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

Last Updated: September 29 2015
Article by Leonard N. Budow

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 the relief. While goods may be banned from further import into the United States the Commission cannot order destruction, re-call or other flexible relief.6

Then there is the rocket docket. Counsel may see the expedited processing of the administrative tribunal to be a negative. The ramp up function in itself will be time consuming. Prior to filing with the Commission it is critical that all ducks be lined in a straight row; that will be an advantage to plaintiff and will place defendant in an accelerated defensive position. Depending on the nature of the defendant's internal operations, and its intellectual property and litigation counsel, the commencement of the process in itself might lead to an expedited settlement. But the plaintiff might not be able to take advantage of the tactical move if it too suffers from the defendant's internal limitations.

The rocket docket also has a very practical negative side for all parties: accelerated legal fees and costs. Those costs and expenses will include expensive surveys, census analysis as well as other experts. Depending on the solvency of the plaintiff as well as its cash flow, it might be imprudent to start an action that will have an immediate impact on its expenses. In a judicial proceeding, although the relief may be delayed, one can practically budget for a slower, protracted, as opposed to a fleeting, war.

Another disincentive or threshold bar to an action before the Commission is jurisdictional. As noted above while apparel companies may be involved in the importation of goods, there are times when establishing that the targeted goods have been imported. If you cannot establish importation the Commission will not have jurisdiction.

Also one must establish harm to a domestic industry.7 This means the plaintiff in a trademark infringement case must show at least one of the following three: a material investment in plant and equipment; a significant investment of labor or capital; or a substantial investment in research and development or licensing.8 If the plaintiff cannot show both domestic industry impact as well as importation of goods the Commission will not have jurisdiction.

Notwithstanding the apparent limitations or hurdles presented by a Section 337 action, an apparel company must view such an action as being just another weapon to enforce its intellectual property rights.9 For example to combat grey market goods10 as opposed to outright infringement, recourse to the Commission may be a viable option. The plaintiff in a Section 337 grey market case would have to show the goods are materially different, such as differing warranties which is almost a given on foreign versus domestic sale of goods. The relief, since it is based on the in rem jurisdiction against the goods, could be a broad GEO implemented in the time frame of a rocket docket.

Although the availability of a GEO or LEO and not monetary damage is identified as negative for a Section 337 proceeding, note that damages are also available in a Federal District Court proceeding; the remedies and actions are not mutually exclusive although it is likely that the Federal District Court case will be stayed pending the proceeding before the Commission.

For luxury brands or any brand concerned about dilution, as well as infringement of its trademark, the rocket docket is a positive not a negative. A trademark owner may see the import of infringing goods as adversely affecting its good will and the value of its brand. The greater the dissemination of the products, the length of time permeating the domestic market, the greater the impact on brand value. Thus the expedited time frame afforded by the Commission can be a great tactical advantage.

Practically speaking sometimes the effective target of an action may not be subject to the in personam jurisdiction of the United States courts. A manufacturer which may not have contacts for long arm jurisdiction will not be adversely affected by an action brought in Federal District court. However the jurisdiction of the Commission is in rem thus it is against the goods. So while a manufacturer may not appear before the Commission a GEO will bar the importation of the offending goods.

The Section 337 proceeding while common for patent actions is still a relatively rare bird for trademark. However it can be effective tactical weapon if wisely deployed in the appropriate circumstances. Precipitous preclusion or implementation are both to be avoided; however, either through over sight or ignorance, to date Section 337 enforcement actions have not been deemed a conventional part of enforcement mechanisms for a fashion and that is a strategic error.


1. 19 U.S.C. §1337

2. See 19 U.S.C. §1337(a)(1)(B)-(E). Misappropriation of trade secrets, palming off, misleading or false advertising and general violations of antitrust laws are also subject to the bailiwick of the Commission

3. The rules of the Commission are set forth in 19 CFR Part 210

4. But to be clear the investigations conducted by the ALJ are subject to procedural that are similar to the Federal Rules of Civil Procedure. The hearing is conducted in accordance with 5 U.S.C. 551 et seq. which does provide for notice, cross examination, the right to object, motion practice etc.

5. Under the Lanham Act one can recover the infringer's profits in addition to actual damages.

6. E.g. Levi Strauss & Co v Sunrise International Trading, Inc. 51 F 3d 982 (11th Cir 1995)

7. See Sections 337(a)(2) and (3) of the Act.

8. See 19 U.S.C. §1337(a)(1)(B).

9. In the Matter of Certain Handbags, Luggage, Accessories, and Packing Thereof Investigation No. 337- TA-754 Publication 4387 USITC March 2013

10. See Grey Market Trademark Infringement Actions at the U.S. International Trade Commission: The Benefits of the Forum and Analysis of Relevant Cases," 8 John Marshall Review of Intellectual Property Law 271 (2009).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Leonard N. Budow
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.