United States International Trade Commision Rulings And Harmonized Tariff Schedule
faqs.org  Rulings By Number  Rulings By Category  Tariff Numbers
faqs.org > Rulings and Tariffs Home > Rulings By Number > 2002 HQ Rulings > HQ 229414 - HQ 547435 > HQ 472729

Previous Ruling Next Ruling
HQ 472729

September 26, 2002

TMK-1 RR:IT:IP 472729 PBP


Heather C. Litman, Esq.
Stein Shostak Shostak & O’Hara
515 South Figueroa Street
Suite 1200
Los Angeles, CA 90071-3329

RE: “Color Labs” Easy Refill Kit – Fair Use

Dear Ms. Litman:

This is in response to your letter dated June 6, 2002, received in this office on June 26, 2002, requesting a binding ruling under the Customs Regulations (19 CFR Part 177) on whether certain packaging for Color Laboratories’ item number FHP-78 printer cartridge refill kit infringes a federally-registered U.S. trademark.


Enclosed with the request for a binding ruling was a sample of packaging for Color Laboratories’ FHP-78 Color Easy Refill Kit. The product consists of materials and instructions for refilling Hewlett Packard (HP) C6578 Series inkjet cartridges; no sample of the product was enclosed with the aforementioned packaging. These Color Laboratories printer cartridge refill kits are intended for use with products that are not manufactured by Color Laboratories.

The product’s packaging consists of a six-sided cardboard carton with its rear panel extending slightly higher than its front panel in order to provide a flap that may be used for hanging the product on a retail display. The front, back, sides, top, and flap of the packaging bear the stylized mark “Color Labs 100% Guaranteed Inks” on a gold seal background resembling a medal and ribbon. In addition to this stylized mark (logo), the manufacturer’s name, Color Laboratories, appears on the front, back and sides of the packaging. Color Laboratories’ internet domain address, www.colorlaboratories.com is printed on the sides of the carton. The manufacturer’s name, Color Laboratories, appears a total of four times and the Color Labs logo appears a total of six times on the proposed packaging.

The product is identified as “FHP-78 Color Easy Refill Kit” in five locations on the packaging including the front of the package. Additional information on the front, left side, and back of the packaging, appearing in essentially the same size typeface as the surrounding product information, includes model numbers of HP cartridges the product can be used to refill and model numbers of HP printers whose cartridges the kit is designed to refill. Appearing in significantly smaller typeface than that used for the surrounding product and warranty information, on the back of the package, is the following:

Color Laboratories & Color Labs 100% Guaranteed Ink are trademarks owned by Challenger One, LLC. Other brand names and trademarks are used for descriptive purposes only and remain the property of their respective owners. Their use does not imply endorsement by or association with the owners (sic) companies.

Also, in slightly smaller typeface than the surrounding print, the words “Not Manufactured by Hewlett Packard” or “[t]his product was not manufactured by: Hewlett Packard” appear on the packaging a total of three times.

Images of the sample packaging are displayed below. Hewlett Packard Company has registered the trademark “HP” with the U.S. Patent and Trademark Office in international class 009, which includes printers and parts therefore, and in international class 002 which includes toner cartridges (U.S. PTO Registration No. 1,840,215). Hewlett Packard Company has also registered the trademark “HEWLETT PACKARD” with the U.S. PTO in international class 009, which includes printers and printer accessories, and in international class 002 which includes toner cartridges (U.S. PTO Registration No. 1,861,560). The trademarks consist of the typed drawings (word marks), “HP” and “Hewlett Packard”, respectively.


The issue presented is whether the submitted packaging sample infringes Hewlett Packard Company’s federally-registered trademarks (U.S. PTO registration no. 1,840,215; U.S. PTO registration no. 1,861,560).


The test for trademark infringement is whether use of protected trademarks on Color Laboratories’ product packaging is likely to cause confusion, or to cause mistake, or to deceive the public such that an appreciable number of consumers will mistake HP as the origin, source, or sponsor of the Color Laboratories products. Section 33(b)(4) of the Lanham Act, 15 U.S.C. §1115(b)(4), provides for a "fair use" defense when:
the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, . . . or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party.

The statute, therefore, permits others to use protected marks to describe features of their own products, subject to the limitations that such descriptive use be “otherwise than as a mark” and employed “fairly and in good faith only to describe the goods or services.”

In Porter v. Farmers Supply Service, Inc., 617 F. Supp. 1175, 1187 (D. Del. 1985), aff'd, 790 F. 2d 882 (Fed. Cir. 1986), the Federal Circuit held that a seller of replacement disks for a trademark owner’s harvesting machines did not infringe the mark by identifying its cutter blades as those that “fit” the trademark owner’s harvester. In that case, the court found that "[m]erely specifying that a replacement part will be suitable for use in a product bearing a trademarked name lacks the requisite element of actual or foreseeable deception to the public." Further, in Toro Co. v. R & R Products Co., 787 F. 2d 1208 (8th Cir. 1986) the 8th Circuit held that there was no likelihood of confusion under the Lanham Act where a seller of replacement parts for the trademark owner’s lawn mowers used the trademark owner’s original part numbers preceded by the letter “R” and indicated that the parts were “to fit” or “replaces” the original parts and disclaimed that “any of our products are original equipment parts” and that any reference to the trademark owner was for identification purposes only. See also J.M. Huber Corp. v. Lowery Wellheads, Inc., 778 F. 2d 1467 (10th Cir. 1985) (use of trademark owner’s part numbers on seller’s replacement wellheads does not infringe the trademark where seller conspicuously used its own name).

In Selchow & Righter Co. v. Decipher, Inc., 598 F. Supp. 1489, 1503 (E.D. Va. 1984), the court considered whether another company's use of the Trivial Pursuit trademark served a permissible function. The court noted that:

Generally, a competitor may not use another’s registered trademark to sell its product without permission. A competitor can, however, use another's registered trademark to describe aspects of its own goods. 15 U.S.C. §1115(b)(4). Defendant Decipher, thus, has a legal right, under the Lanham Act, to use the TRIVIAL PURSUIT trademark to describe aspects of its FORTE products so long as it does not attempt to deceive consumers as to the origin of FORTE.

In that case, the court found that FORTE’s use of TRIVIAL PURSUIT in large print in numerous locations went beyond merely describing a use of the FORTE product and, rather, serves to sell its product. The court determined that the pervasive use of the Trivial Pursuit trademark did not serve a permissible functional purpose but rather caused the public to believe that the product was actually a Trivial Pursuit product.

Regarding the submitted sample, “Color Labs 100% Guaranteed Inks” is prominently displayed on the front, back, sides, top, and flap of the packaging. Use of the protected trademarks on the packaging includes the terms "[d]esigned to refill,” “[f]or refilling,” “Ink Refill Kit for,” and “[t]his kit is designed to refill the color cartridge for the following printers:” followed by either the original HP cartridge number or the model number of the HP printer with which the cartridge may be used. In addition, disclaiming language “Not Manufactured by Hewlett Packard” or “This product was not manufactured by: Hewlett Packard” is found in close proximity to each Hewlett Packard Company trademark.

The use of Hewlett Packard Company’s trademarks on the submitted packaging prototype cannot be considered misleading or confusing. In all instances language indicating that the product is to be used to refill HP inkjet cartridges modifies the trademarks. The prominence of “Color Labs 100% Guaranteed Inks” and the appearance of the seller’s trade name in numerous places on the packaging also serve to prevent a consumer from being deceived and believing that the product is actually an HP product. Additionally, disclaimer language on the packaging adequately informs the consumer that HP does not produce the goods.

Inasmuch as we were presented only with samples of the product’s packaging, this ruling letter relates only to that packaging and not to products that may be contained therein.


In conformity with the foregoing, the packaging described above, which you propose to use for imported printer cartridge refill kits, does not infringe the aforementioned federally-registered Hewlett Packard Company trademarks.


Joanne Roman Stump

Previous Ruling Next Ruling