Alleged Trademark Infringement - Advisory Opinion. "ROLLER BLADE" versus "ROLLERSKI."

HQ 731875 MARCH 3, 1989 TMK-3 CO:R:C:V 731875 A CATEGORY: Trademark Chad A. Klingbeil, Esq. Moore & Hansen Northstar East, Suite 668 608 Second Avenue South Minneapolis, Minnesota 55402 Re: Alleged Trademark Infringement - Advisory Opinion. "ROLLER BLADE" versus "ROLLERSKI." Dear Mr. Hansen: Your letter of October 5, 1988 (addressed to "Commercial Fraud Enforcement Center"), and two sample rollerskates have been forwarded to this office for a ruling on the substantive issue of trademark infringement. FACTS: Customs Headquarters Issuance 88-326, effective July 15, 1988, recorded for import protection the trademark "ROLLER BLADE" (U.S. Pat. Off. Reg. No. 1,326,171), for boots equipped with longitudinally aligned rollers used for skating and skiing. It is your opinion that use of the mark "ROLLERSKI" on a virtually identical product is confusingly similar to the ROLLER BLADE trademark owned by your client, Rollerblade, Inc. The two samples submitted are stiff vinyl, ski boot-type shoes with four plastic wheels of about 2 3/4" diameter affixed in a line to the soles, and a rubber stopper attached to the heel area. The overall color scheme and appearance of the boots is virtually identical. At the same location on the lower outside heel and on both forward parts of the rack holding the wheels, appears the mark "ROLLERBLADE" on your client's product and "ROLLERSKI" on the questioned item. ISSUE: Do rollerskates bearing the mark "ROLLERSKI" constitute an infringement of the trademark "ROLLER BLADE" for rollerskates. -2 - LAW AND ANALYSIS: Section 42 of the Lanham Trademark Act (15 U.S.C. 1124) denies entry to articles of imported merchandise bearing marks which "copy or simulate" trademarks recorded with Customs for import protection. A basic test for trademark infringement is whether the mark in question is likely to cause confusion or mistake, or to deceive. In view of the similarity in sound, appearance and meaning between "ROLLER BLADE" and "ROLLERSKI," on virtually identical products, there does appear a likelihood of confusion as to the source of the products. We note, however, that in close proximity to "ROLLERSKI" where it appears on the racks holding the wheels, is the symbol "R" in a circle, indicating that term is itself registered as a trademark. If that were the case, it would be entitled to treatment as prima facie evidence of its validity, which would not be an issue to be decided by the Customs Service. 15 U.S.C. 1057(b). Accordingly, before Customs can be expected to act in this case, information should be provided as to whether or not "ROLLERSKI" is a registered trademark. Title 19, U.S.C. 1595a(c), provides that any merchandise that is introduced or attempted to be introduced into the United States contrary to law may be seized and forfeited. HOLDING: We are of the opinion that, if it is not a registered trademark itself, "ROLLERSKI," as used on the sample rollerskate submitted constitutes a confusingly similar copy or simulation of the trademark "ROLLER BLADE" under 15 U.S.C. 1124 and would subject the article to seizure and forfeiture under 19 U.S.C. 1595a(c). Sincerely, Marvin M. Americk Chief, Value, Special Programs and Admissibility Branch