Asserting Trademarks And Available Remedies At The ITC

Author:Mr Mark Whitaker and Aaron D. Rauh
Profession:Morrison & Foerster LLP

Trademark owners seeking non-monetary relief for infringement can turn to the U.S. International Trade Commission. The ITC offers a variety of powerful remedies pursuant to Section 337 of the Tariff Act of 1930, as amended. These remedies include exclusion orders that bar infringing imports, and cease and desist orders that prohibit respondents from engaging in specified commercial activities with respect to infringing articles. Since 2010, the commission has instituted approximately 16 investigations involving allegations of trademark infringement or dilution. This article discusses asserting trademarks at the ITC and the remedies available for trademark infringement, provides a statistical analysis of the 16 recent trademark-based Section 337 investigations, and concludes with an in-depth examination of two recent high-profile cases and the remedies achieved in those investigations.


The ITC is an independent, quasi-judicial federal agency with broad authority to investigate unfair methods of competition, including trademark infringement, pursuant to Section 337, 19 U.S.C. §1337. Unlike federal courts, which are limited to national boundaries by in personam jurisdiction, the ITC has in rem jurisdiction over allegedly infringing goods. For the commission to find a violation of Section 337, trademark owners must prove infringement and additional ITC-specific elements that vary depending on whether a registered or common law trademark is asserted. If a violation of Section 337 is found, the commission has discretion to issue an exclusion order and/or cease and desist order(s).

A The Process of Section 337 Investigations

With a statutory mandate to conclude investigations "at the earliest practicable time," Section 337 investigations proceed much faster than a typical district court action. See 19 U.S.C. §1337(b)(1). Indeed, target dates for completion of investigations are typically set at approximately 16 months.

When an investigation is instituted, the commission typically names OUII, an independent litigant representing the public interest, as a party to investigations. Shortly thereafter, one of the ITC's six administrative law judges will be assigned to the investigation. Discovery proceeds much like it would in district court, although responses to written discovery are due within 10 days. Parties can move for summary determination (akin to summary judgment) up to 60 days before the ALJ's evidentiary hearing.

The assigned ALJ will conduct an evidentiary hearing approximately 8-9 months after an investigation commences. A few months thereafter, the ALJ will issue an Initial Determination ("ID") on whether Section 337 has been violated, and a recommended determination on remedy and bonding. The ID is subject to review by the commission, which will ultimately issue a final decision as to whether Section 337 has been violated, and if so, issue the appropriate remedy. If a violation is found, the President, via delegation to the U.S. trade representative, has 60 days to veto the commission's action. See 19 U.S.C. §1337(j).

Elements of Violation

Section 337 investigations are available to both owners of registered and common law trademarks, although the requisite elements for violation differ. Both causes of action require complainants to prove infringement of articles that are imported into the United States, sold for importation, or sold within the United States after importation by the owner, importer, or consignee. However, as investigations for infringement of registered and common law trademarks are conducted under separate subsections of Section 337, complainants must satisfy one additional element that differs depending on the type of asserted trademark.

The "Domestic Industry" Requirement for Registered Trademarks.

Investigations for infringement of a registered trademark are conducted pursuant to 19 U.S.C. §1337(a)(1)(C), which requires complainants to prove that "an industry in the United States, relating to the articles protected by the ... trademark ... concerned, exists or is in the process of being established." See 19 U.S.C. §1337(a)(2). Known as the "domestic industry" requirement, registered trademark owners must satisfy both "technical" and "economic" aspects or "prongs." See, e.g., Alloc, Inc. v. Int'l Trade Comm'n, 342 F.3d 1361, 1375 (Fed. Cir. 2003). The...

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