MAR-2:05 RR:CR: SM 560596 RSD
Marianne Rowden, Esq.
Follick & Bessich
33 Walt Whitman Road
Suite 204
Huntington Station, New York 11746
RE: Country of Origin Marking of Footwear; Shoes; Conspicuous
Location; Comparable Size; U.S. Reference as Part of a
Registered Trademark; Hang Tags; 19 CFR 134.47
Dear Ms. Rowden:
This is in reference to your letter dated August 1, 1997,
requesting a ruling on behalf of Geoffrey Allen Corporation,
concerning the country of origin marking requirements applicable
to Perry Ellis America shoes. A sample of the shoes and the
boxes, in which they are imported and sold, accompanied your
submission. We have also received a supplemental submission
dated September 23, 1997, which contained a copy of the trademark
registration and a photostatic copy of a proposed hang tag.
FACTS:
Geoffrey Allen Corporation (hereinafter GAC) of Secaucus,
New Jersey is planning to import a line of shoes that will be
sold under the name "Perry Ellis America". "Perry Ellis America"
or "AMERICA Perry Ellis" are trademarks registered with the
United States Patent and Trademark Office used by GAC under
license. According to a catalog, the product line consists of
various styles of footwear, including sneakers and boots.
The sample shoes contain different variations of the
trademark "Perry Ellis America" in five different locations on
each shoe of the pair. The trademark is on the top of the
tongue, the outside of the heel, the side of the exterior of the
shoe, the inner sole, and molded into the outer sole. On the
inside tongue of the sneaker is a white label with black text
which shows the style number, name, color, and size of the
sneaker in lettering of one-eighth (1/8) inch typeface. Below
that information, the country of origin marking "MADE IN CHINA"
appears in bold lettering of about one-eight (1/8) of an inch.
The trademark "America Perry Ellis" is also on three locations on
the shoe boxes. The word "AMERICA" is in large letters on the
top of the box. The country of origin marking "MADE IN CHINA" is
also printed on the bottom of one of the side panels of the shoe
box. GAC's U.S. address is also printed on the bottom of the
shoe box.
In your supplemental submission, you have presented a
photostatic copy of a two sided hang tag that GAC proposes to
attach to the shoes. There will be writing on both sides of the
hang tag. On one side of the hang tag, the trademark "PERRY
ELLIS AMERICA" will be printed in large bold lettering. On the
reverse side of the hang tag, "Perry Ellis America" will be shown
again in smaller print. Below the trademark, there also will be
language indicating that GAC is the world wide licensee of the
Perry Ellis America label, and GAC's address in Secaucus, New
Jersey is also provided for product inquiries. On the bottom of
the hang tag, the words "Made in China" will be printed.
ISSUE:
Whether the proposed country of origin marking for imported
footwear which features several references to the word "America"
as part of a registered trademark is acceptable.
LAW AND ANALYSIS:
Section 304 of the Tariff Act of 1930, as amended (19 U.S.C.
1304), provides that, unless excepted, every article of foreign
origin (or its container) imported into the United States shall
be marked in a conspicuous place as legibly, indelibly and
permanently as the nature of the article (or its container) will
permit, in such a manner as to indicate to the ultimate purchaser
in the United States the English name of the country of the
article. Part 134, Customs Regulations (19 CFR 134), implements
the country of origin marking requirements and exceptions of 19
U.S.C. 1304.
The primary purpose of the country of origin marking statute
is to "mark the goods so that at the time of purchase the
ultimate purchaser may, by knowing where the goods were produced,
be able to buy or refuse to buy them, if such marking should
influence his will." United States v. Friedlaender & Co., 27
C.C.P.A. 297, C.A.D. 104 (1940). As provided in section
134.41(b), Customs Regulations (19 CFR 134.41(b)), the country of
origin marking is considered conspicuous if the ultimate
purchaser is able to find the marking easily and read it without
strain.
In determining whether the country of origin marking on the
imported footwear satisfies the requirements of 19 U.S.C. 1304,
the presence of the trademarked language, "PERRY ELLIS AMERICA",
which appears on the shoes and on the shoe boxes in several
places must be taken into consideration. In cases where there is
a reference to a location other than the country of origin on
imported merchandise, the special marking requirements set forth
in sections 134.46 and 134.47, Customs Regulations (19 CFR 134.46
and 19 CFR 134.47), may be applicable. The purpose of both
provisions is the same, namely to prevent the ultimate purchaser
from being misled or deceived when the name of a country or place
other than the country of origin appears on an imported article
or its container.
On August 20, 1997, a final rule document, Treasury Decision
(T.D.) 97-62 was published in the Federal Register (62 FR 44211)
amending section 134.46 of the Customs Regulations to the ease
the requirement that whenever words appear on imported articles
indicating the name of a geographic location other than the true
country of origin of the article, the country of origin marking
must appear in close proximity and in comparable size lettering
to those words proceeded by the words "Made in", "Product of", or
other words of similar meaning. The effective date of the
amendment was September 20, 1997. Under the revised 19 CFR
134.46, the requirements of this section are triggered only if it
is determined that the references to a locality other than the
country of origin may deceive or mislead the ultimate purchaser
regarding the actual country of origin of the article. 19 CFR
134.47 provides that when a trademark, trade name, or souvenir
marking indicates the name of a country or locality other than
the country of origin, the country of origin shall be indicated
either "in close proximity or in some other conspicuous location"
preceded by "Made in", "Product of", or similar words.
The critical difference between the two provisions is that
19 CFR 134.46 requires that the name of the actual country of
origin shall appear "in close proximity" to the locality name and
in lettering of at least comparable size. By contrast, 19 CFR
134.47 is less stringent, providing that when as part of a trade
name, trademark or souvenir mark, the name of a location other
than the country of origin appears, the name of the actual
country of origin must appear in close proximity or "in some
other conspicuous location". In other words, the latter
provision triggers only a general standard of conspicuousness.
In either case, the name of the country of origin must be
preceded by "Made in", "Product of", or other similar words.
In this instance, the multiple appearances of the registered
trademark "Perry ELLIS AMERICA" on the shoes and on the shoe box
is a geographical reference which triggers the requirements of 19
CFR 134.47. Therefore, the country of origin marking must appear
in "close proximity" to the word "America" or "in some other
conspicuous location".
The multiple use and the prominence of the word "America" on
the shoes and on their box is such that the country of origin
marking solely on the label on the tongue of the shoes would not
by itself be conspicuous. This conclusion is consistent with
previous determinations in which we have found that marking,
which might otherwise have been in a conspicuous place is
inadequate because of the appearance of words and symbols which
in their context might suggest to the ultimate purchaser a
country of origin other than the actual country of origin of the
foreign article. For example, in HQ 734085 dated June 4, 1993,
we found that the country of origin marking on the back of
packages of frozen vegetables was not in a conspicuous location
because of the prominent appearance of the trademark "American
Mixtures" on the front of the package. Although the back of the
package was a usual location for the country of origin marking,
in that case because of the "American Mixtures" trademark, the
country of origin marking on the package was not adequate. We
indicated that the circumstance and context dictated that the
marking appear on the front side of the packaging. See also HRL
735206 dated September 3, 1993, where we determined that multiple
references to the trademark "Manhattan" on a shirt and its poly
bag was such that the country of origin marking solely on the
label on the neck of the shirt would not by itself be
conspicuous.
Because of the multiple use of the word America, we find it
necessary to require an additional country of origin marking to
give effect to the purpose of 19 CFR 134.47 so that the ultimate
purchaser is not misled or deceived as to the actual origin of
the product he/she is contemplating purchasing. We find that
GAC's proposal to place an additional country of origin marking
on a hang tag attached to the front of the shoes will satisfy
this requirement. The hang tag will be prominently displayed on
the front of the shoes. In this location, it is likely to
attract the attention of a potential purchaser. The country of
origin marking on the hang tag is also large enough and in such a
location that it should be noticed from a casual inspection of
the shoes. The country of origin marking will be in letters
large enough, and assuming that the marking on the finished hang
tag is printed clearly, the ultimate purchaser should be able to
be read the marking without strain. Accordingly, the combination
of putting the country of origin marking on a sewn-in label on
the tongue of the shoes, on the shoe box, and on the hang tag
attached to the shoes should inform the ultimate purchaser of the
country of origin of the shoes and clarify any confusion as to
the origin of the shoes due to the use of the trademark "PERRY
ELLIS AMERICA". Thus the proposed markings on the hang tag, shoe
box, and on the shoes will satisfy the conspicuousness
requirement of 19 CFR 134.47.
We note also that the U.S. address of GAC will also be
printed on the hang tag, for the purpose of advising consumers
where to obtain additional product information. Despite the
presence of this U.S. address, we believe that the requirements
of 19 CFR 134.46 would not be triggered. GAC's address on the
hang tag is not misleading with regard to the country of origin
because it is apparent that the U.S. address is only provided so
that consumers will know how to contact the company for
additional product information. A potential purchaser should
understand that GAC's U.S. address does not relate to the origin
of the shoes. See HRL 732816 dated November 24, 1989. Even if
19 CFR 134.46 were triggered by the U.S. address on the hang tag,
we note that the requirements of 19 CFR 134.46 will be satisfied
by country of origin marking on the hang tag because the country
of origin marking is in close proximity, in a comparable size to
the U.S. address, and is preceded by the words "Made in". In
addition, we also believe that GAC's U.S. address printed on the
bottom of the shoe box is not misleading because an ultimate
purchaser should understand that GAC's address does not relate to
the origin of the shoes. Therefore, we conclude that GAC's U.S.
address on the bottom of the shoe box does not trigger the
requirements of 19 CFR 134.46.
HOLDING:
The combination of the country of markings on the sewn-in
label on the tongue of each shoe in the pair, on the shoe box,
and on a hang tag attached to the shoes is sufficient to satisfy
the requirements of 19 CFR 134.47. GAC's U.S. address printed on
the proposed hang tag and the bottom of the shoe box does not
trigger the requirements of 19 CFR 134.46.
A copy of this ruling letter should be attached to the entry
documents filed at the time the goods are entered. If the
documents have been filed without a copy, this ruling should be
brought to the attention of the Customs officer handling the
transactions.
Sincerely,
John Durant, Director,
Commercial Rulings Division