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Recent indications suggest that trademark infringement lawsuits brought pursuant to Section 337 of the Tariff Act of 1930 could be on the rise at the U.S. International Trade Commission (ITC). Historically, trademark cases have been relatively uncommon at the ITC in comparison with patent cases: just last year, for example, only 2 active investigations were for trademark cases, while 124 were for patent cases. Long used as an avenue of redress in patent infringement suits, the ITC is becoming more and more attractive as a venue for trademark owners seeking remedies against parties who import counterfeits and other infringing goods into the United States. In October, Converse sued 31 different companies at the ITC for allegedly infringing various trademarks associated with its Chuck Taylor brand sneakers. The move followed a string of other trademark cases filed at the ITC since 2010, including several high-profile cases filed by complainants such as Clorox and Louis Vuitton Malletier. The 2012 Louis Vuitton case in particular, Certain Handbags, Luggage, Accessories And Packaging Thereof (Inv 337-TA-754), played a significant role in fuelling new interest in the ITC as a venue for trademark infringement cases.
The benefits of bringing a case at the ITC are the same for both patent and trademark complainants: the fast speed of the proceedings (averaging 18 months), in rem jurisdiction over imported goods (which obviates the need to establish personal jurisdiction over respondents), and ease of obtaining injunctive relief in comparison with higher federal court standards (which use eBay v. MercExchange’s four-factor analysis). While the ITC can only issue injunctive remedies, its injunctions are capable of covering more infringing entities and imported goods as the result of a single proceeding as compared with injunctions obtained in federal court.
A trademark owner must meet three requirements to lodge a complaint under Section 337: (1) prove ownership of a valid trademark which has been infringed, (2) prove importation of infringing goods into the U.S., and (3) prove that there is a “domestic industry” related to the trademark right which must be protected. While some have suggested that these requirements reveal a protectionist character to Section 337 as a trade remedy, others maintain that the statute is aimed only at fair trade. In any case, as long as foreign counterfeiting remains a problem and manufacturing continues to be outsourced, trademark practitioners are likely to show increasing interest in bringing trademark infringement cases to the ITC.