Court Backs CBP Definition of Trademark for Origin Marking Purposes
The Court of International Trade recently held that certain imported goods must comply with a more stringent country of origin marking requirement because marks they bear with a geographic reference were not properly trademarked at the time of importation.
This case involves 11 shipments of jeans imported from China in September and October 2010. These jeans have various markings embroidered on the inside of the waistband that specify the brand name under which they are sold along with a geographical reference such as “Los Angeles” or “USA.” Applications to trademark these markings filed in October 2010 claimed that they had been used in commerce since at least July 2005, and the trademarks were registered in May and June 2011.
19 CFR 134.46 requires the name of the country of origin of a good to be preceded by “made in,” “product of” or similar words if words or letters referencing a location other than the country of origin (e.g., “United States” or “American”) appear on an imported article or its container and may mislead the consumer as to the actual country of origin. 19 CFR 134.47, on the other hand, states that when “United States,” “America” or the name of a U.S. location appears as part of a trademark or trade name, the associated good must be legibly, conspicuously and permanently marked to indicate the name of the country of origin of the article, preceded by “made in,” “product of” or similar words in close proximity or some other conspicuous location.
The plaintiff asserted that the less stringent origin marking requirements of 134.47 should apply to its jeans. Because “trademark” is not defined in this or other pertinent customs regulations, the plaintiff argued that the court should look to the definition provided by the Lanham Act, which it said provides for trademarks that are actually used in commerce or pending registration.
The CIT, however, held that it must give substantial deference to CBP’s interpretation of “trademark” as including either registered trademarks or marks subject to a pending application. This interpretation is consistent with both the regulation and its stated purpose, the court said, and the plaintiff failed to demonstrate that it was plainly erroneous or inconsistent with the regulation.
The CIT further rejected the plaintiff’s contention that the stricter marking standard is only triggered if a locality term on a product may mislead or deceive the customer as to the country of origin and that there would be no confusion with respect to the jeans at issue because the consumer can easily find the marking “made in China” upon casual inspection of the inside waistband. The court pointed out that 134.46 does not require CBP to show that a consumer is being misled and instead holds that the presence of the text itself (i.e., a locality different from the country of origin) may be sufficient to mislead the consumer. In addition, the court said, nowhere in this regulation is “upon casual inspection” of the goods discussed as a suitable marking alternative.
The court thus concluded that (a) 134.46 is the applicable regulation because the jeans displaying two of the marks were entered before the associated trademark applications were submitted and (b) the jeans did not comply with that regulation because their country of origin labels were not displayed in close proximity to the potentially confusing marks.