HQ 450660: Suspected infringement of a Reebok trademark (RegistrationNo. 1,196,293; Customs Recordation Issuance No. 87-247, April1987)

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 450660

                        January 23, 1991

TRA CO:R:IT:I 450660 TPT

CATEGORY:  Trademark

District Director of Customs
P.O. Box 37260
Milwaukee, Wisconsin 53237-0260

RE:  Suspected infringement of a Reebok trademark (Registration
No. 1,196,293; Customs Recordation Issuance No. 87-247, April
1987)

Dear Sir:

     This is in response to your memorandum of November 29, 1990,
forwarding the documents related to two district cases (case
numbers 89-3701-00051 and 00053).  This matter, involving the
importation of athletic footwear suspected of infringing the
above referenced trademark, was forwarded to Headquarters after
several conversations between this office and a member of your
staff.

FACTS:

     District case 89-3701-00051 involves the importation  of
6,852 pairs of athletic footwear (381 cartons of shoes, domestic
value $211,774).  District case 89-3701-00053 involves the
importation of 339 cartons of mens shoes (domestic value
$131,503).  In letters dated September 5, 1989, and October 2,
1989, Customs notified the importer of the seizure of these
shipments.  In each letter Customs alleged that a violation of 19
U.S.C. 1526(a) occurred and seizure was effected pursuant to 19
U.S.C. 1526(b).  In these letters the importer was advised that
it could wait to file a petition pending the outcome of criminal
proceedings.  In each case Customs stated that the merchandise
bears a counterfeit trademark.   

     On August 7, 1990, Customs notified the importer that since
criminal proceedings would not be initiated Customs would
entertain administrative proceedings.  Customs again issued a
written notification of seizure on September 5, 1990, and
outlined the importer's right to petition for relief.  In
response, the importer filed its petition, September 6, 1990,
denying the allegation that it imported counterfeit merchandise. 


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     After reviewing the importers petition, Customs stated in
its November 15, 1990 letter that the petition requesting relief
from forfeiture was denied.

ISSUE:

     Whether the imported athletic footwear, bearing a word mark
registered with the U.S. Patent and Trademark Office, infringes
the design trademark referenced above.

LAW AND ANALYSIS:

     Under the Trademark Laws a certificate of registration 
issued by the U.S. Patent and Trademark Office 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
which is identical or substantially indistinguishable from the
registered mark. 

     The importer states that the mark which appears on the shoe,
"Stacy Adams," has been registered since 1940 (Registration No.
380,669 renewed for second 20-year period on August 27, 1980). 
The importer asserts that the soles of the imported merchandise
differ entirely from the Reebok shoe and that the boxes of the
imported merchandise do not resemble the boxes of the Reebok
shoe.

     The importer states that Reebok has had mixed results in
attempting to protect its so-called "stripe check" design mark
referenced above.  The importer relies on Reebok v. Alon, 5
U.S.P.Q.2d 1830 (C.D. Cal. 1987).  In Alon Reebok attempted to
enjoin another manufacturer from selling shoes having a similar
"stripe check" design.  The importer relies on the fact that the
court denied Reebok's request for injunctive relief and quotes
the court's language that the stripe check design had acquired
"no secondary meaning" and that the design is not "unique." 
Arguing that other courts have also questioned attempts to
protect stripe patterns, the importer cites Brooks Shoe          
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Manufacturing Co., Inc. v. Suave Shoe Corporation, 716 F.2d 854
(11th Cir. 1983).

     Additionally, the importer relies upon language of the
Trademark Trial and Appeal Board (TTAB) as support for the view
that registered marks such as the one in question should be
protected narrowly.  In In re The Lucky Company, 209 U.S.P.Q. 422
(TTAB 1980), the board noted the common practice of athletic shoe
manufacturers of placing stripes and bar designs on the sides of
shoes as a way of indicating the source of such merchandise.  The
board stated that the consumer market was saturated with shoes
bearing similar bars and designs, thereby resulting in weak marks
entitled to only narrow and limited protection.  Id. at 423.  

     The importer contends that the TTAB has questioned these
types of designs as functioning as trademarks at all.  Puma-
Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate
Corporation, 206 U.S.P.Q. 255, 258 (TTAB 1980).  The importer
further avers that in a case involving a weak trademark, as it
believes is the case here based upon Dassler KG and In re The
Lucky Company, the mark must acquire secondary meaning. 

     The importer argues that the design marks on athletic
footwear are not distinctive enough to warrant protection based
upon the cases it cites.  The importer contends that it is unfair
and contrary to law to permit Customs to resolve this case by
forfeiture.  Finally, the importer argues that it is unfair for
Customs to resolve this case where a court has denied the
trademark owner an injunction based upon a finding of no
likelihood of confusion.

     Initially, we point out that Reebok has a registered design
trademark for athletic shoes and Reebok has recorded its
trademark with Customs for protection against imported
merchandise infringing the trademark.  The registered trademark
is a stripe design on the side of the shoes.  As shown on the
certificate, one stripe begins high on the side, below the ankle,
and slants down slightly in the direction of the toe.  

     A center shoe stripe begins near the base of the shoe where
stitching of the heel portion of the shoe meets the rubber
banding around the base of the shoe.  The center stripe is narrow
at the bottom and rises along the side appearing to overlap the
first stripe.  This center stripe widens, one side curving
slightly and toward the toe end of the laces (bottom side of the
stripe) while the other side rises initially at the same angle
then flairs sharply wider over the first stripe and toward the
opening of the shoe (top side of the stripe).  The width of this
center stripe is almost as wide as the eyelet stays on the top of
the shoe.

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     Two other narrow, parallel stripes run from the bottom of
the center stripe.  These two narrow, parallel stripes slant at
the same angle as the first stripe then curve downward into the  
foxing like band around the bottom of the shoe.  The narrow
stripe closest to the toe end of the shoe meets the foxing like
band at a point below the end of the eyelet stays.         

     The imported shoes bear stripe designs that very closely
resemble the registered and recorded design.  On the imported
shoes, the center stripe flairs out and widens at a point
slightly higher than on the protected article.  Also, the two
narrow stripes on the imported shoe extend toward the toe of the
shoe like the protected shoe, but ends where the reinforced
leather like toe material begins on the side of the shoe.  Thus,
the two narrow stripes do not extend as far as the stripes on the
Reebok.

     Looking at the stripe design of the imported shoe, the
overall design on this shoe so resembles the registered and
recorded design as to cause a likelihood of confusion. 
Therefore, the imported shoes are subject to seizure under title
19, U.S.C., 1595a(c) for a violation of title 15, U.S.C., 1124
(no article which copies or simulates a registered trademark
shall be admitted to entry).  We note that the TTAB has, in the
cases cited above, commented on the weakness of such marks. 
However, notwithstanding these comments by the TTAB, the TTAB
also stated that "we cannot overlook the fact that . . . a
registration" exists and that "such registration . . . is
entitled to various presumptions . . . and is,therefore, entitled
to a measure of protection . . .."  Dassler KG at 258; see also
In re The Lucky Company at 422 (these designs and bars are weak
marks entitled to very narrow and limited scope of protection).

     In addition to the design on the imported shoe, it bears the
words "Stacy-Adams" on the center stripe.  Notwithstanding that
"Stacy-Adams" is a registered mark, the existence of this mark on
the shoes in combination with another registered trademark
(Reebok stripe design), rather than eliminating any confusion,
may create consumer confusion.  See generally Banff, Ltd. v.
Federated Department Stores, Inc., 841 F.2d 486 (2d Cir. 1988).
  
     Although the TTAB explicitly states its reservations
concerning design trademarks on athletic footwear, the board
still recognizes that protection of such marks is warranted. 
Since the TTAB has not invalidated Reebok's design trademark,
Customs will continue to protect it against infringement based
upon the statutory provisions cited herein.




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HOLDING:

     The imported merchandise bearing the stripe design with the
words "Stacy-Adams" is determined to cause a likelihood of
confusion and, therefore, subject to seizure under 19 U.S.C.
1595a(c) for a violation of 15 U.S.C. 1124.  The importer may
petition for relief in accordance with 19 C.F.R. Part 171.

                              Sincerely,




                              John F. Atwood, Acting Chief
                              Intellectual Property Rights Branch