Does Louis Vuitton's Recent Victory At The US ITC Mark That Tribunal As A Viable Alternative To District Court?

While the ITC can provide significant injunctive relief to holders of registered trademarks whose trademarks are infringed, it is not for everyone. The selection of the right forum will depend on a number of factors

Louis Vuitton recently registered a big win in a trademark infringement suit at the US International Trade Commission (ITC), receiving significant injunctive relief. However, when the ITC is mentioned, patent-based, not trademark-based, investigations spring to mind. After all, the ITC is primarily a patent infringement forum and its docket over the years bears this out. While there is the occasional trademark investigation at the ITC, it is far from being a part of that tribunal's standard fare.

Nonetheless, Louis Vuitton's victory is a reminder that the ITC also adjudicates trademark infringement disputes – and that it offers a big pay-off to prevailing complainants. In light of Louis Vuitton's success, this article considers whether the ITC is a viable alternative forum to US district courts for trademark holders seeking redress for infringement.

The short answer is that while Louis Vuitton's success at the ITC may be inspiring to trademark holders tired of being ripped off, the ITC is clearly not for everyone. Yet for those trademark holders that can meet the unique jurisdictional requirements of the ITC and seek only the straightforward injunctive relief that the ITC offers, Louis Vuitton has shown that the ITC may be the place to go.

Louis Vuitton investigation

In Certain Handbags, Luggage, Accessories And Packaging Thereof, Inv 337-TA-754 (June 13 2012) complainants Louis Vuitton Mallatier SA (Paris, France) and Louis Vuitton US Manufacturing, Inc (California) charged 15 respondents from the United States and China with violating Section 337 of the Tariff Act of 1930, as amended (19 USC §1337).

Section 337 is a trade statute. Section 337(a)(1)(C) makes unlawful "[t]he importation into the United States, the sale for importation, or the sale within the United States after importation by the owner, importer, or consignee of articles that infringe a valid and enforceable United States trademark registered under the Trademark Act of 1946 [15 USCA 1051and following]" (19 USC §1337(a)(1)(C)). Louis Vuitton's complaint charged the respondents with infringing multiple US trademark registrations of its 'toile' trademark. The Louis Vuitton toile monogram mark was created in 1896 and features an "entwined LV monogram and various design motifs displayed in a repeated fashion, at regularly spaced intervals, in horizontal lines covering the entire surface of the products on which the mark is used". But, of course, you already knew this.

The ITC found trademark infringement of the toile monogram mark and issued injunctive relief in the form of a general exclusion order pursuant to Section 337(d)(2) (19 USC §1337(d)(2)). This general exclusion order prohibits the import into the United States of all infringing "handbags, luggage, accessories, and packaging" (slip op at 11). Because this was a general exclusion order, the injunctive remedy applied to all infringing products – even to the infringing products of entities that were not named as respondents in the ITC proceeding (see Kyocera Wireless Corp v International Trade Comm'n, 545 F 3d 1340 (Fed Cir 2008)).

The Louis Vuitton investigation is not the first time that the ITC has addressed the issue of trademark infringement. Indeed, in its opinion, the ITC cited its previous investigations in Certain Hair Irons and Components Thereof (Inv 337-TA-637, 2009 WL 7152177 (Mar 2009) (Comm'n Op)) and Certain Battery-Powered Ride-On Toy Vehicles and Components Thereof (Inv 337-TA-314, 0091 WL 11732578 (Aug 1991) (Comm'n Op)) in discussing the appropriate remedy. In both investigations, infringement was found and injunctive relief ordered.

Yet it is the Louis Vuitton investigation that has brought about renewed focus on the trademark infringement provisions of Section 337. Apparently, ride-on toy vehicles and hair irons do not have the same sex appeal as...