TMK-01-RR:IT:IP 474600 RSB
Mr. Peter S. Herrick
3520 Crystal View Court
Miami, FL 33133
RE: Dae Young Company; Request for Infringement Determination
for Two Fabric Designs: Cherry Blossom Design (U.S. Copyright
Office Registration No. VAu 578-227) and Dae Young Boutique Jaquard Design (U.S. Copyright Office Registration - Pending)
Dear Mr. Herrick:
This letter is in response to your letter dated July 14, 2003, requesting an infringement determination of whether Dae Young Company’s two proposed fabric designs, the first entitled “Cherry Blossom” (U.S. Copyright Office Registration No. VAu 578-227) and the second entitled “Dae Young Boutique Jaquard” (U.S. Copyright Office Registration Pending) would infringe on any protected trademark or copyright if Dae Young imported “prospective goods with its fabric design.”
FACTS:
In your July 14, 2003 letter, you state that your client, Dae Young Company (“Dae Young”), an importer located in Los Angeles, California, is contemplating importing various goods bearing two Dae Young designs, the first entitled “Cherry Blossom” (U.S. Copyright Office Registration No. VAu 578-227) and a second entitled Dae Young Boutique Jaquard” (U.S. Copyright Office Registration Pending). Each design will be addressed separately.
“Cherry Blossom”
The first design entitled “Cherry Blossom” is registered with the U.S. Copyright Office (U.S. Copyright Office Registration No. VAu 578-227). The design is of a recurring pattern of four varying floral motifs, each bearing four pointed petals. One motif is larger than the other three and two of the three smaller motifs include a backdrop, one circular and the other in the shape of a diamond. An image of the design will follow.
Image of “Cherry Blossom” design as provided by Dae Young
The design evokes three floral design trademarks owned by Louis Vuitton Malletier (“Louis Vuitton”): a flower with four rounded petals against a circular backdrop (U.S. Patent & Trademark Office [USPTO] Reg. No. 2,181,753; U.S. Customs and Border Protection [CBP] Rec. No. TMK 01-00550) registered and recorded for goods in international classes 14 (goods made of precious metals), 18 (goods made of leather or imitations of leather) and 25 (clothing and underwear); a flower with four pointed petals (USPTO Reg. No. 2,177,828; CBP Rec. No. TMK 01-00551) registered and recorded for goods in international classes 14 (goods made of precious metals), 18 (goods made of leather or imitations of leather) and 25 (clothing and underwear); and a flower with four pointed petals against a diamond-shaped backdrop (USPTO Reg. No. 2,773,107) registered for goods in international classes 14 (goods made of precious metals), 18 (goods made of leather or imitations of leather), and 25 (clothing and underwear). The images of the three design trademarks will appear below respectively. A composite of the three trademarks as used in commerce also will follow.
USPTO Reg. No. 2,181,753; CBP Rec. No. TMK 01-00550
USPTO Reg. No. 2,177,828; CBP Rec. No. TMK 01-00551
USPTO Reg. No. 2,773,107
A Louis Vuitton Stole
“Dae Young Boutique Jaquard”
The second design is entitled “Dae Young Boutique Jaquard.” Dae Young applied for a registration for this design with the U.S. Copyright Office, but a registration has not yet been granted. The design consists of a recurring pattern of two letters “B” superimposed on each other and two inverted letters “D” superimposed on each other. An image of the design will follow.
Image of “Dae Young Boutique Jaquard” design as provided by Dae Young
ISSUE:
The first issue is whether the proposed “Cherry Blossom” design would infringe on the three floral design trademarks (USPTO Reg. No. 2,181,753; CBP Rec. No. TMK 01-00550; USPTO Reg. No. 2,177,828; CBP Rec. No. TMK 01-00551; USPTO Reg. No. 2,773,107) owned by Louis Vuitton Malletier. The second issue is whether the “Dae Young Boutique Jaquard” would infringe on any protected trademark or copyright.
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. §1114. 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).
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 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.
In turning to the items at issue herein, with regard to the proposed “Cherry Blossom” design, the mark consists of four varying floral designs. One of the smaller motifs, a flower with pointed petals against a circular backdrop is substantially indistinguishable to that of the first Louis Vuitton floral design (USPTO Reg. 2,181,753;CBP Rec. No. TMK 01-00550), also a flower against a circular backdrop. The only difference between these two designs is that the Louis Vuitton design bears rounded petals rather than pointed petals as appears in the “Cherry Blossom” design; however, this difference is so subtle that it is negligible. The large motif and the second of the smaller motifs, both flowers with four pointed petals, are substantially indistinguishable from the second Louis Vuitton floral design (USPTO Reg. 2,177,828; CBP Rec. No. TMK 01-00551), also a flower with four pointed petals. The third of the smaller motifs, a flower against a diamond-shaped backdrop is substantially indistinguishable from the third Louis Vuitton floral design (USPTO Reg. No. 2,773,107), also a flower against a diamond-shaped backdrop. As each of the motifs appearing on the “Cherry Blossom” design is substantially indistinguishable from a protected Louis Vuitton trademark, the “Cherry Blossom” design is counterfeit of all three aforementioned Louis Vuitton trademarks.
With regard to the “Dae Young Boutique Jaquard” design, although this office conducted a search of protected trademarks and copyrights, we did not find any protected items that are similar to the design in question. Accordingly, the importation of goods bearing this design would not appear to infringe on any protected trademark or copyright. However, this determination is based upon information now at hand and may be subject to change if and when contrary evidence becomes known to CBP. We note too that an application for a trademark registration was filed with the USPTO on March 10, 2003, by Brentano Handbags Inc. for a design trademark consisting of two letters “B” superimposed on each other, which appears to be identical to that in the “Dae Young Boutique Jaquard” design. If such a sufficiently similar trademark were to issue, depending on the facts and circumstances surrounding the registration and in accordance with established practice, this office may revisit this determination and may reach a different finding.
HOLDING:
Based on the foregoing, we find that goods bearing the “Cherry Blossom” design would infringe on three protected Louis Vuitton trademarks (USPTO Reg. 2,181,753 and CBP Rec. No. TMK 01-00550; USPTO Reg. 2,177,828 and CBP Rec. No. TMK 01-00551; and USPTO Reg. No. 2,773,107). As such, covered goods bearing the “Cherry Blossom” design would be subject to seizure and forfeiture if imported into the United States. Conversely, based upon evidence available at this time, goods bearing the “Dae Young Boutique Jaquard” would not infringe on any protected trademarks or copyrights.
Sincerely,
George Frederick McCray, Esq.
Chief, Intellectual Property Rights Branch