HQ 451915: Suspected infringement of R.D. Werner trademark on ladders(Registration No. 1,016,147; Customs Recordation Issuance No. 91-00079)

Native CBP ruling rendition. Applicability is fact-specific; modification/revocation relationships and original publisher date are retained. Publisher sentinel year0001 means unknown date, not a historical legal adoption.

 



                            HQ 451915

                         October 10,1991

TRA CO:R:IT:I 451915 TPT

CATEGORY:  Trademark

District Director of Customs
Lincoln Juarez Bridge, Bldg. 2
P.O. Box 3130
Laredo, Texas   78044-3130

RE:  Suspected infringement of R.D. Werner trademark on ladders
(Registration No. 1,016,147; Customs Recordation Issuance No. 91-
00079)

Dear Sir:

     This is in response to a facsimile request dated September
13, 1991, wherein the Intellectual Property Rights Branch was
asked to provide an opinion on the issue of trademark
infringement regarding a shipment of ladders bearing the above
referenced trademark.

ISSUE:

     Whether the imported ladders, bearing a label which
incorporates the registered and recorded trademark with
accompanying words, infringes the trademark referenced above.

LAW AND ANALYSIS:

     Under the Trademark Laws a certificate of registration 
issued by the U.S. Patent and Trademark Office (PTO) shall be
prima facie evidence of the validity of a registered mark.  15
U.S.C. 1057(b).  Section 1526(e) of the Customs Laws (19 U.S.C.
1526(e)) prohibits the importation of articles bearing a
counterfeit trademark.  Counterfeit marks are spurious marks that
are identical with or substantially indistinguishable from the
registered trademark.  15 U.S.C. 1127; 19 C.F.R. 133.23a(a).  The
Trademark Laws deny entry to articles bearing trademarks which
copy or simulate registered trademarks (15 U.S.C. 1124) recorded
with Customs for import protection pursuant to Part 133 of the
Customs Regulations (19 C.F.R. Part 133). 

     The test for trademark infringement is whether the use of
the suspected mark is likely to cause confusion, or to cause
mistake, or to deceive.  See 15 U.S.C. 1114.  Also, the test is
to determine whether the suspected mark is a counterfeit mark
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which is identical or substantially indistinguishable from the
registered mark. 

     In the instant matter R.D. Werner has a trademark registered
with the PTO and recorded with U.S. Customs.  The mark consists
of a circle with two horizontal, parallel lines within the
circle.  Two five pointed stars are located at opposite ends
within the parallel lines.
  
     The labels affixed to the imported ladders incorporate this
trademark.  The labels bearing the registered and recorded mark
differ in that within the circle words have been added.  In the
top half of the circle above the parallel lines the words
"Manufacturer certifies conformance to" appear.  Within the
parallel lines and between the five pointed stars in bold
letters, are the letters "OSHA."  In the bottom portion of the
circle below the parallel lines the words "ANSI code for
Fiberglass Ladders" appear.

     It has long been established that the addition of words to a
trademark does not preclude the finding of infringement.  See
Menendez v. Holt, 128 U.S. 514 (1888) (appellant's name
accompanied the trademarked words and the Court stated that such
use is an aggravation and not a justification); A.T. Cross
Company v. Jonathan Bradley Pens, Inc., 470 F.2d 689 (2d Cir.
1972) (addition of words does not save the day).

     The importer states that this is the mark within which the
manufacturer certifies conformance to OSHA and ASNI standards. 
It further states that it is prepared to obliterate the existing
label by placing a new label over the existing label.  Upon
relabelling, the importer asserts that the shipment should be
released pursuant to section 133.21(c)(4) of the Customs
regulations.
     
     Further, the importer argues that release of the merchandise
after relabelling is available to it because the mark on the
existing labels is not a counterfeit.  It argues that the mark
incorporated in the label is not an identical mark as defined in
section 133.21(b) of the Customs regulations nor a copying or
simulating mark as defined in section 133.21(a).  The importer
argues that because its name "Cuprum" appears on the label, a
consumer would not associate the ladders with R.D. Werner.

     The appearance of the name "Cuprum" on the label does not
justify the use of a registered and recorded trademark.  See
Menendez, 128 U.S. at 521; A.T. Cross Company, 470 F.2d at 692. 
In reaching a determination that the imported ladders infringe
the registered and recorded trademark, it is not necessary for us
to engage in an actual finding of confusion.  The Keds
Corporation v. Renee International Trading Corp., 888 F.2d 215,
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218 (1st Cir. 1989).  When comparing the registered and recorded
mark to the mark on the labels of the imported ladders, devoid of
the additional words, the only difference one can detect is that
the mark on the labels shows the parallel lines as centered
within the circle while the protected mark shows the lines
slightly off center toward the top. 

     The use of the mark on the importer's label is substantially
indistinguishable from the registered and recorded trademark. 
Therefore, in accordance with section 1526(e) (19 U.S.C. 1526(e))
and section 1127 (15 U.S.C. 1127), a substantially
indistinguishable mark is a counterfeit mark subject to seizure. 

     Section 1526 provides for specific dispositions of the
merchandise when it is found to be counterfeit.  Release to the
importer after obliteration is not among the possible
dispositions as requested by the importer.         

HOLDING:
     
     We find that the ladders bearing the labels which
incorporate the registered and recorded mark are subject to
seizure under 19 U.S.C. 1526(e) and the importer shall not be
permitted to relabel the merchandise for the purpose of release
of the goods.  Final disposition of the merchandise should be in
accordance with section 1526(e)(1)-(4) and 19 C.F.R.
133.52(c)(1)-(4).  
 
                              Sincerely,




                              John F. Atwood, Chief
                              Intellectual Property Rights Branch