TMK-1 RR:IT:IP 469539 MLR
Claire E. Reade, Esq.
James T. Walsh, Esq.
Kevin T. Traskos
Arnold & Porter
555 Twelfth Street, N.W.
Washington, D.C. 20004-1206
RE: 15 U.S.C. 1125; “false or misleading description of fact”; Goodyear Welt; Shoes
Dear Ladies and Gentlemen:
This is in reference to your letters dated May 30, June 7, and July 14, 2000, requesting a ruling on behalf of R. Griggs Group, Ltd. (AGriggs@), whether certain terms may be included on boxes of Dr. Martens footwear upon importation.
FACTS:
Griggs imports Dr. Martens footwear from England mostly for sale to its U.S. distributor, Dr. Martens AirWair USA, LLC. It is stated that the Dr. Martens footwear is manufactured using a “welt”, which is a strip of material that runs around the outside of a shoe, above the outsole. In a process called “welting,” it is stated that a stitch is run horizontally through the welt, then through the upper, and then through a “rib” or “lip” protruding from the bottom of the insole. It is stated that this horizontal stitching is performed using a machine called a “Goodyear welting machine” or “Goodyear stitcher.” The outsole is later heat-sealed to the welt to attach the bottom to the remainder of the shoe or sandal. Therefore, the upper and insole are attached to the outsole not directly, but through the welt. The footwear at issue does not have a vertical stitch from the welt through the midsole or outsole. For purposes of this ruling, we are assuming that the goods may be classified as “welted footwear.”
The welted footwear described above is imported with various packaging and marketing materials, consisting of shoeboxes, hang-tags, leaflets, and the like. It is stated that Dr. Martens describes its welted footwear in its marketing materials or on its packaging as AGoodyear welted@, AGoodyear welt,@ AGoodyear welting,@ or AGoodyear stitching@. Exhibits of Dr. Martens marketing literature are submitted indicating the use of the terms AGoodyear@ and Awelt@ or a form thereof, as follows: AGoodyear welting adds to the durability and strength@; Athe AirWair sole is made from a special PVC compound ... attached to the upper with invisible Goodyear stitching@; AGoodyear stitching ensures superb sole attachment@; AGoodyear welted construction and heat sealed sole attachment@; AGoodyear welt at the heart of the Dr. Martens construction@.
As support that the footwear may be referred to in its marketing and packaging materials as AGoodyear welted@, AGoodyear welt,@ AGoodyear welting,@ or AGoodyear stitching@, a statement from a U.S. shoe manufacturing expert is submitted; and the definitions of the Organization for Economic Cooperation and Development (OECD), British Footwear Association, and Consumers= Guide to Product Grades and Terms is cited.
ISSUE:
Whether the welted footwear may be properly labeled with the term AGoodyear@ and a form of the term Awelted@ for purposes of 15 U.S.C. 1125.
LAW AND ANALYSIS:
ADVANCE \d12 Section 43 of the Lanham Act (15 U.S.C. 1125), implemented by 19 C.F.R. §11.13, provides in pertinent part that any goods which bear:
any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive ... as to the actual country of origin Y or in commercial advertising or promotion, misrepresents the nature, characteristics, qualities Y shall not be imported into the United States or admitted to entry at any customhouse of the United States.
Section 11.13, Customs Regulations (19 C.F.R. §11.13), provides, in pertinent part, that articles (or their containers) which bear false designations of origin, or false descriptions or representations, including words or other symbols tending falsely to describe or represent the articles, are prohibited importation under 15 U.S.C. 1124, 1125 and other provisions of law, and shall be detained.
In this case, it is claimed that it is appropriate to refer to the references AGoodyear welted@, AGoodyear welt,@ and AGoodyear welting.@ A statement from a U.S. shoe manufacturing expert in the shoe industry for more than 50 years indicates that welted shoes have a Awelt@, a strip of material that runs around the outside perimeter of a shoe. The expert states that welted footwear requires special horizontal stitching that passes through the welt, through the upper, and into the rib, a protruding rim of stiff material around the bottom of the insole approximately 5/32 inch from the outer perimeter of the insole. This stitching holds the insole, the upper, and the welt together. The expert states that the term AGoodyear@ is commonly understood to refer to footwear made using the unique horizontal stitch, if the stitching is performed using a welt stitching machine. The expert states that a similar phrase AGoodyear welt construction@ has a different technical meaning, known only to shoe manufacturing experts, that the shoes have the special horizontal stitch described above, and a second vertical stitch that binds the welt to the outsole. It is stated that the second vertical stitch is performed by a different (non-Goodyear) machine. However, the expert states that the terms used by Griggs are different from the phrase AGoodyear welt construction@ and would not be misleading to shoe experts even though the Dr. Martens footwear at issue do not have the second vertical stitch. It is stated that only shoe experts would be aware of this technical meaning of the term AGoodyear welt construction.@ The expert states that the outsole of the Dr. Martens shoes at issue uses a special Ahot knife@ process that heat seals the welt to the shoe.
Counsel also claims that the meaning of AGoodyear welted@, AGoodyear welt,@ and AGoodyear welting@ (that is, the special horizontal stitching performed by a AGoodyear stitcher@) is similar around the world. The OECD=s Footwear Industry Technical Vocabulary glossary is submitted, which defines AGoodyear welted@ as “Machine welted construction. The method of shoe construction in which welt and upper are sewn to the insole rib by the welt sewing machine.@
The foreword to the OECD glossary states that:
In view of the growing magnitude of international trade in footwear, the Special Committee for Hides and Skins of the Organization for Economic Cooperation and Development (OECD), recognizing the need to standardize technical terms in that industry, agreed in 1961 to compile a multi-lingual glossary of terms relating to the manufacture of footwear. Delegations showed their interest in the work by subscribing for the major part of the edition. . . In preparing this glossary the [OECD] believes that it is rendering a useful service to the footwear industry by making available an instrument which will facilitate international trade in this field.
A letter from the British Footwear Association dated May 24, 2000, is submitted confirming that Airwair Ltd., a subsidiary of R. Griggs Group Ltd., is an authorized user of the ABritish Goodyear Welted Seal@ by virtue of using the AGoodyear welted@ construction method and that the welted upper can be attached to the sole by a variety of methods, none of which precludes the use of the term AGoodyear Welted@ as a description of the construction method of the footwear. A copy of relevant pages of Consumers= Guide to Product Grades and Terms (1993), a U.S. publication, is also submitted which defines AGoodyear welt@ as a Ashoe constructed with an insole rib to which both the welt and upper are secured by a strong, flexible chainstitch.@
“Goodyear” terminology is also used in a variety of shoe marketing materials, including internet web sites. In a definition from AFootwear of the Middle Ages - Glossary of Footwear Terminology@, I. Marc Carlson (1999), the term Awelted construction@ is defined as the type of construction where the upper is lasted, the lasted upper is sewn together with a welt to the edge of the insole, and the sole is then stitched to the welt. A diagram indicates two stitches, one horizontal and one vertical. We have located other references to AGoodyear Welt Construction@, AGoodyear Welt(ed) Method@, AGoodyear Welted@, AGoodyear Welt Process@, and AGoodyear Method@ which indicate a shoe making construction method in which the upper, outsole (or midsole) and innersole are securely stitched together through a leather strip known as the welt. See www.footjoy.com1; www.jeffery-west.co.uk??1?1?1?1?1?1?1?1?1?1?1?1?1?1??????11111111111111111111111111111111111111111111111111111111111111111111?1?1?1?1?1?1?1?1?1?1?1?1?1?1??????11111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111112; www.primeboots.co.uk??1?1?1?1?1?1?1?1?1?1?1?1?1?1??????11111111111111111111111111111111111111111111111111111111111111111111111111111111111?1?1?1?1?1?1?1?1?1?1?1?1?1?1??????111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111?1?1?1?1?1?1?1?1?1?1?1?1?1?1??????111113; www.bouletboots.marche.com??1?1?1?1?1?1?1?1?1?1?1?1?1?1??????111111111111111111111111111111111111111111?1?1?1?1?1?1?1?1?1?1?1?1?1?1??????111111111114; HYPERLINK http://www.galaxycom.it; www.galaxycom.it;??1?1?1?1?1?1?1?1?1?1?1?1?1?1??????111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111111115 HYPERLINK http://www.anglerslie.com/simms.htm; www.anglerslie.com/simms.htm??1?1?1?1?1?1?1?1?1?1?1?1?1?1??????111111111111116;
Counsel claims that other sources present different interpretations of the “Goodyear” terms. “The Art & Science of Footwear Technology” notes that the feature which distinguishes the “Goodyear Welt process” is the insole rib to which both the welt and upper are secured by a strong flexible chainstitch. The publication further explains that “Goodyear Welt Construction” is unique in the positions of its two seams in the shoe bottom, including both a hidden seam through the welt, upper, lining, and insole, as well as a separate, lockstitch seam to attach the outsole to the welt. Counsel reiterates that the U.S. shoe expert confirms that shoe manufacturing experts (though not ordinary consumers) would understand “Goodyear welt construction” to mean a shoe construction with both the Goodyear welt stitch and a second vertical stitching process to attach the outsole. However, he noted, shoe experts would not use other “Goodyear” wording to mean this.
Counsel claims a review of internet websites reveals a great deal of variety in how the “Goodyear” terminology is used by manufacturers and retailers. Some websites indicate that footwear is “Goodyear welted” as long as it has the special horizontal stitch.7 We have located another website which indicates that “Goodyear welt construction” is where the “leather upper of the shoe and the welting are attached to a piece of material that is sandwiched between the insole and the outsole”, and no reference is made to a second stitch for the outsole.??1?1??1?1?1?1?1?1?1?1?1?1?1?1?1?1?1?1?1?1?1?18
Counsel cites Creative Labs Inc. v. Cyrix Corp., 42 U.S.P.Q.2d 1872, 1874 (N.D.Cal. 1997), where it was stated that the elements of a Lanham Act false advertising claim are:
(1) a false statement of fact by the defendant in a commercial advertisement about its own or another's product; (2) the statement actually deceived or has the tendency to deceive a substantial segment of its audience; (3) the deception is material, in that it is likely to influence the purchasing decision; (4) the defendant caused its false statement to enter interstate commerce; and (5) the plaintiff has been or is likely to be injured as a result of the false statement, either by direct diversion of sales from itself to defendant or by a lessening of the goodwill associated with its products.
Counsel claims that the “Goodyear” terminology used by Dr. Martens to describe their welted footwear is not false (or misleading). Counsel claims that a term is not false or misleading if it bears an accepted and well-recognized meaning, even if the term also has other, different meanings. In W.L. Gore & Assocs. v. Totes Inc., 788 F. Supp. 800 (D. Del. 1992), the Court determined that defendant’s advertisement of its fabric as “breathable” was not “false or misleading” under section 43(a) of the Lanham Act, because the term “breathability” is “a word meaning different things to different people” and because of the absence of a commonly accepted definition of quality or a minimum industry standard. Id. at 1097. In Hesmer Foods, Inc. v. Campbell Soup Co., 346 F.2d 356 (7th Cir. 1965), the plaintiff argued that defendant’s products violated the Lanham Act because they were labeled “barbecue” but contained no meat and had not been cooked over an open fire. Finding no consumer deception, the Court rejected this argument. The Court noted the existence of other labels that used the term “barbecue” for meatless products not cooked over an open fire, and observed, “It is difficult to spell out a false representation if a seller adopts methods commonly used to describe similar products.” Id. at 359. In In re Cord Crafts, Inc., 11 U.S.P.Q.2d 1157 (1989), the Trademark Trial and Appeal Board ruled that the term “silk flowers” is not deceptive for purposes of 15 U.S.C. 1052(a) and (e)(1), when used to refer to flowers made from fabric other than silk. The Board took particular note of a newspaper article supporting the view that the term “silk flowers” does not refer only to flowers made of silk. The Board observed, “We think the newspaper article is particularly compelling on this point, since it shows that the term is known not only within the trade, but is a term to which the consuming public has been exposed.” Id. at 1159.
In Stewart Romero Boot Shop v. United States, C.D. 1336, 26 Cust. Ct. 278 (1951), a classification decision, the court heard testimony regarding a process or method “known as welt.” One witness for the plaintiff described the “Goodyear welt process” when a United States patent royalty-applied Goodyear welt machine is used and that the Goodyear welt process was commonly known in the United States as the welt process, or as one of the welt processes. Id. at 280. Witnesses for the defendant knew of no other welt process in the U.S. other than the Goodyear welt process, and stated that the distinguishing characteristic of the welt method or process is the “channeling of the insole, raising a lip on the underside thereof, to which the upper and welt are sewn in one operation, the outsole then being sewed to the welt.” Id. at 281. Today, U.S. Additional Note 1, Chapter 64, Harmonized Tariff Schedule of the United States, defines the term “welted footwear” for purposes of Chapter 64, as footwear constructed with a welt, which expands around the edge of the tread portion of the sole, and in which the welt and the shoe upper are sewn to a lip on the surface of the insole, and the outsole of which is sewed or cemented to the welt.
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