TRA R:IT:I 460360 VEA
District Director
U.S. Customs
Room 1001, Terminal Island
300 S. Ferry Street
Los Angeles, California 90371
Attn: Import Specialist Sean Frankel or Paul Meripol
RE: Suspected Infringement of paint spray gun configuration trademark owned by Binks
Manufacturing Company (U.S. Patent and Trademark Office (PTO) Registration No. 1,
415,580; U.S. Customs ACS/IPR Module No. TMK87-00365)
Dear Sir:
This is in response to your request for our opinion on whether a shipment of paint spray
guns are "confusingly similar" to the configuration of a paint spray gun trademark owned by
Binks Manufacturing Company referenced above.
FACTS:
The shipment at issue was imported by Coleman POWERMATE Compressors,
Incorporated and imported into the United States through the port of Los Angeles. Pursuant to
19 C.F.R. 133.22 of the Customs Regulations it was detained on suspicion of infringing Binks'
configuration trademark and a 30-day detention notice issued. On June 12, 1995, counsel for
Coleman POWERMATE met with the Branch Chief of the Intellectual Property Rights Branch
and a staff attorney at Customs Headquarters to argue its position that the POWERMATE paint
spray guns are not "confusingly similar" to the trademarked configuration. A written submission
was subsequently also provided.
The trademarked configuration consists of the design of a paint spray gun and includes
three components: a hanging hook; a barrel and a handle. Although the configuration has the
traditional pistol-grip appearance normally associated with paint spray guns, it contains distinctive
design features. For example, the configuration design has an overall rounded shape. The barrel
consists of two distinct horizontal round tubular shapes. The first tubular shape forms the top
part of the barrel and is approximately four inches long. The hanging hook resembles a slightly
- 2 -
elongated circle or C-shape and is attached to the first tubular shape. The second tubular shape
forms the bottom part of the barrel and is connected to the handle. It is approximately two inches
long. The inside part of the handle forms a relatively straight line and contains a center ledge
under which the user's fingers rest. A rounded block-like shape protrudes outward from the
upper back part of the handle. Finally, the bottom of the handle lacks a ledge for securing the
user's small finger and lower portion of the hand to the gun.
The imported article also has the traditional pistol-grip appearance associated with paint
spray guns and contains a hanging hook, a barrel and a handle. However, its configuration has
more of an angular boxy look. The barrel consists of two horizontal rectangular shapes. The first
rectangular shape on which the hanging hook is prominently located forms the top part of the
barrel and is approximately four inches long. The hanging hook is squared-off and forms a
smaller circular or c-shape. The second rectangular shape is two inches long and forms the
bottom part of the barrel to which the handle is attached.
Also, the top inside part of the handle protrudes outward at an angle whereas the bottom
forms a straight line. The inside handle also contains two ledges, one in the center on which the
user's index finger and thumb rests, and the other at the bottom of the handle on which the user's
little finger rests. A square box-like shape protrudes outward from the upper back part of the
handle. The word "Powermate" is displayed in raised letters on the front and back of the handle.
Finally, Coleman POWERMATE holds a license to the design pattern (Des 313,270) on its
POWERMATE spray gun issued by the U.S. Patent and Trademark Office (PTO).
ISSUE:
Whether the paint spray gun imported by Coleman POWERMATE Compressors, Inc. infringes
the configuration trademark for a paint spray gun owned by Binks Manufacturing Company and
recorded with U.S. Customs?
LAW AND ANALYSIS:
The test for trademark infringement is whether the suspected mark is likely to cause
confusion, or to cause mistake, or to deceive. See, 15 U.S.C. 1114. In determining the
"likelihood of confusion", courts generally evaluate a variety of factors including: (1) the degree
of similarity between the marks; (2) similarity of the products; (3) actual confusion; (4)
sophistication of the buyers; (5) the defendant's good faith in adopting the mark; (6) the strength
of the registered mark; and (7) channels of trade. Polaroid Corp. V. Polarad Electronics Corp.,
287 F. 2d 492 (2d Cir.), cert. denied 368 U.S. 820 (1961). For purposes of this administrative
- 3 -
decision, the analysis will focus on the similarity between the marks. Also, it is undisputed that
the products are both paint sprayers and evidence demonstrating whether there is actual confusion
by purchasers of these products, the defendant's good faith in adopting the mark, the strength of
the mark and sophistication of the buyers is unavailable.
In evaluating "the degree of similarity" in cases involving configuration trademarks where
the configuration is common to products of the type at issue, courts generally look to whether the
suspect mark incorporates the distinctive features which are unique to the registered configuration
trademark so as to cause confusion between consumers. Chemlawn Servs. Corp. v. GNC Pumps,
Inc., 690 F. Supp. 1560 (1988). In this case, the distinctive design features of the registered
configuration which distinguish it from other paint spray guns include: (1) a round, tubular look;
(2) uniform inside handle almost forming a straight line; and (3) the lack of a bottom ledge to
secure the user's small finger and lower portion of the hand to the gun. Two of the component
parts, the hanging hook and barrel, on the registered mark have a rounded tubular appearance.
The barrel consists of two distinct horizontal round tubular shapes, and the hanging hook forms a
slightly elongated circular shape. The inside handle is uniform and almost forms a straight line.
Finally, a rounded block-like shape protrudes outward from the upper part of the handle.
Although the imported article has the traditional pistol-grip appearance, it fails to
incorporate the distinct design features of the registered trademark and in our opinion is unlikely
to be associated with the registered configuration. The POWERMATE paint spray gun has a
square boxy look versus the more rounded look of the trademarked configuration. The two
horizontal shapes which make up the barrel and the hanging hook on the imported article have an
angular squared-off/flattened look. The squared-off/flattened look causes the hanging hook to
form a smaller c-shape compared to the larger, more circular C-shape of the hook found on the
registered mark. A square box-like shape protrudes outward from the upper back part of the
handle as opposed to the rounded block-like shape on the registered mark.
Moreover, the inside handle on the POWERMATE paint spray gun unlike the registered
mark is not uniform and does not form a straight line. The top inside part of the handle juts
outward at an angle whereas the bottom part forms more of a straight line. Finally, the imported
article contains a ledge at the bottom of the inside handle which provides the user with a
mechanism to secure the lower portion of the hand to the gun. No such ledge exists on the
trademarked configuration.
In evaluating "similarity between marks", courts have held that when two products are
similar, the manufacturer's labeling of its product with its own brand name is a significant factor in
reducing likelihood of confusion among consumers as to the source of the product. Ziebart
Intern. Corp. v. After Market Associates, 802 F. 2d 220 (7th Cir. 1986), cited in G. Heileman
- 4 -
Brewing Co. v. Anheuser-Busch, Inc., 873 F. 2d 985 (7th Cir. 1989). The spray gun
manufactured by Coleman POWERMATE includes the word "Powermate" displayed in
raised black letters on both sides of the handle. Coleman POWERMATE's conspicuous use of its
own trademark on the imported article clearly indicates the source of the product and should
alleviate confusion among purchasers as to whether it is associated with Binks Manufacturing
Company.
In assessing whether the two products at issue are sold through the same channels of trade
so as to increase the "likelihood of confusion", courts generally consider whether there is a
relationship in use, promotion, distribution, or roles, between the parties' goods. Forum Corp. Of
North America v. Forum, Ltd., 903 F. 2d 434 (7th Cir. 1990). In its submission, the importer
states that the spray guns at issue are marketed through mass merchant retailers such as Sam's
Club (WalMart) and Builders Square (K-Mart) and its intended purchasers are avid hobbyists and
do-it yourself users. Also, to the importer's knowledge, spray guns bearing the configuration
mark are sold through jobbers who cater to professionals who use the Binks guns commercially.
In the absence of any evidence to the contrary, the different channels of distribution and intended
consumers for these products appear to reduce the chances for likelihood of confusion in this
case.
Finally, the importer holds a license to the design patent (Des 313,270, date December 25,
1990) on its POWERMATE spray gun which we find to be a significant factor in this case. As
the administrative agency with enforcement authority to protect intellectual property rights at the
border, Customs recognizes trademarks or patents registered by the PTO and has no authority to
question the validity of the registration. A finding of infringement in this case would result in
prohibiting the importer from importing goods into the United States manufactured in accordance
with its design patent. In view of the differences in similarities between the marks at issue, the
channels of distribution and intended users, and the existence of a design patent on the imported
paint spray guns, we find that they are not infringing.
HOLDING:
We hold that the spray guns imported by Coleman POWERMATE are not "confusingly
similar" to the configuration of a paint spray gun trademark owned by Binks Manufacturing
Company. Therefore, the shipment should be released to the importer.
John F. Atwood, Chief
Intellectual Property Rights Branch