was informed that the
trademark owner was engaged in its own investigation of the
unauthorized use of the trademark in Mexico. The trademark
owner's representative provided Customs with the name of the
suspected Mexican manufacturer. The unauthorized manufacturer's
name matched the name appearing on the invoice for the imported
goods.
ISSUE:
Whether sports footwear and its packaging which bears the
marks "BRITISH KNIGHTS," "BRITISH NIGHTS," or "BRITISH HIGHTS"
infringe the registered and recorded mark "BRITISH KNIGHTS"?
LAW AND ANALYSIS:
Title 19, U.S.C., section 1526(e), prohibits the importation
of articles bearing a counterfeit trademark. Counterfeit marks
are spurious marks that are identical with or substantially
2
indistinguishable from the registered trademark. 15 U.S.C. 1127;
19 C.F.R. 133.23a(a). Title 15, U.S.C., section 1124, denies
entry
to articles bearing trademarks which copy or simulate registered
trademarks recorded with Customs for import protection pursuant
to Part 133 of the Customs Regulations (19 C.F.R. Part 133).
The test for trademark infringement is whether the use of
the suspected mark is likely to cause confusion, or to cause
mistake, or to deceive. See 15 U.S.C. 1114. Also, the test is
to determine whether the suspected mark is a counterfeit mark
which is identical or substantially indistinguishable from the
registered mark.
First, we note that the registered and recorded mark is the
words "BRITISH KNIGHTS". Shoe boxes were imported bearing these
words on the them. Both the registered and recorded mark and the
mark appearing on the boxes are in simple block letters. The
registered and recorded mark shows the words in upper case
letters and so too are the letters on the boxes. Therefore, as
to those imported articles bearing the words "BRITISH KNIGHTS",
we conclude that they bear counterfeit marks and should be seized
and forfeited in accordance with 19 U.S.C. 1526(e).
Next, the shipment also included shoes bearing the words
"BRITISH NIGHTS". When comparing the registered and recorded
mark with the suspected mark, the comparison must be of the
overall impression created by the mark. Aveda Corporation v.
Evita Marketing, Inc., 706 F. Supp. 1419, 1429 (D. Minn.
1989)(quotation omitted). Here, we conclude that the suspected
mark is substantially indistinguishable from the registered and
recorded mark. The lack of the letter "K" removes only one
letter from the overall appearance of the mark, but leaves 13
letters identical to the registered and recorded mark.
Additionally, it is significant that even without the letter "K"
the sound of the two marks remains identical. Sounds of marks
are an element in the determination of similarity of marks. See
generally Id. at 1428. Therefore, we conclude that the articles
bearing "BRITISH NIGHTS" are substantially indistinguishable from
the recorded trademark and should be seized and forfeited in
accordance with 19 U.S.C. 1526(e).
Finally, we have examined the articles bearing the words
"BRITISH HIGHTS". Compared phonetically the two marks have the
same number of syllables and the same stress pattern. The
overall appearance remains similar to the recorded mark, but is
not as similar as the two marks discussed above. However, since
this mark still appears on the same type of product, footwear,
and has a very similar sound as the protected mark we conclude
that the mark is a confusingly similar mark. Aveda at 1430; see
G.D. Searle & Co. v. Chas. Pfizer & Co., 265 F.2d 385 (7th Cir.
1959), cert. denied, 361 U.S. 819 (1959). Therefore, the
articles which bear the mark "BRITISH HIGHTS" should be seized
under 19 U.S.C. 1595a(c) as an 3
importation contrary to law, a violation of 15 U.S.C. 1124.
HOLDING:
The articles bearing the mark "BRITISH KNIGHTS" or "BRITISH
NIGHTS" are counterfeit marks since they are identical to or
substantially indistinguishable from the registered and recorded
trademark and should be seized in pursuant to 19 U.S.C. 1526(e)
and 19 C.F.R. 133.23a(a). The articles bearing the mark "BRITISH
HIGHTS" are confusingly similar to the registered and recorded
mark and should be seized pursuant to 19 U.S.C. 1595a(c) for a
violation of 15 U.S.C. 1124.
Sincerely,
John F. Atwood, Chief
Intellectual Property Rights
Task Force