MAR-2-05 CO:R:C:V 734455 KR
Ms. Joni A. Laura
Graham & James
2000 M Street, N.W.
Suite 700
Washington, D.C. 20036-3113
RE: Country of origin marking of a cosmetic line with a
trademark of "Berlin JOOP!" which is imported from France; 19 CFR
134.47; application for trademark.
Dear Ms. Laura:
This is in response to your letter dated December 19, 1991,
requesting a country of origin marking ruling concerning a
cosmetic line with a trademark of "Berlin JOOP!" which is
imported from France. You submitted a photocopy of a sample box
which will be used to package the cosmetics. You have also
submitted an actual sample box to show what the box will look
like and the print size. You submitted a photocopy of an
application for trademark, filed with the U.S. Patent and
Trademark Office date stamped January 10, 1992.
FACTS:
You state that Lancaster Group USA wishes to import cosmetic
products manufactured by Parfums JOOP!. The cosmetics you wish
to import are a new product line. The product line is called
"Berlin JOOP!". In your ruling request dated December 19, 1991,
you state that a trademark registration was already pending.
However, the actual application for trademark registration with
the Patent and Trademark Office is dated January 10, 1992. You
state that the cosmetics will be imported in individual boxes of
similar but not necessarily identical sizes. The boxes for each
item will have markings which are identical in form, but the
product-type name (i.e. "perfume" or "body cream"), ingredients
and volume will be different.
On April 10, 1992, you sent Customs a list of the cosmetics
you wish included in this ruling. These cosmetics are:
Perfumery, eau de toilette, soaps, bath and shower
additives, sun protection and sun care antiperspirant,
deodorants for personal use, cremes, powder, rouge,
eyebrow pencil, eyeshadow, eyelash black, lipsticks,
lotions, face lotions, face masks, articles for hair
care, hair shampoo, depilatory, shaving creme, shaving
foam, aftershave, skin cleaner, body lotion, nail
enamel, and nail enamel remover.
On May 28, 1992, you sent Customs four pages of material
concerning the creator/namesake of the "JOOP!" cosmetic line and
his reasons for creating and naming the cosmetic line "BERLIN
JOOP!".
In your ruling request you enclose a photocopy of a sample
box showing where the markings on the box will be placed. In a
meeting held January 10, 1992, you brought a sample box which you
explained was not to be used for placement of the markings on the
box, but instead to show the box dimensions, the print size and
style.
The photocopy of the box, combined with the sizes and style
from the sample box, shows the front and side panels of the box
are 3 and 7/8 inches long x 3 and 3/8 inches high. The name
"BERLIN" appears on the front panel of the box with a metallic
silver or gold colored bar underlining it. "BERLIN" will appear
in approximately 10 point print. (A point is approximately
.01384 inch or 1/72 of an inch). Below this and centered on the
panel will be the name "JOOP!". "JOOP!" will appear in
approximately 32 point print. Along the bottom of the front
panel will be the name of the product-type and the volume of the
contents. These will appear in approximately 8 point print.
On the back panel of the box, in approximately 5 point
print, the ingredients will be listed and below will appear the
words:
DIST: LANCASTER__GROUP USA
NEW YORK, N.Y. 10022
Below this will appear a drawing/symbol. Below the symbol
will be the words "PARFUMS JOOP!, in approximately 9 point type.
Below that will be "PARIS" in approximately 5 point type.
Finally, just below "PARIS" will be the words "MADE IN FRANCE" in
approximately 5 point print. French words, including the
manufacturer's name appear on the bottom panel of the box in
approximately 5 point print.
ISSUE:
What packaging and labeling is required when a cosmetic
line's name includes the word "BERLIN", for which an application
for trademark was filed, and when "USA" and "NEW YORK" appear on
the box, when the actual country of origin of the product is
France?
LAW AND ANALYSIS:
Section 304 of the Tariff Act of 1930, as amended (19 U.S.C.
1304), provides that, unless excepted, every article of foreign
origin imported into the U.S. shall be marked in a conspicuous
place as legibly, indelibly, and permanently as the nature of the
article (or container) will permit, in such a manner as to
indicate to the ultimate purchaser in the U.S. the English name
of the country of origin of the article. The Court of
International Trade stated in Koru North America v. United
States, 701 F. Supp. 229, 12 CIT 1120 (CIT 1988), that "in
ascertaining what constitutes the country of origin under the
marking statute, a court must look at the sense in which the term
is used in the statute, giving reference to the purpose of the
particular legislation involved. The purpose of the marking
statute is outlined in United States v. Frielaender & Co., 27
CCPA 297 at 302, C.A.D. 104 (1940), where the court stated that:
"Congress intended that the ultimate purchaser should be able to
know by an inspection of the marking on the imported goods the
country of which the goods is the product. The evident purpose
is to mark the goods so that at the time of purchase the ultimate
purchaser may, by knowing where the goods were produced, be able
to buy or refuse to buy them, if such marking should influence
his will."
Part 134, Customs Regulations (19 CFR Part 134), implements
the country of origin marking requirements and exceptions of 19
U.S.C. 1304. Section 134.41(b), Customs Regulations (19 CFR
134.41(b), mandates that the ultimate purchaser in the U.S. must
be able to find the marking easily and read it without strain.
Section 134.1(d), Customs Regulations, (19 CFR 134.1(d)),
defines the ultimate purchaser as generally the last person in
the U.S. who will receive the article in the form in which it was
imported. In this case the ultimate purchaser is the consumer
who will use the cosmetic product.
In addition, 134.46, Customs Regulations (19 CFR 134.46),
requires that when the name of any city or locality in the U.S.,
or the name of any foreign country or locality other than the
name of the country or locality in which the article was
manufactured or produced, appear on an imported article or its
container, there shall appear, legibly and permanently, in close
proximity to such words, letters or name, and in at least a
comparable size, the name of the country of origin preceded by
"Made in," "Product of," or other words of similar meaning.
Customs has ruled that in order to satisfy the close proximity
requirement, the country of origin marking must appear on the
same side(s) or surface(s) in which the name of the locality
other than the country of origin appears. HQ 708994 (April 24,
1978). The purpose of 19 CFR 134.46 is to prevent the
possibility of misleading or deceiving the ultimate purchaser as
to the origin of the imported article. In this case, "USA" and
"NEW YORK" appear below the list of ingredients. The box is
marked with the country of origin, "MADE IN FRANCE" below this,
on the same side, and in the same type size. This satisfies the
requirements of 19 CFR 134.46, for the "USA" and "NEW YORK"
locations appearing on the box.
Customs Regulations 19 CFR 134.47, requires a slightly less
restrictive marking than 134.46 when the location name other
than the country of origin appears as part of a trademark. Under
134.47, when the name of a place other than the country of
origin appears as part of a trademark or trade name or as part of
a souvenir marking, the name of the actual country of origin must
appear in close proximity to the place "or in some other
conspicuous location". In other words, if the question concerns
a trade name or trademark, the country of origin marking needs
only to meet the general standard of conspicuousness. In either
134.46 or 134.47, the name of the country of origin must be
preceded by "Made in", "Product of", or words of similar meaning.
See HQ 734175 (February 24, 1992); HQ 734277 (December 24, 1991).
The language of 19 CFR 134.47 pertains to a trademark or
trade name with a location in the United States. In this case
the trademark is "BERLIN", signifying the German city, not a U.S.
location. Customs has held, however, that "[t]he rationale for
granting a special exemption for trademarks and trade names
containing the name of a domestic locality applies at least as
strongly to trademarks bearing the name of a foreign locality.
Accordingly, it is our opinion that the intent of 134.47 was to
include foreign trademark designations as well as domestic
locales." HQ 731524 (December 18, 1989) (quoting HQ 710682 (June
26, 1979)).
In this case, the application for trademark was first filed
on January 10, 1992, twenty three days after the ruling request
to Customs was dated. The application has not been granted.
Previously Customs allowed an application for trademark to be
sufficient to qualify for the 134.47 exception pending Customs
final interpretation of the regulation. See HQ 734066 (July 15,
1991); HQ 734073 (July 10, 1991). Customs has had some concern
about the scope of 19 CFR 134.47 for some time in that regard.
Customs has been developing an interpretation of 19 CFR 134.47,
concerning what is required to establish a trademark. In HQ
734066 (July 15, 1991), we stated that:
an application for trademark registration has been
filed with the U.S. Patent and Trademark Office....
Although Customs is reviewing the issue of whether
evidence of trademark registration is required to
invoke the provisions of 19 CFR 134.47 (as opposed to
the more stringent requirements of 19 CFR 134.46),
until publication of a contrary view, evidence of
trademark registration is not required to invoke the
provisions of 19 CFR 134.47.
Further, in HQ 734073, (July 10, 1991) we stated similarly
that:
An application is now pending before the U.S. Patent
and Trademark Office .... Customs is currently
reviewing the issue of whether or not a trademark must
be registered in order to trigger the requirements of
19 CFR 134.47. Until Customs has resolved this issue
and published its position, the requirements of 19 CFR
134.47 rather than 19 CFR 134.46 will be applied to all
trademarks with a U.S. reference, registered or not.
Although 19 CFR 134.47 applies when a locality reference
appears as part of a trademark, the regulation does not specify
what evidence is needed to establish a trademark. In view of the
fact that the regulation does not specify that trademark
registration is required, we have not previously required such
evidence. However, absent evidence of registration, other
evidence of trademark is required. The question presented in
this case is whether the mere filing of an application for
registration is sufficient evidence to establish a trademark for
purposes of 19 CFR 134.47. We have concerns about whether this
is enough, especially when the application is based on an intent
to use the purported trademark. We are considering soliciting
public comments on the broad issue of what evidence of trademark
is necessary to invoke the requirements of 19 CFR 134.47.
Nonetheless, because the above two rulings applied the
requirements of 19 CFR 134.47 when the only evidence of
trademark was the pending application, until further notice we
will continue to accept a filed application with the U.S. Patent
and Trademark Office as sufficient evidence of a trademark for
the purposes of 19 CFR 134.47. However, if for some reason the
application is denied, then the requirements of 19 CFR 134.46
will have to be complied with.
Therefore, in this case, although only an application for
registration of a trademark exists, Customs will allow the more
lenient requirements of 19 CFR 134.47 to apply here. We,
therefore, find that "BERLIN" is a trademark within the exception
of 19 CFR 134.47. The box for the cosmetic products must
contain the country of origin of the cosmetics, and this must
appear with the words "Made in" or "Product of" or other similar
words; but the country of origin does not have to appear on the
same panel as the trademark "BERLIN". The less restrictive
requirements of 19 CFR 134.47 will apply, requiring only that
the country of origin appear in a legible, conspicuous, permanent
manner in close proximity to the trademark, or in some other
conspicuous location. We find that the box, as described above
will satisfy these requirements. However, because of the wide
range of cosmetics sought to be imported, this ruling is limited
to a box with the dimensions and print size described above.
HOLDING:
The cosmetics listed above and packaged in the boxes
described above and marked as described above, satisfy the
requirements of 19 U.S.C. 1304 and 19 CFR 134.47.
Sincerely,
John Durant, Director
Commercial Rulings Division