ENF-4-02: RR:BSTC:IP 478867 DSR
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 December 14, 2005. The request is submitted on behalf of 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. 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 Cabela’s, an outfitter of hunting, fishing, and outdoor gear, is now manufacturing and importing a certain model of fishing lure that infringes upon the protected Reef Runner configuration trademark. The suspect lure is advertised by Cabela’s as the “Fisherman Series Walleye Runner” (hereinafter “Walleye Runner”). Our ruling follows.
ISSUE:
Whether the subject imported gauges and tachometers bear marks that infringe upon the protected Super Bezel configuration trademark.
LAW AND ANALYSIS:
Insofar as CBP’s 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 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 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; see also 19 CFR § 133.21(a).
CBP also maintains authority to prevent the importation of goods bearing "confusingly similar" marks that, although neither identical nor substantially indistinguishable from protected marks, are violative nonetheless. 15 U.S.C. § 1114; see also 19 CFR § 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 source, origin, affiliation, or sponsorship of a product. The term “confusion” 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 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Section 23:8 (Rel. 9, 3/99); Lanham Act, Section 43(a)). We note that a plaintiff in a trademark infringement case need not establish that all or even most consumers 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. 1961), 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 is, 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).
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 fish’s body. In the USPTO registration certificate, the fish is described as “a fishing lure having curved back and belly regions that taper at the aft end.” Images of the protected Reef Runner lure appears below, as it appears on the USPTO registration certificate, and as it appears in commerce. Those images are followed by images of the allegedly infringing Cabela’s “Walleye Runner” lures. 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 is 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.
As evidenced by the images above, Cabela’s suspect “Walleye Runner” lures 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. Therefore, we find the pictured “Walleye Runner” lures to be counterfeit of the Reef Runner configuration mark.
HOLDING:
Based upon our analysis, we conclude that each of the pictured Cabela’s “Walleye Runner” fishing lures is counterfeit of the registered and recorded Reef Runner configuration trademark (USPTO Reg. No. 2,491,908; CBP Recordation No. TMK 05-00421).
Sincerely,
George Frederick McCray, Esq.
Chief, Intellectual Property Rights Branch