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HQ 477498

June 01, 2005

TMK-01-RR:IT:IP 477498 JTR


Merritt R. Blakeslee, Esq.
DeKieffer & Horgan
729 Fifteenth Street, N.W.
Suite 800
Washington, DC 20005

RE: Trademark Infringement; “Auto Gage” Trademark (U.S. Patent & Trademark Office [USPTO] Registration Number 1,497,472; U.S. Customs & Border Protection [CBP] Recordation Number TMK 99-00127); Auto Meter Products Inc. (“Auto Meter”)

Dear Mr. Blakeslee:

This is in response to your request for a binding ruling, dated February 28, 2005, seeking an infringement determination and consequential enforcement action against a mark that you state infringes upon Auto Meter’s registered and recorded “Auto Gage” trademark. The “Auto Gage” trademark is registered in the USPTO for international class 9, which includes: automotive measuring instruments, namely oil pressure, water temperature, vacuum, ammeter, volt meter, fuel pressure, fuel level and oil temperature gauges and tachometers.


According to your letter, Auto Gage (Taiwan) Co., Inc. (“AGT”) sells automotive gauges and tachometers under the “Auto Gage” brand name. There is no relationship between your client and AGT.

The “Auto Gage” trademark is registered on the USPTO’s Principal Register under Mark Drawing Code 5, which entails the use of words, letters, and/or numbers in stylized form. The mark itself consists of the words “Auto” and “Gage” separated by a small space and a lower case “g” on “Gage”, with the tail of the “g” extending back to the left to create a underlined effect under the word “Auto”. The images below show the mark as registered with the USPTO and as used in commerce.

The suspect AGT mark similarly consists of the words “Auto” and “Gauge” in comparable font and style. The marks appear to differ only with respect to the font style, spelling (Gauge vs. Gage) and word placement (the word “Gauge” of the AGT mark is directly under the word “Auto”). The suspect mark appears below.


Whether the “Auto Gauge” mark used by AGT infringes upon the registered and recorded “Auto Gage” trademark owned Auto Meter.


Insofar as CBP’s administration of the trademark laws to protect against the importation of goods bearing counterfeit marks is concerned, section 526(e) of the Tariff Act of 1930, as amended (19 U.S.C. § 1526(e)) provides that merchandise bearing a counterfeit mark (within the meaning of 15 U.S.C. § 1127) that is imported into the United States in violation of 15 U.S.C. § 1124 shall be seized and, in the absence of the written consent of the trademark owner, forfeited for violation of the customs laws, where the trademark in question is registered with the U.S. Patent & Trademark Office and recorded with CBP. See 19 U.S.C. § 1526(e). See also 19 CFR § 133.21(b). The term “counterfeit” is defined as “a spurious mark that is identical with, or substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127. See also 19 CFR § 133.21(a).

CBP also maintains authority to prevent the importation of goods bearing "confusingly similar" marks which, although neither identical to, nor substantially indistinguishable from, protected marks, are violative nonetheless. 15 U.S.C. § 1114. See also 19 CFR § 133.22.

In either regard, as a general proposition, the Lanham Act provides for a claim of trademark infringement when a trademark holder can demonstrate that the use of its trademark by another is “likely to confuse" consumers as to source, origin, affiliation, or sponsorship of a product. The term “confusion” is construed liberally. That is, “likelihood of confusion" relates to any type of confusion, including confusion of source, confusion of affiliation, confusion of connection, or confusion of sponsorship. (See 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, Section 23:8 (Rel. 9, 3/99); Lanham Act, Section 43(a)). We note that a plaintiff in a trademark infringement case need not establish that all or even most consumers are likely to be confused. Plaintiff need only prove that an appreciable number of ordinarily prudent consumers will be confused. Estee Lauder, Inc. v. The Gap, Inc., 932 F. Supp. 595 (S.D.N.Y. 1996).

In order to establish “likelihood of confusion,” courts in each of the Federal Circuits have adopted the test first laid out in Polaroid v. Polarad Electronics Corp., 287 F.2d 492, (2d Cir. 1961), cert. denied, 368 U.S. 820, 7 L. Ed. 2d 25, 82 S. Ct. 36 (1961). (See also White v. Samsung Electronics America Inc., 971 F.2d 1395, amended, rehearing denied, 989 F.2d 1512, cert. denied, 113 S. Ct. 2443 (9th Cir. 1992); E.A. Engineering, Science and Technology Corp. v. Environmental Audit, Inc., 703 F. Supp. 853 (C.D. Cal. 1989); Escerzio v. Roberts, 944 F.2d 1235, rehearing denied (6th Cir. 1991). According to Polaroid, an analysis of factors including, but not limited to, the strength of the mark, the similarity of the marks, the proximity of the products, actual confusion and sophistication of the buyers are germane to establishing likelihood of confusion. Courts have been careful to note that no single Polaroid factor is more important than any other and that not all factors need be considered. Notwithstanding, in the vast majority of trademark infringement cases, “similarity of the marks” has been a factor upon which most courts have placed great emphasis.

The determinative value of each factor varies case-by-case and it is to be used as an aid in determining the ultimate issue of likelihood of confusion. Therefore, it is not necessary to discuss all of the factors in every instance where the Polaroid test is employed.

In turning to the suspect mark at issue herein, we note that the AGT mark is nearly identical to the protected mark by the use of the words “Auto” and “Gauge”. The minor differences appear to be the addition of the letter “u” in the AGT mark and that the protected mark features the two words on the same line while the suspect mark places the word “Gauge” directly under the word “Auto.”

Even taking into account the difference in spelling of the word “Gauge”, the degree of similarity between the two marks is generally determined by comparing the overall impressions created by the marks, their pronunciations, and the meanings of their words and pictorial representations (i.e. the “sound sight and meaning” trilogy). In other words, the marks should be compared with respect to similarity of appearance, pronunciation, verbal translation of designs (drawings and pictures), and suggestion (of the marks). 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:21 (4th ed. 1999). McCarthy further states that similarity of appearance amounts to a “subjective ‘eyeball’ test.” McCarthy § 23:25 at 23-64.2. This determination is to be made from the point of view of an average purchaser. Montres Rolex, S.A. v. Snyder, 718 F.2d 524, 528 (2d Cir. 1983), cert. Denied, 465 U.S. 1100 (1984).

The suspect mark consists of the word combination “Auto Gauge.” As noted above, one of the primary differences between the two marks is the inclusion of the “u” in the suspect mark. Phonetically, they sound identical. The word “Gauge” is drawn in block style letters similar to the protected mark. The suspected mark is visually similar and phonetically identical to the protected mark. The two marks are similar enough that an ordinary purchaser is not likely to notice any difference between them.

Because of the high degree of similarity between the two marks, the AGT mark is substantially indistinguishable from the Auto Meter mark. The result would be a great likelihood that an ordinarily prudent consumer would be confused or deceived as to the source, origin or affiliation of the suspect articles.


Based on the foregoing, we find that AGT’s use of the mark “Auto Gauge” constitutes a counterfeit use of Auto Meter’s registered and recorded “Auto Gage” trademark. Imported goods bearing this mark, for which the protected trademark is registered and recorded, are therefore subject to seizure and forfeiture under 19 U.S.C. § 1526(e), as implemented by 19 CFR § 133.21(b).

Please contact Todd Reves of my staff at 572-8723, should you have any
questions regarding this ruling letter.


George Frederick McCray, Esq.
Chief, Intellectual Property Rights Branch

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