ENF-4-02-OT:RR:BSTC:IP HQ H072172 DAC
Scott G. 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”; Seven Towns’ Rubik’s Cube; U.S. Patent and Trademark Office (USPTO) Registration No. 1,265,094; and Customs & Border Protection (CBP) Recordation No. TMK 04-00292; Request for trademark 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. HQ H027746.
Dear Mr. Warner:
This letter is in response to your letter dated August 11, 2009, in which you request on behalf of your client, Toy Investments, Inc. (“Toysmith”), a trademark infringement determination with respect to the Rubik’s Cube design trademark, USPTO Reg. 1265094, CBP Recordation No. TMK 04-00292; owned by Seven Towns, Ltd. (“Seven Towns”).
FACTS:
In your letter of August 11, 2009, you have requested on behalf of your client, Toy Investments, Inc., (hereinafter also “Toysmith”), an infringement determination as to whether the “Void 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”). A sample of the “Void Cube” was submitted with your letter. CBP emphasizes at this time that the Rubik’s Cube is subject to the U.S. International Trade Commission (“ITC”) General Exclusion Order 337-TA-112, In the Matter of Certain Cube Puzzles, Inv. 337-TA-112 (1983).
ITC EXCLUSION ORDER 337-TA-112
The ITC General Exclusion Order 337-TA-112 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.” USITC Exclusion Order 337-TA-112, issued December 30, 1982, published January 1983. CBP enforcement of ITC Exclusion Orders is required pursuant to 19 U.S.C. § 1337; see also 19 CFR § 12.39.
SUBJECT TRADEMARK
The protected Rubik’s Cube trademark (USPTO Reg. No. 1,265,094, and CBP Rec. No. TMK 04-00292) is used 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.
SUBJECT MERCHANDISE
“Void Cube”
The “Void Cube” is a three-dimensional 3x3x3, white background twist cube puzzle, which features eight 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. Images of the “Void Cube” are provided below.
ISSUE:
The first issue is whether the “Void Cube” falls within the scope of the ITC Exclusion Order 337-TA-112 (1983), a general exclusion order for a common law trademark. The second issue is whether the “Void Cube” infringes the subject trademark, USPTO Reg. No. 1,265,094, and CBP Rec. No. TMK 04-00292.
LAW AND ANALYSIS:
Section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), prohibits, inter alia, the importation, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee of articles that infringe a valid and enforceable U.S. trademark registered under the Trademark Act of 1946 (15 U.S.C. § 1051 et seq.; the Lanham Act). 19 U.S.C. § 1337(a)(1)(C). The ITC has authority to investigate alleged violations of section 337. 19 U.S.C. § 1337(b). If the ITC determines that there has been a violation of section 337, it shall, subject to certain potential exceptions, direct that the articles concerned be excluded from entry into the United States and, accordingly, notify the Secretary of the Treasury who shall, through its proper officers, refuse such entry. 19 U.S.C. § 1337. See also, 19 CFR § 12.39.
TRADEMARK
Authority for U.S. Customs and Border Protection (CBP) administration and enforcement of the trademark laws to protect against the importation of goods bearing counterfeit marks, is provided for in section 526(e) of the Tariff Act of 1930, as amended (19 U.S.C. § 1526(e)), which 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. §§ 1124, 1125, 1127. 19 U.S.C. § 1595a. 19 CFR §§ 133.22, 133.25.
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).
ITC EXCLUSION ORDER
CBP is required to enforce exclusion orders issued by the U.S. International Trade Commission (ITC). CBP emphasizes at this time that the Rubik’s Cube is subject to the U.S. International Trade Commission (“ITC”) General Exclusion Order 337-TA-112, In the Matter of Certain Cube Puzzles, Inv. 337-TA-112 (1983).
The ITC has not taken action for modification or rescission of ITC Exclusion Order 337-TA-112. See 19 CFR § 210.76. As published in the Federal Register (48 FR 12142) March 23, 1983: "On December 29, 1982, the Commission concluded the above-captioned investigation under section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) with a determination that there is a violation of that section in the importation into and sale in the United States of certain cube puzzles. On January 12, 1982, complainant Ideal Toy Corp. (Ideal) filed a petition for reconsideration pursuant to § 210.58 of the Commission's Rules of Practice and Procedure (19 CFR 210.58) requesting that the Commission issue cease and desist orders and broaden its exclusion order to include 4 by 4 . . . cube puzzles. On February 17, 1983, Ideal withdrew its request for cease and desist orders. On March 16, 1983, the Commission denied the petition for reconsideration." 48 FR 12142, March 23, 1983. (emphasis added.) See also, 19 CFR § 210.76.
The ITC General Exclusion Order states, “Cube puzzles that infringe Ideal’s common-law trademark in its Rubik’s Cube puzzle are excluded from entry into the United States;” and the Rubik’s cube USPTO trademark certificate states, “the mark consists of a black cube having nine color patches on each of its six faces with the color patches on each face being the same…” ITC General Exclusion Order 337-TA-112. USPTO Reg. No. 1,265.094. The “Void Cube” does not have nine patches on each face. The “Void Cube” has eight patches and an empty space on each face, as the center of each face is an empty space, or a “void.” The Void Cube has only eight patches on each of the six faces of the puzzle and as such the Void Cube puzzle is readily distinguishable from the Rubik’s cube. Moreover, the empty space or “void” within the “Void Cube” makes the Void Cube puzzle clearly a completely different puzzle from the Rubik’s Cube. Therefore, for CBP administrative enforcement purposes, CBP determines that the “Void Cube” does not fall within the scope of the ITC General Exclusion Order 337-TA-112.
For the Rubik’s cube trademark, the USPTO trademark certificate states, “the mark consists of a black cube having nine color patches on each of its six faces with the color patches on each face being the same…” USPTO Reg. No. 1,265.094, and CBP Rec. No. TMK 04-00292. In your letter dated August 11, 2009, you describe the “Void Cube” as a 3x2x3 puzzle, however CBP disagrees with this description. The Void Cube puzzle is three dimensional and is properly described as a 3x3x3 puzzle, however there are other distinct differences between the 3x3x3 Rubik’s cube puzzle and the 3x3x3 “Void Cube” puzzle. The “Void Cube” is a 3x3x3 cube puzzle with the center cubes missing and the center patch on each face empty or “void.” The Rubik’s cube is a 3x3x3 puzzle with nine square patches on each face, and there is no void space on any of the faces. Although, the “Void Cube” and the Rubik’s Cube both are 3x3x3, three-dimensional puzzles, each consists of different numbers (eight for the “Void Cube”, and nine for the Rubik’s cube) of 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. Each complete side or face of the solved puzzle displays a different color, and all of the patches on one side or face are the same color, when the puzzle is purchased and when the puzzle is solved. The “void” or empty space appearing on each of the six faces of the “Void Cube” readily distinguishes the “Void Cube” from the Rubik’s cube. The “Void Cube” is clearly a completely different puzzle from the Rubik’s cube. The “Void Cube” does not have nine squares on each of the six faces of the puzzle, it only has eight squares on each face. The void space on each face distinguishes the “Void Cube” as a completely different puzzle. Therefore, based on all of the facts and circumstances discussed above, for CBP administrative enforcement purposes, CBP determines that the “Void Cube” does not infringe upon the Rubik’s cube trademark, USPTO Reg. No. 1,265,094, and CBP Rec. No. TMK 04-00292.
HOLDING:
Based upon all of the foregoing, CBP determines that the “Void Cube” does not fall within the scope of the USITC Exclusion Order 337-TA-112, and is not subject to exclusion from entry into the United States. Based upon all of the foregoing, CBP also determines the “Void Cube” does not infringe the Rubik’s cube trademark, USPTO Reg. No. 1,265,094, and CBP Rec. No. TMK 04-00292, and is permitted entry into the United States.
Sincerely,
Charles Steuart
Chief, Intellectual Property Rights Branch