HQ 454063: Suspected infringement of registered and recorded GM trademark

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 454063

                         April 13, 1993


TRA CO:R:IT:I 454063 TPT

CATEGORY:  Trademark

Office of the Regional Counsel
U.S. Customs
ATTN: Karen A. Kuhn
1 World Trade Center
Suite 741
Long Beach, CA   90831

RE:  Suspected infringement of registered and recorded GM trademark

Dear Ms. Kuhn:

     This is in response to a case file forwarded to this Branch
from you wherein an importer requests that we reconsider an initial
determination of infringement.

FACTS:

     A shipment of key caps were imported bearing the word and
letters "FOR GM."  The word "FOR" appears above the letters "GM"
and the lettering of the word "FOR" is approximately a quarter of
the size of the letters "GM."  Based upon a suspicion of trademark
infringement, a sample was sent to the IPR Branch.  The IPR Branch
rendered an initial advisory determination of trademark
infringement dated February 25, 1992 (452656), to the office of the
Regional Counsel.

     The file of importer's arguments is now before us with a
request to reconsider our February 25, 1992 advisory decision.

ISSUE:

     Whether the use of the word "FOR" in conjunction with the
trademarked letters "GM" results in a permissive use of the the
trademark.

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).  General Motors "GM" trademarks are recorded with
the Customs Service (Recordation Numbers 89-00604, 90-00004, 90-
00354, 91-00398, and 91-00399).    

     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 argues that it is not unlawful to use another's
mark as long as it does not create confusion as to origin of the
product.  As to this proposition, we would agree and have confirmed
that the cited cases also state a similar proposition of law.  See
Selchow & Righter Company v. Decipher, Inc., 598 F. Supp. 1489,
1501 (E.D. Va. 1984) ("a competitor may use the trademark of
another to describe aspects of its own goods. . ..").  However, it
should be noted that the defendant in Selchow was found to have
overstepped the bounds of permissible use of another's trademark
because the trademark was used to sell its own product rather than
describing aspects of its product.  Id. at 1503.  In the instant
matter, the way GM appears on the key caps leads us to conclude
that the use was to increase the selling power of the importers
product.

     The importer further cites Cuisinarts, Inc. v. Robot-Coupe
International Corporation, 580 F. Supp. 634 (S.D.N.Y. 1984), for
the proposition that the use of another's trademark may not
infringe, so long as misrepresentations are not made. Id. at 637. 
Again, we agree that such a proposition exists.  However, the facts
of that case differ from the instant matter in that the case
involved two advertisements; the first ad was "It Used To Be
Pronounced Cuisinart" and the other was "Robot-Coupe 21/Cuisinart
0."  Id.  Despite the court's statement of this proposition, it
did find both ads to be misleading.  Id. 

     The importer also cites as support for non-infringing use a
Customs decision (C.S.D. 89-17, 1988).  In that case Customs found
no infringement of the Nintendo trademark.  In fact, this decision
found that, in accordance with the propositions stated by the
courts in the cases cited above, the use of Nintendo did not
overstep the permissible bounds of non-infringing use.  We point
out that the facts differ in the instant matter.  The opinion in
C.S.D. 89-17 states that the packaging of the suspected item used
the word Nintendo, but that Nintendo was not used in a predominant
fashion and that in some instances other words appeared two or
three times larger than the word Nintendo.  In the instant matter,
the letters GM are predominant and are several times larger than
the word FOR on the key caps.  Further, on the packaging the bold
lettering highlights the words "FIND YOUR GM KEYS QUICKLY."  

     The importer further asserts the mark appearing on the key
caps is not a counterfeit mark and cites to Customs decision 
C.S.D. 80-77 (which found that "Bolivia" appearing on a watch
infringed the registered trademark "Bulova").  A counterfeit mark
is one which is identical to or substantially indistinguishable
from the registered mark.  15 U.S.C. 1127.  The mark on the
imported item bears the letters GM in capital letters.  The
registered marks are in capital letters and the letters are
underlined.  The difference is in the appearance of the word "FOR"
appearing above the GM and the lack of the underline.  As discussed
above, the word "FOR" is substantially smaller on the key caps than
the "GM."

     It is our opinion that the addition of the word "FOR" on the
article is not used for advertising purposes, but may reinforce
the association with General Motors, the owner of the registered
and recorded trademark.  Furthermore, the fact that the article
bears the letters GM in such a predominant manner weighs against
the importer.  It is an accepted axiom that greater force and
effect is given to the dominant feature of a mark.  Giant Food Inc.
v. Nation's Foodservice, Inc., 710 F.2d 1565, 1570 (Fed. Cir.
1983); Blumenfeld Development Corporation v. Carnival Cruise Lines,
Inc., 669 F. Supp. 1297, 1320 (E.D. Pa. 1987).
       
HOLDING:

     Based upon the foregoing, we find that the mark as applied to
the imported key caps is substantially indistinguishable from the
registered and recorded trademark.  Therefore, these imported items
are subject to seizure under 19 U.S.C. 1526(e).

                              Sincerely,




                              John F. Atwood, Chief