CIT OKs Trademark Application Requirement for Relaxed Country of Origin Marking Rules
CBP can require a trademark be registered or pending in order for a product to qualify for less stringent country of origin marking rules, said the Court of International Trade on Jan. 28 (here). JBLU challenged CBP’s decision to require its jeans be labeled “made in China” adjacent to and at a similar size as the company’s trade name, C’est Toi Jeans USA, for several entries filed before the company submitted its trademark application to the PTO. It argued CBP should follow the Lanham Act’s definition of trademark as including trade names even if no PTO application has been filed. But CIT found the law and regulations to be silent as to what constitutes a trademark for marking purposes, and decided CBP’s interpretation is a reasonable one.
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JBLU’s jeans, imported from China, were variously embroidered on the waistband with “C’Est Toi Jeans Los Angeles,” “C’est Toi Jeans USA,” and “CT Jeans USA.” The company said it had been using the trade name since 2005, but didn’t apply to register its trademark until October 2010. In the meantime, after inspecting several samples and finding they were not legally marked with the country of origin, CBP sent JBLU several notices to redeliver or mark for entries that September and October. JBLU protested, and CBP granted the company’s protests for the merchandise entered after the trademark application had been submitted, finding the jeans in those entries had been legally marked. But CBP denied the protests for the earlier entries, continuing to require redelivery or additional marking.
At issue in the case are two customs regulations on how to mark goods with the country of origin when the products are imported but display the name a country other than the one where they were produced. In order to prevent consumer deception, 19 CFR 134.46 requires such goods to be marked “legibly and permanently” with the actual country of origin “in close proximity” to the second country and “in at least a comparable size.” But under 19 CFR 134.47, goods that name the U.S. as part of a trademark or trade name must only be “legibly, conspicuously, and permanently marked” with the actual country of origin in a “conspicuous location.”
CBP had found that a trademark application must be on file in order to qualify for the more lax marking requirements of Section 134.47. JBLU argued the agency should have followed the definition of the Lanham Act, which is the main federal trademark law. Under the Lanham Act, a product is considered trademarked even if it isn’t registered or no application is on file, so long as the mark is actually used or intended to be used in commerce.
However, CIT found no reason to disagree with CBP’s stricter definition. No law or regulation is in place that stipulates what evidence must be shown to prove a product is trademarked, giving CBP the leeway to come up with its own interpretation. While the Lanham Act’s definition is more inclusive, that law is in place to protect companies from infringement, it said. Marking rules, on the other hand, are in place to protect consumers from misleading advertising, and CBP’s stricter definition makes sense in light of that purpose, said CIT.
(JBLU v. U.S., Slip Op. 15-08, CIT # 12-00042, dated 01/28/15, Judge Tsoucalas)
(Attorneys: Elon Pollack of Stein Shostak for plaintiff JBLU, Inc.; Alexander Vanderweide for defendant U.S. government)