TMK-1 RR:IT:IP 470642 CRS
Duncan A. Nixon, Esq.
Sharretts, Paley, Carter & Blauvelt, P.C.
1707 L Street, N.W.
Washington, D.C. 20036
RE: Zenith Z2020 CD Clock Radio
Dear Mr. Nixon:
This is in reply to your letter dated February 12, 2001, on behalf of your client SDI Technologies, Inc., in which you requested a ruling as to whether the Zenith Model Z2020 CD Clock Radio infringes a registered trademark owned by the Bose Corporation. In addition, we considered your firm’s submission dated November 13, 2001.
FACTS:
The trademark at issue is owned by the Bose Corporation. The trademark is registered (reg. no. 2,299,158) with the U.S. Patent and Trademark Office (PTO) in international class 9 which covers, inter alia, radios, and is recorded with Customs (TMK 00-00083).
The Bose trademark was registered with the PTO on December 14, 1999, pursuant to section 2(f) of the Lanham Act, i.e., on a showing by Bose that the product configuration had acquired distinctiveness through secondary meaning. The trademark was first used in commerce in May 1993; the application to register the mark was filed with the PTO on December 4, 1996.
As described in the PTO trademark registration, “the mark consists of a configuration of a radio enclosure of generally trapezoidal cross section and its image. The broken lines [i.e., those covering the front grill, the keypad area and the display bezel] show matter that is not part of the mark and serves only to show the position of the mark.”
Reg. No. 2,299,158. Photographs of Bose Wave radios with the trademarked configuration are shown below.
Bose Wave Clock Radio
You have asked whether the Zenith Model Z2020 CD clock radio bears a mark that infringes the registered and recorded Bose configuration mark. You maintain that the Model Z2020 does not have a trapezoidal shape and therefore cannot infringe the registered and recorded Bose trademark. In support of your position you have submitted a sample of the Model Z2020, photographs of which are shown below.
Zenith Model Z2020 CD Clock Radio
The configuration that constitutes the registered and recorded Bose mark has three straight sides and one curved side, and four rounded corners. The back of the Bose radio measures approximately ten inches in length. The sides are approximately six inches long, while the curved front is roughly fourteen inches long as measured linearly from end point to end point. The straight sides meet at two identical obtuse angles, thus none of the sides are parallel. The curved side arches outwardly along an arc between two of the straight sides.
In contrast, the Z2020 has two straight sides and two longer curved sides with rounded corners. Both straight sides are parallel and equal in length, measuring approximately four and one-half inches long. The curved sides arch outwardly along an identical arc such that they are each about the same length, i.e., approximately fourteen inches long from end point to end point. Thus, the Z2020 is symmetrical in shape. If straight lines were drawn between the end points of each of the curved sides, the lines would be parallel to one another and would intersect the straight sides at right angles, thus forming a rectangle.
ISSUE:
The issue presented is whether the Zenith Model Z2020 CD Clock Radio bears a mark that is confusingly similar to the registered configuration mark recorded with Customs as TMK 00-00083.
LAW AND ANALYSIS:
Customs’ legal standard for determining infringement where the suspect mark is not counterfeit is “confusingly similar.” Under this standard, the dispositive issue is whether the suspect mark is likely to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. § 1114. In this regard, a central inquiry is whether there exists a “likelihood of confusion,” i.e., whether there is any likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed, simply confused, as to the source of the goods in question.” Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 199 U.S.P.Q. (2d. Cir. 1978). Confusion may take a number of forms, however: initial interest confusion; post sale confusion; confusion as to source, sponsorship, affiliation, or connection. E.g., 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition at 23.5 (4th ed. 1999).
In trademark cases, courts generally evaluate a variety of factors based on the decision in Polaroid Corp. v. Polarad Electronics Corp., 287 F. 2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961), in order to determine whether there exists a "likelihood of confusion." In Polaroid, the U.S. Court of Appeals for the Second Circuit set out an eight factor test consisting of: the strength of the mark; the degree of similarity between the two marks; the proximity of the products; the likelihood that the prior owner will bridge the gap; actual confusion; the defendant’s good faith in adopting its mark; the quality of the defendant’s product; and the sophistication of buyers. In applying the test, "each factor must be evaluated in the context of how it bears on the ultimate question of likelihood of confusion as to the source of the product." Lois Sportswear U.S.A., Inc. v. Levi Strauss Co., 799 F.2d 867, 872 (2nd Cir. 1986). No single factor is preeminent or determinative. Thompson Medical Co. Inc. v. Pfizer, Inc., 753 F.2d 208, 214 (2d Cir. 1985). However, for purposes civil administrative enforcement of intellectual property rights at the border, Customs focuses primarily on the first three Polaroid factors, and in particular, on the similarities between the marks.
The trademark at issue is registered (reg. no. 2,299,158) with the PTO in international class 9 which covers, inter alia, radios, and is recorded with Customs (TMK 00-00083). The mark consists of a configuration of a radio enclosure of generally trapezoidal cross section. The mark was registered on the Principal Register on the basis of acquired distinctiveness pursuant to section 2(f) of the Lanham Act. 15 U.S.C. § 1052(f). It is our position that the Bose mark is strong mark and is therefore entitled to a high degree of protection. This favors a finding of infringement. HQ 470260, dated February 20, 2001, at 5-7.
In regard to the proximity of the goods, the challenged mark, as embodied by the Zenith radios, is used on goods that are directly competitive with the trademarked goods. Where goods are directly competitive, the degree of similarity needed to show a likelihood of confusion is less than where the goods are dissimilar. McCarthy on Trademarks, § 23:20.1. See also, AMF v. Sleekcraft, 599 F.2d at 350 (citing American Steel Founderies v. Robertson, 269 U.S. 372, 382, 46 S.Ct. 160, 70 L.Ed. 317 (1926). HQ 470260 at 7. This supports a finding of infringement.
The registered and recorded trademark consists of a configuration of a radio enclosure of generally trapezoidal shape. The challenged mark is also a radio enclosure of generally trapezoidal shape. As can be seen from the photographs above, the two configurations share certain similarities. Nevertheless, the issue is not the existence of similarities, but whether the suspect mark is likely to cause confusion, or to cause mistake, or to confuse the average prudent purchaser as to the source of the radios.
The configuration that constitutes the registered and recorded mark has three straight sides and one curved side, and four rounded corners. The back of the Bose radio measures approximately ten inches in length. The sides are approximately six inches long, while the curved front is roughly fourteen inches long as measured linearly from point to point. The straight sides meet at two identical obtuse angles, thus none of the sides are parallel. The curved side arches outward along an arc between two of the straight sides.
In contrast, the Z2020 has two straight sides and two longer curved sides with rounded corners. The straight sides are parallel and equal in length, measuring approximately four and one-half inches long. The curved sides arch outwardly along an identical arc such that they are each about the same length. Thus, the Z2020 is symmetrical in shape. If straight lines were drawn between the end points of each of the curved sides, the lines would be parallel to one another and would intersect the straight sides at right angles, thus forming a rectangle.
In summary, one configuration is primarily rounded (an ellipse), while the other most closely resembles a plane figure (a trapezoid). Given that both the registered and recorded mark and the challenged mark (i.e., the shape of the Zenith radio cabinet) are product configurations, the issue of likelihood of confusion must be decided primarily on the basis of the overall visual similarity of the marks. E.g., In re Porcelain Metals Corporation (TTAB 1999). Moreover, the Z2020 displays the Zenith® trademark. Accordingly, in view of the differences between the two marks (configurations), and given the weight that Customs assigns to the similarities of the marks for purposes of IPR border enforcement, it is our position that a reasonably prudent purchaser would not be confused as to the source origin or sponsorship of the Zenith radios.
HOLDING:
In conformity with the foregoing, the generally elliptical configuration of the Zenith Z2020 CD Clock Radio is not confusingly similar of the generally trapezoidal Bose configuration mark.
Sincerely,
Joanne Roman Stump, Chief
Intellectual Property Rights Branch