OT:RR:BSTC:IPR H155739 JER
Mr. Scott D. Stecher, President
Reef Runner Tackle Co., Inc.
P.O. Box 450
Marblehead, OH 43440
RE: Request for Binding Trademark Infringement Ruling Submitted on Behalf of Reef Runner Tackle Co., Inc.; Fishing Lure configuration trademark; U.S. Patent and Trademark Office Registration No. 2,491,908 (U.S. Customs and Border Protection Recordation No. TMK 05-00421).
Dear Sir:
This is in response to your request for a binding ruling under 19 CFR § 177.1, dated January 10, 2011. The request is submitted on behalf of Reef Runner Tackle Co., Inc. (“Reef Runner”), concerning the importation of certain fishing lures alleged to infringe upon Reef Runner’s protected fishing lure configuration trademark.
FACTS:
Reef Runner is a manufacturer of fishing lures and the maker of the “Little Ripper-Hot Tamale” and the “Deep Diver-Pink Lemonade” fishing lures. The mark at issue in this ruling request is Reef Runner’s fishing lure configuration mark, which is registered with the U.S. Patent and Trademark Office and recorded with U.S. Customs and Border Protection (USPTO Reg. No. 2,491,908; CBP Recordation No. TMK 05-00421). Reef Runner has alleged that Cotton Cordell, an outfitter of hunting, fishing, and outdoor gear, is now manufacturing and importing certain models of fishing lures that infringe upon the protected Reef Runner configuration trademark. The suspect lure is advertised by Cotton Cordell as the “Wally Stinger-Banana Pepper”, and the “Wally Stinger-Pink Lemonade.” Images of the both the suspect and genuine configuration trademarks are depicted below.
ISSUE:
Whether the subject imported fishing lures bear configuration design marks that infringe upon the protected Reef Runner configuration trademark.
LAW AND ANALYSIS:
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 CBP. See 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 CFR § 133.21(a).
Section 526(e) of the Tariff Act of 1930, as amended, provides that merchandise bearing a counterfeit mark within the meaning of section 1127 of Title 15, that is imported in violation of section 1124 of Title 15, shall be seized and, absent the consent of the trademark owner, forfeited for violations of the customs laws. 19 U.S.C. § 1526(e); see also 19 C.F.R. § 133.21.
The first prong of section 526(e) requires that the imported merchandise bear a counterfeit mark as defined by section 45 of the Act of July 5, 1946 (the “Lanham Act,” codified as amended at 15 U.S.C. § 1127). Section 45 of the Lanham Act defines the term “counterfeit” as meaning “a spurious mark that is identical with or substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127. This inquiry must be conducted from the perspective of the average purchaser. United States v. 10,510 Packaged Computer Towers, 152 F.Supp. 2d 1189, 1193 (N.D. Cal. 2001), citing Montres Rolex, S.A. v. Synder, 718 F.2d 524, 530-532 (2d. Cir. 1983).
The second prong requires that the merchandise, in addition to bearing a counterfeit mark, shall have been imported in violation of section 42 of the Lanham Act, which provides in pertinent part:
Except as provided in subsection 1526 (d) of Title 19 . . . . no article of imported merchandise . . . which shall copy or simulate a trademark registered in accordance with the provisions of this chapter . . . shall be admitted to entry at any customhouse of the United States . . . .
15 U.S.C. § 1124. This standard is “equivalent to the traditional ‘likelihood of confusion’ test for trademark infringement” based on the analysis of certain factors as first set forth in Polaroid v. Polarad Electronic Corp., 287 F.2d 492 (2d Cir. 1961), cert. denied, 368 U.S. 820 (1961). See United States v. Able Time, Inc., 545 F.3d 824, 830 (9th Cir. 2008), citing Ross Cosmetics Distrib. Ctrs. v. United States, 17 Ct. Int’l Trade 814, 817-818 (1994). In order to aid CBP officers to enforce this prohibition, section 42 provides further that the owners of registered trademarks may require their names and a copy of their registration certificate to be recorded with the agency under such regulations as may be prescribed. See 19 C.F.R. pt. 133 (setting forth the regulations governing the recordation process and the enforcement of recorded trademarks).
Thus, merchandise is subject to seizure and forfeiture for violation of 19 U.S.C. § 1526(e) if: (1) it bears a spurious mark that it identical with or substantially indistinguishable from a registered mark; and (2) it bears a copying or simulating mark that would likely cause the public to associate the copying or simulating mark with a registered mark that has been recorded with CBP. Moreover, if merchandise bears a counterfeit mark, i.e., a spurious mark that is identical with or substantially indistinguishable from a registered mark, “it necessarily follows that the offending mark copies or simulates the registered mark.” United States v. 10,510 Packaged Computer Towers, 152 F.Supp. 2d at 1200 (concluding that since merchandise bore a substantially indistinguishable mark it was imported in violation of 15 U.S.C. § 1124). See also Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp., 486 F.Supp. 286, 290 (S.D.N.Y. 2007) (when counterfeit marks are involved it is not necessary to consider the Polaroid factors since counterfeit marks are inherently confusing). Accordingly, it is CBP’s position that for purposes of the second prong of section 1526, confusion is presumed where imported merchandise bears a spurious mark that is identical with or substantially indistinguishable from a registered and recorded mark.
Turning now to the goods at issue, the protected Reef Runner mark consists of the configuration of a curved fish, with lines representing an eye and gills appearing on either side of the body of the fish. The USPTO registration certificate describes the as being “a fishing lure having curved back and belly regions that taper at the aft end.” Images of the Reef Runner lures appear below, as they appear on the USPTO registration certificate, and as they appear in commerce. Note that the protected portions of the Reef Runner trademark, according to the USPTO registration certificate, are the “curved back and belly regions that taper at the aft end.” No claims are made to the hooks attached to the lure, nor to the plastic apparatus at the “mouth” of the lure. In addition, no claim is made to the markings that comprise the eyes, gills, fins, small stripes or colors of the lure.
Upon review of the samples provided and as evidenced by the images above, the suspect marks consisting of Cotton Cordell’s suspect “Pink Lemonade” and “Banana Pepper” fishing lures are identical with or substantially indistinguishable from the Reef Runner configuration marks in that they curve throughout the back and belly regions, and taper at the aft end, in ways that appear to be substantially indistinguishable from the shape associated with the Reef Runner configuration mark. Accordingly, we find the suspect Cotton Cordell configuration marks to be counterfeit of the Reef Runner configuration mark.
HOLDING:
Based upon our analysis, the suspect marks consisting of the Cotton Cordell fishing lures as shown herein are counterfeit of the registered and recorded Reef Runner configuration trademark (USPTO Reg. No. 2,491,908; CBP Recordation No. TMK 05-00421). As such, importation of the Cotton Cordell fishing lures are subject to seizure and forfeiture in accordance with 19 U.S.C. §1526(c) as implemented in 19 C.F.R. §133.21.
Sincerely,
Charles Steuart
Chief, Intellectual Property Rights Branch