Suspected Trademark Infringement of Various Registered, butunrecorded trademarks

HQ 451754 November 13, 1991 TRA CO:R:IT:I 451754 TPT CATEGORY: Trademark District Director of Customs One Virginia Avenue Wilmington, North Carolina 28401 RE: Suspected Trademark Infringement of Various Registered, but unrecorded trademarks Dear Sir: This is in response to the district's FP&F office, requesting advice on the issue of infringement in regard to various registered trademarks not recorded with Customs. ISSUE: Whether the caps, socks, and sweatbands bearing various trademarks infringe trademarks which are registered with the U.S. Patent & Trademark Office (PTO) but not recorded with U.S. Customs? LAW AND ANALYSIS: U.S. Customs may seize merchandise which is introduced or attempted to be introduced contrary to law under section 1595a(c) of the Customs Laws (19 U.S.C. 1595a(c)). In instances where the infringed trademark is registered with the PTO, but not recorded with Customs, Customs examines the merchandise to determine if a the imported goods bear a counterfeit or substantially indistinguishable mark. See 15 U.S.C. 1127. Trafficking in merchandise which bears a mark that is substantially indistinguishable from a registered trademark or a mark which is a counterfeit of a registered trademark is a violation of section 2320 of the Criminal Laws (18 U.S.C. 2320). The instant matter involves eleven separate trademarks which are registered with the PTO, but not recorded with Customs. Trademark Reg. No. Shimano & Design 1,449,808 Raleigh 1,010,107 Ragbrai 1,062,956 2 Toshiba 1,405,380 Campagnolo 1,184,682 Cinelli 1,390,890 Suntour 1,191,644 Cafe de Colombia 1,266,492 Tour de France 1,455,990 Brooklyn 1,273,222 Giro 1,541,697 Samples forwarded to this office which bear marks that may infringe are various caps, socks, and sweat bands. In this case, where the marks are registered, but not recorded with Customs, seizure should be executed only against merchandise bearing counterfeit or substantially indistinguishable marks. Goods bearing confusingly similar marks should not be seized. After examining the registered marks against the marks on the sample merchandise forwarded to this office, we conclude that the merchandise should be seized except those bearing the words "Giro" and "Campagnolo." HOLDING: The merchandise bearing unauthorized marks as described above is subject to seizure under 19 U.S.C. 1595a(c) for a violation of 18 U.S.C. 2320. We conclude that the merchandise bearing the words "Giro" and "Campagnolo" are not subject to seizure because the trademarks are not recorded and are not considered to be counterfeit or substantially indistinguishable. Sincerely, John F. Atwood, Chief Intellectual Property Rights Branch