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HQ 462025
     June 20, 1996 TRA-3 RR:IT:IP 462025 VEA
CATEGORY: Trademark
Roger M. Golden, Esq.

Fenwick & West 1920 N Street, N.W.

Suite 650 Washington, D.C. 20036-1601
RE:     Configuration trademarks Customs recordation TMK89-00726 (USPTO Registration No. 1, 553,579) and Customs recordation TMK89-00727 (USPTO Registration No. 1,513,357); Trade dress infringement and patent infringement (U.S. ITC Exclusion Order 337-TA-114) rights of Littelfuse, Inc.
Dear Mr. Golden:

     This is in response to your submission dated September 19, 1995, on behalf of Wilhelm Pudenz GmbH ("Pudenz"), outlining the position why automotive fuses it manufactures do not infringe the above-referenced configuration trademarks recorded with U.S. Customs by Littelfuse, Incorporated.

FACTS:

     Pudenz believes that Littelfuse, Inc. will allege that automotive fuses Pudenz manufactures in Germany which are imported into the United States by companies such as Wickmann USA, Inc., BMW Manufacturing Corporation and the Packard Electric Division of General Motors infringe the above-referenced configuration trademarks recorded with Customs. In seeking to explain why its fuses do not infringe the recorded marks and avoid any future detentions by Customs officers at the port, Pudenz offers general guidelines for determining trade dress infringement.                               -2-
     The trade dress of miniature plug-in blade fuses manufactured by Littelfuse Inc. was the subject of the U.S. International Trade Commission (ITC) Investigation No. 337-TA-114 (Certain Miniature Plug-In Blade Fuses). ITC issued a general exclusion order directing U.S. Customs to exclude from entry into the United States imported plug-in blade fuses that unlawfully simulate the trade dress, including the product configuration and/or packaging, of plug-in blade fuses manufactured by Littelfuse.

     In its supporting opinion, the Commission identified five nonfunctional design features of the product configuration entitled to protection: (1) rectangular-shaped housing head; (2) two- step tapering side profile of the fuse; (3) full length rib extension on each side of the housing; (4) a rectangular opening in the wide center section at the bottom of the housing; and (5) a lip extending the full length of the top portion of the housing head. These features were determined to be arbitrary and serve no particular purpose other than to distinguish Littelfuse’s miniature blade fuses from other brands. Since the recorded trademark also consists of the configuration of the miniature plug-in blade fuses, these design features will be the focus of our analysis of the trademark infringement issue.
     The exclusion order also directs Customs to exclude from entry imported miniature plug- in blade fuses that infringe claims 7 or 9 of U.S. Letters Patent 3,909,767 or claims 1, 2, or 13 of U.S. Letters Patent 4,131,869. A notice in the Federal Register extended the expiration date for patent 4,131,869 to June 21, 1996 (61 Federal Register 5903).

                          ISSUE:

(1) Whether blade fuses manufactured by Pudenz fall within the scope of the exclusion order issued by the International Trade Commission in Investigation No. 337 -TA-114 (Certain Miniature Plug-In Blade Fuses)?
(2) Whether blade fuses manufactured by Pudenz infringe the configuration trademarks recorded with U.S. Customs by Littelfuse, Inc.?
LAW AND ANALYSIS:

ISSUE # 1
     Absent an order issued by a court, or as in this case, the International Trade Commission, U.S. Customs has no legal authority to protect against trade dress infringement at the border. Paragraph 2 of the exclusion order issued in Investigation No. 337-TA-114 provides:

     "Miniature plug-in blade fuses that unlawfully simulate the trade dress (product configuration and/or packaging) of the complainant, Littelfuse, Inc., are excluded from entry into the United States except where such importation is licensed by Littelfuse";                               -3-
     In our opinion, Pudenz’s packaging for automotive blade fuses does not fall within the scope of paragraph 2. Its size, shape, colors, design and lettering are significantly different from Littefuse’s packaging for miniature plug-in blade fuses. Pudenz’s packaging is larger and predominantly black in color with two white boxes, one rectangular-shaped and the other square. The rectangular-shaped box contains the terms "Sicherungen", "Fuses", "Fusibles" and pictures of four vehicles. The fuses are located in the square box and covered with a plastic cover. The word "PUDENZ" appears in large white type across the front of the packaging and the words "sicherungen mit sicherheit" below it in red italic-looking letters. Littelfuse’s packaging is smaller, and mostly white with green, black and white lines located at an angle across the center. The fuses are contained in a plastic box and attached to the center of the packaging by a plastic cover. The words "Automotive Fuses" or "Emergency Fuse Kit With Fuse Puller" appear in black bold type across the top of the packaging.
     Based on consultations with ITC and our comparison of Pudenz’s configuration for automotive blade fuses with the five protected design features, we conclude that it falls within the scope of paragraph 2 of the exclusion order. Pudenz’s automotive blade fuses contain a rectangular-shaped housing head, the first protected design feature. The only variation between the housing heads is that Pudenz’s has a long rectangular opening so that the fuse link is completely visible, while the opening on Littelfuse’s is closed except for two small openings located above each fuse. However, the rest of the link on Littelfuse’s fuse is also visible through the transparent plastic.
     The second protected feature, the two-step side tapering profile, consists of a triangular- shaped design originating from the lip encircling the housing head which transitions into a rib extending the entire side of the fuse. Pudenz’s automotive blade fuses also contain a triangular- shaped design which transitions into a rib extending the entire side of the fuse. This design feature on the Pudenz plug-in blade varies slightly from Littelfuse’s in that its triangular-shape extends directly from the housing head.

     Pudenz’s automotive blade fuses also contain the third and fourth protected design features, the full-length rib extension and a rectangular opening in the wide center section at the bottom of the fuse. The rectangular opening on the Pudenz fuse is smaller and has more of a boxy shape. Finally, Pudenz blade fuses also contain a rectangular-shaped lip. However, it only appears on the front and back of the housing head, but does not extend around its two side corners. Pudenz’s automotive blade fuses clearly incorporate all five of the protected nonfunctional design features with only minor and inconsequential variations.

                              -4-
     U.S. Customs Office of Laboratory and Scientific Services has determined that Pudenz’s automotive fuses incorporate all of the elements of claim 1 of U.S. Letters patent, 4,131,869. Therefore, we conclude that they also fall within the scope of Paragraph 1 of the exclusion order which provides:

     "Miniature plug-in blade fuses that infringe claims 7 or 9 or U.S. Letters patent 3,909,767 or claims 1, 2, or 13 of U.S. Letters patent 4,131,869....are excluded from entry into the United States for the remaining terms of the patents, except where such importation is licensed by the patent owner"; ISSUE # 2
     The test for trademark infringement is whether the suspected mark is likely to cause confusion, or to cause mistake, or to deceive. See, 15 U.S.C. 1114. In determining the "likelihood of confusion", courts generally evaluate a variety of factors including: (1) the degree of similarity between the marks; (2) similarity of the products; (3) actual confusion; (4) sophistication of the buyers; (5) the defendant’s good faith in adopting the mark; (6) the strength of the registered mark; and (7) channels of trade. Polaroid Corp. v. Polarad Electronics Corp., 287 F. 2d 492 (2 Cir.), cert. denied 368 U.S. 820 (1961).
     With regard to the first factor, the "degree of similarity" between the marks, we have already established that the configuration of Pudenz’s automotive blade fuses incorporate the five nonfunctional design features identified by the International Trade Commission as entitled to protection. In its submission, Pudenz maintains that these differences as well as certain nondesign features reduce the "degree of similarity" between the two configurations and therefore the likelihood of confusion. Most of the nonfunctional design differences that Pudenz cites to were also briefly discussed in our analysis of the first issue.
     As to the nondesign features, Pudenz notes that its automotive blade fuses: (1) are made of opaque plastic and color coded in accordance with international and German standards; (2) bear prominent marks such as a "P" logo and amperage ratings; and (3) lack the Pudenz name or trademarks on the top of the housing head. Littelfuse’s blade fuse is made of transparent plastic and its name molded on the top of its housing head, although barely visible. In response, we note that the recorded trademark consists of the configuration of the plug-in blade fuses. Therefore, in determining the "degree of similarity", the central issue is whether Pudenz’s automotive fuses incorporate the protected design features unique to Littelfuse’s configuration for plug-in blade fuses.                               -5-
     In distinguishing the nonfunctional design features of its automotive fuses from Littelfuse’s, Pudenz states that its rectangular-shaped housing head has square corners while Littelfuse’s are rounded. It also states that the top of its housing head has a flat top and is open making the fuse link completely visible while Littelfuse’s is closed except for two small openings. Pudenz further notes that the triangular-shape design on its configuration extends directly from the housing head and transitions into the side rib. However, on the protected configuration, the rib does not extend directly from the housing head, but from the lip or collar which protrudes around its sides. The lip or collar on the Pudenz fuse is only on the large sides of the housing and does not extend to the side corners. Finally, Pudenz states that the square- shaped opening on the bottom of its fuse housing is formed by four sides of the plastic housing and smaller than the larger rectangular-shaped opening found on Littelfuse’s which is formed only two sides.

     As we noted in our analysis of the first issue, the differences Pudenz cites in the five nonfunctional design features on its automotive blade fuses are only minor and inconsequential variations in Littelfuse’s protected nonfunctional design features, which unlike the overall configuration of the blade fuse, are not readily visible to the purchaser. The court in Littelfuse, Inc. v. Parker-Hannifin Corporation, 230 USPQ654 (1986) also recognized this in its decision finding trade dress infringement. It stated that "{A}utomotive blade fuses are generally small products having an actual size in side elevation measuring about 3/4 "by 3/4". Hence, the overall configuration and general dimensions of the fuse are more apparent to the unaided eye than slight differences, if any, in structural detail."
     As to the other Polaroid factors, the mark appears on automotive plug-in blade fuses and therefore on identical products. Insufficient evidence was presented for us to evaluate the strength of the recorded mark and Pudenz’s good faith in adopting the mark. Also, no evidence was presented for us to evaluate actual confusion among consumers. Finally, Pudenz states that its automotive blade fuses for the most part are purchased for use in automobile manufacturing operations. However, no evidence on the channels of trade or sophistication of the buyers for blade fuses bearing the recorded mark was presented for our consideration.
                              -6-
     Pudenz’s automotive blade fuses clearly incorporate all five of the protected design features. It fails to offer substantial evidence including corroborating documentation demonstrating that the five nonfunctional protected design features found on its plug-in blade fuses are essential for proper operation and that no other alternatives are available, or samples reflecting their wide-spread use on other plug-in blade fuses. In the absence of such evidence, on the basis of the "degree of similarity" between the design features and the record before us, we find that the "likelihood of confusion" exists. Of course, U.S. Customs would reconsider its decision upon a court order or decision finding no "likelihood of confusion" between the two configurations.       HOLDING:

ISSUE # 1
     We hold that the automotive blade fuses manufactured by Pudenz considered for purposes of this ruling fall within the scope of paragraphs 1 and 2 of the exclusion order issued in investigation No. 337-TA-114 and therefore would be denied entry into the United States pursuant to 19 U.S.C. §1337 (d) of the Tariff Act. Under the ITC order, imported goods would be denied entry on the basis of the patent only until June 21, 1996, which is the expiration date for the term of the patent. Pudenz may seek a separate advisory opinion from the International Trade Commission by submitting a petition to its Office of the General Counsel.

ISSUE # 2
     We hold that the product configuration of automotive blade fuses manufactured by Pudenz are "confusingly similar" to trademarks recorded with Customs in violation of 15 U.S.C. 1124. Therefore, imported goods bearing this configuration would be detained under 19 C.F.R. §133.22 of the Customs Regulations to provide the importer with an opportunity to establish that any of the circumstances in 19 C.F.R. §133.21(c) are applicable. If the importer is unable to show that the circumstances in these provisions are applicable, the goods would be seized and forfeited pursuant to 19 U.S.C. §1595a(c).                          John F. Atwood, Chief                          Intellectual Property Rights Branch      


 
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