HQ 450130: Trademark Protection Extended Beyond Specific Articles onRegistration; Recordation of Trademarks not Registered with thePatent and Trademark Office

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 450130

                          July 19, 1990

TRA CO:R:P IPR 450130 TPT

CATEGORY: Trademark

Donald W. Canady, Esq.
11300 Sorrento Valley Road
Suite 200
San Diego, California 92121

RE:  Trademark Protection Extended Beyond Specific Articles on
Registration; Recordation of Trademarks not Registered with the
Patent and Trademark Office

Dear Mr. Canady:

     This is in response to your letter dated June 4, 1990.  In
your letter you have requested Customs's position on the scope of
protection for a trademark registered with the Patent and
Trademark Office (PTO) and recorded with Customs and Customs's
position as to whether a non-registered trademark may be recorded
with Customs.

FACTS:

     The particular trademark referenced in your letter covers
goods of three different classes, truck parts, clothing, and toys
according to the PTO registration certificate.  The trademark
covering these classes of goods is presently recorded with
Customs.

ISSUES:

     Whether Customs will protect the trademark owner against
imported articles bearing the subject trademark on articles not
specifically listed on the PTO registration certificate and
whether the trademark owner may record its trademark with Customs
without first registering with the PTO.

LAW AND ANALYSIS:

     The specific goods for which a trademark is registered and
the classification of the goods for the convenience of the Patent
and Trademark Office are not means by which an applicant's or
registrant's rights are to be limited or extended.  15 U.S.C.
1112; see also 37 C.F.R. 2.85(g) (Classification schedules shall
not limit or extend the applicant's rights).  


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     In regard to the specific trademark referenced in your
letter, the registrations specifically list truck parts, clothing
apparel (shirts, sweaters, jackets, and hats), and toys (toy
trucks, scale models, and kits for toy trucks).  Since section
1112 explicitly states that the registration is not to limit or
extend the rights of the trademark owner, protection may extend
beyond the specific goods listed on the registration certificate.

     Whether protection will be granted to goods not specifically
listed requires an inquiry into whether the public is likely to
be confused by the use of the trademark.  See Hindu Incense v.
Meadows, 692 F.2d 1048, 1050 (6th Cir. 1982).  The test for
whether a trademark has been infringed is to determine if there
is a likelihood of confusion, not the classes for which the
trademark is registered.  15 U.S.C. 1114; see also Valmor
Products Company v. Standard Products Corporation, 464 F.2d 200,
202 n.2 (1st Cir. 1972).  The "related goods" doctrine will be
applied in order to give protection against use on related goods
not specified on the regtistration certificate.  Hindu at 1051. 
Therefore, if goods not specifically on the registration
certificate are imported bearing the subject trademark, Customs
will apply the likelihood of confusion test (provided that it is
an unauthorized or prohibited importation). 

     In providing protection of the subject trademark, Customs
will follow the law as discussed above.  In each case, a
determination of likelihood of confusion is a finding of fact to
be decided based upon specific circumstances.  Id. at 1051. 
Absent a specific Customs transaction we decline to offer any
opinion as to the actual breadth of protection Customs will grant
to the trademark in question.

     Turning to your second question regarding the recordation of
trademarks without first registering the mark at the PTO, Customs
looks to the appropriate governing statutes and regulations. 
Trademarks with current registrations are eligible for
recordation with Customs, 19 C.F.R. 133.1, if the registration is
on the Principal Register at the PTO.  15 U.S.C. 1096.  Further,
the application for recordation must include a copy of the
certificate of registration with the PTO.  19 C.F.R. 133.3. 
Finally, we point out that, as to counterfeit trademarks, the
governing statute, 19 U.S.C. 1526, refers to trademarks
registered with the PTO and that 15 U.S.C. 1124, dealing with
simulating marks, also refers to marks which copy or simulate a
registered mark.

HOLDING:

     Customs protection of registered and recorded trademarks is
not limited by the specific goods listed on a registration
certificate.  Customs generally adheres to the "related goods"

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doctrine and applies the test of likelihood of confusion in
accordance with 15 U.S.C. 1114.  The recordation of a trademark
is conditioned upon the submission of documents establishing that
the trademark is registered with the Patent and Trademark Office.

                              Sincerely,



                              John F. Atwood, Chief
                              Intellectual Property Rights