BOSE SEEKS ITC PROBE, IMPORT BAN ON ‘COPYCAT’ RADIO
Bose filed complaint with U.S. International Trade Commission (ITC) seeking investigation and ultimately ban on import of radios and clock-radios sold by promotional specialty goods marketer, alleging they were “copycat” knockoffs that infringed on Bose registered trademark (2,299,158) for uniquely configured Wave radio. Attorney for Commerce, Cal.-based marketer, Sun Coast Merchandise Corp., responded that company planned vigorous defense against Bose charges, at least partly on ground that 2 U.S. design patents it held on “Curve” radio products gave it right to continue selling them.
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In complaint to ITC, Bose seeks permanent exclusion order barring imports of radios and components that infringe its registered mark and cease-and-desist order halting sale of such products already in U.S. Bose said success of Wave radios “has attracted unscrupulous copyists,” typified by Sun Coast, “who seek to benefit from Bose’s investment, reputation and goodwill.” Trapezoidal shape and configuration of Curve radio products that are hallmark of Wave radio’s design “evidence a clear motive to misappropriate” Bose registered mark and Bose’s “valuable brand awareness,” complaint said. It said Curve radio configuration “is thus the same” as that of registered mark for Wave radio “or is so similar as to likely confuse or mislead consumers” that they are sourced from Bose. Complaint includes declarations from 2 Bose customer service reps claiming communications from Curve radio owners “who mistakenly believed that the Curve radio either was a Wave radio or was affiliated with, associated with, or sponsored by Bose.”
Curve radios, as with other products in Sun Coast lineup, are distributed by Sun Coast for sale to other businesses as gifts and novelties, complaint said. Curve radios also have been sold off-shelf or offered as free promotional gift by Wal-Mart and other prominent retail chains, complaint said. Exhibits in complaint included photocopies of ad materials from Time magazine, Omaha Steaks and other marketers, offering free Curve radio (Time promotion piece calling it “Wave” radio) as purchase premium.
Attorney for Sun Coast Surj Soni responded that Bose’s ITC complaint was “marked with remarkable dishonesty” because it omitted mentioning that Sun Coast held 2 U.S. design patents on Curve radio products dating back 3-4 years. Our search of Patent & Trademark database showed first such patent (D404,034) was issued Jan. 12, 1999, other (D419,558) on Jan. 25, 2000. “That’s a shocking omission,” Soni said. He said Bose also failed to disclose to ITC that it was aware of Sun Coast and its products “for well over a year” and took no action, suggesting that as evidence that Bose perceived no threat.
Soni said Sun Coast told Bose 6 months ago it believed claims based on Wave radio’s registered trademarks “are invalid” under precedent set by recent Supreme Court case involving Wal- Mart. He said Supreme Court as part of decision issued “sweeping analysis” establishing that product configurations “almost never” can serve as trademark and “be protective of the trademark” because configuration “is inherently descriptive of the product, not of the product’s source.” He said court found that “the law will not extend protection as a trademark for a product configuration” without clear extenuating evidence. Fact that Bose trademark registration predates Wal-Mart decision “doesn’t suddenly give them some badge of honor of validity,” he said.