HQ 734455

July 1, 1992

MAR-2-05 CO:R:C:V 734455 KR

CATEGORY: Marking

Ms. Joni A. Laura

Graham & James

2000 M Street, N.W.

Suite 700

Washington, D.C. 20036-3113

RE: Country of origin marking of a cosmetic line with a

trademark of \"Berlin JOOP!\" which is imported from France; 19 CFR

134.47; application for trademark.

Dear Ms. Laura:

This is in response to your letter dated December 19, 1991,

requesting a country of origin marking ruling concerning a

cosmetic line with a trademark of \"Berlin JOOP!\" which is

imported from France. You submitted a photocopy of a sample box

which will be used to package the cosmetics. You have also

submitted an actual sample box to show what the box will look

like and the print size. You submitted a photocopy of an

application for trademark, filed with the U.S. Patent and

Trademark Office date stamped January 10, 1992.

FACTS:

You state that Lancaster Group USA wishes to import cosmetic

products manufactured by Parfums JOOP!. The cosmetics you wish

to import are a new product line. The product line is called

\"Berlin JOOP!\". In your ruling request dated December 19, 1991,

you state that a trademark registration was already pending.

However, the actual application for trademark registration with

the Patent and Trademark Office is dated January 10, 1992. You

state that the cosmetics will be imported in individual boxes of

similar but not necessarily identical sizes. The boxes for each

item will have markings which are identical in form, but the

product-type name (i.e. \"perfume\" or \"body cream\"), ingredients

and volume will be different.

On April 10, 1992, you sent Customs a list of the cosmetics

you wish included in this ruling. These cosmetics are:

Perfumery, eau de toilette, soaps, bath and shower

additives, sun protection and sun care antiperspirant,

deodorants for personal use, cremes, powder, rouge,

eyebrow pencil, eyeshadow, eyelash black, lipsticks,

lotions, face lotions, face masks, articles for hair

care, hair shampoo, depilatory, shaving creme, shaving

foam, aftershave, skin cleaner, body lotion, nail

enamel, and nail enamel remover.

On May 28, 1992, you sent Customs four pages of material

concerning the creator/namesake of the \"JOOP!\" cosmetic line and

his reasons for creating and naming the cosmetic line \"BERLIN

JOOP!\".

In your ruling request you enclose a photocopy of a sample

box showing where the markings on the box will be placed. In a

meeting held January 10, 1992, you brought a sample box which you

explained was not to be used for placement of the markings on the

box, but instead to show the box dimensions, the print size and

style.

The photocopy of the box, combined with the sizes and style

from the sample box, shows the front and side panels of the box

are 3 and 7/8 inches long x 3 and 3/8 inches high. The name

\"BERLIN\" appears on the front panel of the box with a metallic

silver or gold colored bar underlining it. \"BERLIN\" will appear

in approximately 10 point print. (A point is approximately

.01384 inch or 1/72 of an inch). Below this and centered on the

panel will be the name \"JOOP!\". \"JOOP!\" will appear in

approximately 32 point print. Along the bottom of the front

panel will be the name of the product-type and the volume of the

contents. These will appear in approximately 8 point print.

On the back panel of the box, in approximately 5 point

print, the ingredients will be listed and below will appear the

words:

DIST: LANCASTER\_\_GROUP USA

NEW YORK, N.Y. 10022

Below this will appear a drawing/symbol. Below the symbol

will be the words \"PARFUMS JOOP!, in approximately 9 point type.

Below that will be \"PARIS\" in approximately 5 point type.

Finally, just below \"PARIS\" will be the words \"MADE IN FRANCE\" in

approximately 5 point print. French words, including the

manufacturer\'s name appear on the bottom panel of the box in

approximately 5 point print.

ISSUE:

What packaging and labeling is required when a cosmetic

line\'s name includes the word \"BERLIN\", for which an application

for trademark was filed, and when \"USA\" and \"NEW YORK\" appear on

the box, when the actual country of origin of the product is

France?

LAW AND ANALYSIS:

Section 304 of the Tariff Act of 1930, as amended (19 U.S.C.

1304), provides that, unless excepted, every article of foreign

origin imported into the U.S. shall be marked in a conspicuous

place as legibly, indelibly, and permanently as the nature of the

article (or container) will permit, in such a manner as to

indicate to the ultimate purchaser in the U.S. the English name

of the country of origin of the article. The Court of

International Trade stated in Koru North America v. United

States, 701 F. Supp. 229, 12 CIT 1120 (CIT 1988), that \"in

ascertaining what constitutes the country of origin under the

marking statute, a court must look at the sense in which the term

is used in the statute, giving reference to the purpose of the

particular legislation involved. The purpose of the marking

statute is outlined in United States v. Frielaender & Co., 27

CCPA 297 at 302, C.A.D. 104 (1940), where the court stated that:

\"Congress intended that the ultimate purchaser should be able to

know by an inspection of the marking on the imported goods the

country of which the goods is the product. The evident purpose

is to mark the goods so that at the time of purchase the ultimate

purchaser may, by knowing where the goods were produced, be able

to buy or refuse to buy them, if such marking should influence

his will.\"

Part 134, Customs Regulations (19 CFR Part 134), implements

the country of origin marking requirements and exceptions of 19

U.S.C. 1304. Section 134.41(b), Customs Regulations (19 CFR

134.41(b), mandates that the ultimate purchaser in the U.S. must

be able to find the marking easily and read it without strain.

Section 134.1(d), Customs Regulations, (19 CFR 134.1(d)),

defines the ultimate purchaser as generally the last person in

the U.S. who will receive the article in the form in which it was

imported. In this case the ultimate purchaser is the consumer

who will use the cosmetic product.

In addition, 134.46, Customs Regulations (19 CFR 134.46),

requires that when the name of any city or locality in the U.S.,

or the name of any foreign country or locality other than the

name of the country or locality in which the article was

manufactured or produced, appear on an imported article or its

container, there shall appear, legibly and permanently, in close

proximity to such words, letters or name, and in at least a

comparable size, the name of the country of origin preceded by

\"Made in,\" \"Product of,\" or other words of similar meaning.

Customs has ruled that in order to satisfy the close proximity

requirement, the country of origin marking must appear on the

same side(s) or surface(s) in which the name of the locality

other than the country of origin appears. HQ 708994 (April 24,

1978). The purpose of 19 CFR 134.46 is to prevent the

possibility of misleading or deceiving the ultimate purchaser as

to the origin of the imported article. In this case, \"USA\" and

\"NEW YORK\" appear below the list of ingredients. The box is

marked with the country of origin, \"MADE IN FRANCE\" below this,

on the same side, and in the same type size. This satisfies the

requirements of 19 CFR 134.46, for the \"USA\" and \"NEW YORK\"

locations appearing on the box.

Customs Regulations 19 CFR 134.47, requires a slightly less

restrictive marking than 134.46 when the location name other

than the country of origin appears as part of a trademark. Under

134.47, when the name of a place other than the country of

origin appears as part of a trademark or trade name or as part of

a souvenir marking, the name of the actual country of origin must

appear in close proximity to the place \"or in some other

conspicuous location\". In other words, if the question concerns

a trade name or trademark, the country of origin marking needs

only to meet the general standard of conspicuousness. In either

134.46 or 134.47, the name of the country of origin must be

preceded by \"Made in\", \"Product of\", or words of similar meaning.

See HQ 734175 (February 24, 1992); HQ 734277 (December 24, 1991).

The language of 19 CFR 134.47 pertains to a trademark or

trade name with a location in the United States. In this case

the trademark is \"BERLIN\", signifying the German city, not a U.S.

location. Customs has held, however, that \"\[t\]he rationale for

granting a special exemption for trademarks and trade names

containing the name of a domestic locality applies at least as

strongly to trademarks bearing the name of a foreign locality.

Accordingly, it is our opinion that the intent of 134.47 was to

include foreign trademark designations as well as domestic

locales.\" HQ 731524 (December 18, 1989) (quoting HQ 710682 (June

26, 1979)).

In this case, the application for trademark was first filed

on January 10, 1992, twenty three days after the ruling request

to Customs was dated. The application has not been granted.

Previously Customs allowed an application for trademark to be

sufficient to qualify for the 134.47 exception pending Customs

final interpretation of the regulation. See HQ 734066 (July 15,

1991); HQ 734073 (July 10, 1991). Customs has had some concern

about the scope of 19 CFR 134.47 for some time in that regard.

Customs has been developing an interpretation of 19 CFR 134.47,

concerning what is required to establish a trademark. In HQ

734066 (July 15, 1991), we stated that:

an application for trademark registration has been

filed with the U.S. Patent and Trademark Office\....

Although Customs is reviewing the issue of whether

evidence of trademark registration is required to

invoke the provisions of 19 CFR 134.47 (as opposed to

the more stringent requirements of 19 CFR 134.46),

until publication of a contrary view, evidence of

trademark registration is not required to invoke the

provisions of 19 CFR 134.47.

Further, in HQ 734073, (July 10, 1991) we stated similarly

that:

An application is now pending before the U.S. Patent

and Trademark Office \.... Customs is currently

reviewing the issue of whether or not a trademark must

be registered in order to trigger the requirements of

19 CFR 134.47. Until Customs has resolved this issue

and published its position, the requirements of 19 CFR

134.47 rather than 19 CFR 134.46 will be applied to all

trademarks with a U.S. reference, registered or not.

Although 19 CFR 134.47 applies when a locality reference

appears as part of a trademark, the regulation does not specify

what evidence is needed to establish a trademark. In view of the

fact that the regulation does not specify that trademark

registration is required, we have not previously required such

evidence. However, absent evidence of registration, other

evidence of trademark is required. The question presented in

this case is whether the mere filing of an application for

registration is sufficient evidence to establish a trademark for

purposes of 19 CFR 134.47. We have concerns about whether this

is enough, especially when the application is based on an intent

to use the purported trademark. We are considering soliciting

public comments on the broad issue of what evidence of trademark

is necessary to invoke the requirements of 19 CFR 134.47.

Nonetheless, because the above two rulings applied the

requirements of 19 CFR 134.47 when the only evidence of

trademark was the pending application, until further notice we

will continue to accept a filed application with the U.S. Patent

and Trademark Office as sufficient evidence of a trademark for

the purposes of 19 CFR 134.47. However, if for some reason the

application is denied, then the requirements of 19 CFR 134.46

will have to be complied with.

Therefore, in this case, although only an application for

registration of a trademark exists, Customs will allow the more

lenient requirements of 19 CFR 134.47 to apply here. We,

therefore, find that \"BERLIN\" is a trademark within the exception

of 19 CFR 134.47. The box for the cosmetic products must

contain the country of origin of the cosmetics, and this must

appear with the words \"Made in\" or \"Product of\" or other similar

words; but the country of origin does not have to appear on the

same panel as the trademark \"BERLIN\". The less restrictive

requirements of 19 CFR 134.47 will apply, requiring only that

the country of origin appear in a legible, conspicuous, permanent

manner in close proximity to the trademark, or in some other

conspicuous location. We find that the box, as described above

will satisfy these requirements. However, because of the wide

range of cosmetics sought to be imported, this ruling is limited

to a box with the dimensions and print size described above.

HOLDING:

The cosmetics listed above and packaged in the boxes

described above and marked as described above, satisfy the

requirements of 19 U.S.C. 1304 and 19 CFR 134.47.

Sincerely,

John Durant, Director

Commercial Rulings Division