Federal Circuit Says Unregistered Trademarks Qualify for Less Prominent Country of Origin Marking
Trademarks do not have to be registered with the Patent and Trademark Office in order to qualify for less stringent CBP country of origin marking rules, said the Court of Appeals for the Federal Circuit in a March 2 decision (here). In a dispute over how prominently a jeans importer with “U.S.A.” in its brand name must mark jeans made in China, CAFC overturned the Court of International Trade in holding the company’s unregistered marks are sufficient to allow the country of origin be listed on a small tag rather than in large letters next to the brand name.
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The case centers on which of two regulations – 19 CFR 134.46 or 19 CFR 134.47 – applies to jeans imported by JBLU that bore some variation of the name “C’est Toi Jeans USA.” Under 19 CFR 134.46, when U.S.A. or similar wording appears on a product made abroad, it must be marked in close proximity and with the country of origin in comparable size. However, if U.S.A. appears as part of a “trademark or trade name,” 19 CFR 134.47 provides that the country of origin marking may be in a “conspicuous location” instead of in close proximity.
Bearing the “C’est Toi Jeans USA” brand name in large font in several locations, JBLU’s jeans said they were “Made in China” in small font on a tag in the waistband. CBP OK’d any jeans that were imported after JBLU filed a trademark application in 2010, but found the importer’s pre-application jeans did not comply with labeling rules. CIT affirmed in 2014 (see 1501300010), holding that Section 134.47 is ambiguous as to whether it applies to any trade name or only registered trademarks, and finding CBP’s interpretation reasonable.
The Federal Circuit saw no such ambiguity, finding 19 CFR 134.47 is clear in applying any trademark, whether or not registered with PTO. Dictionary definitions and federal trademark law under the Lanham Act define trademarks as any name or symbol to distinguish one’s goods. Nothing in CBP’s regulation says Section 134.47 only applies to registered trademarks. On the other hand, “trademarks” and “registered trademarks” are clearly delineated elsewhere in the customs regulations, suggesting CBP’s use of the catch-all term was intentional. The Federal Circuit reversed CIT’s decision to the contrary, and sent the case back down for the lower court to take another look.
(JBLU Inc. v. U.S., CAFC # 15-1509, dated 03/02/16, Judges Moore, Taranto and Stoll)
(Attorneys: Elon Pollack of Stein Shostak for plaintiff JBLU, Inc.; Alexander Vanderweide for defendant U.S. government)