The International Trade Commission And Section 337: An Underused Trademark Enforcement Mechanism

The Tariff Act of 19301 ("Act") provides that infringement of patent and registered trademark rights2 to be unfair practices in the importation of goods into the United States. The Act is implemented by the United States International Trade Commission ("Commission") which is an agency of the United States government that serves a bi-partisan function to advise the President, Office of the United States Trade Representative, and Congress on matters related to international trade. In addition, it also has a judicial function which is too often overlooked by apparel companies seeking to enforce its rights against importers of goods which infringe their intellectual property rights. Globalization of the fashion industry means that it is more likely than not a domestic United States enterprise will directly or indirectly be involved in the international sale of goods. Thus, the Commission may seem to be an obvious avenue of recourse to strike at the heart of many infringement claims; the production of goods entering the United States which infringe on a company's intellectual property rights. So why the dearth of actions before the Commission by fashion companies?

There are several reasons why an apparel company and counsel may feel the Commission is not a viable forum to seek relief. First, tactical. The nature of an infringement may be best appreciated or understood by a jury as opposed to an Administrative Law Judge ("ALJ"). The ALJ is designated by the six (6) Commissioners who are nominated by the President, confirmed by the Senate and serve for nine (9) years. Proceedings before the Commission3 are more administrative4 than judicial so depending upon the nature of the trademark or even upon the location of the plaintiff, an apparel company may feel it has tactical advantage before a jury in a "home" jurisdiction as opposed to before a "sterile" ALJ.

The next disincentive for selecting the Commission for relief is actually the nature of the relief desired. The Commission cannot grant monetary damages5 or targeted relief. If the goal is to secure monetary damages that relief is not available before the Commission. The nature of relief is in the form of a General Exclusion Order ("GEO") or a Limited Exclusion Order ("LEO"). The GEO generally bans importation of the infringing goods even an importer is not a party to the proceeding before the Commission and the LEO is targeted to the actual named infringer. However, there is no calibration of...