Thursday, March 03, 2016

JBLU: A Trademark is a Trademark

Remember JBLU, Inc. v. United States? It was an interesting Court of International Trade decision involving whether the use of a geographic terms in a trademark required a country of origin marking in close proximity when the trademark was not registered with the U.S. Patent and Trademark Office.

What is at issue here is 19 CFR §§ 134.46 and 134.47. Under § 134.46, when a geographic location is indicated on an imported article or its container, and that indication may mislead the ultimate purchaser as to the actual country of origin, then the article must also be marked with it correct country of origin in close proximity. Section 134.47 provides a more lenient rule where the geographical indication is part of a trademark or trade name.

According to the Court of International Trade, without a registration or a pending application, the use of the geographic indicator triggers the more strict requirement for a close-by country of origin marking. The Court of Appeals for the Federal Circuit has weighed in and basically said, "You've got to be kidding me."

The Federal Circuit's analysis is nicely reductionist. There is, in this case, no need for fancy arguments. The only question is whether the label on the imported blue jeans which included the terms "USA" and "Los Angeles," were "trademarks" within the meaning of the regulation.

The Federal Circuit opened a dictionary, discovered that the dictionary definition of "trademark" does not depend on whether the mark has been registered or an application for registration is pending. Consequently, without some similar limitation in the regulation, the word "trademark" has to be given its broader meaning. Even definitions from the Lanham Act, which is the U.S. federal trademark law, do not require that the marks be registered to be trademarks. According to the Court of Appeals, the word "trademark," in this context, "unambiguously incudes trademarks without a pending application."

Consequently, the Court of International Trade decision was reversed and the case was remanded.

That is a pretty detailed point of law. But, there is a bigger moral to the story. This reaffirms the uncontroversial proposition that Customs, like all federal agencies, must interpret its regulation consistent with their plain meaning. In the absence of ambiguity, Customs is not entitled to apply the regulation in a way that is inconsistent with the clear meaning. Given the Federal Circuit's perception that this regulation is clear, Customs had no basis on which to read a limitation into it.

Good job to counsel for the plaintiff.

1 comment:

prophet of doom said...

This was a very good decision by the CAFC. And we should have expected a good decision on this issue as Trademark is an issue where the CAFC possesses special knowledge. Trademark law, while it is quite clear, is frequently misunderstood. In the US trademarks are established by use, not by registration. If you create a trademark without knowledge of another person using this mark, you are entitled to use the mark. Registration serves two purposes. The most important of these is the establishment of knowledge. Once a trademark is registered, knowledge is conclusively established. This cuts off any chance of "concurrent" use. The second, and less important purpose of registration, is to allow the application of statutory damages in lieu of real damages.

The CIT's decision (and the Customs decision first taken to the CIT) appears to be based on an imperfect understanding of the law.