Academic journal article Northwestern Journal of Technology and Intellectual Property

The Aftermath of Louis Vuitton: Why Bringing a Trademark Infringement Case in the ITC Is a Viable Option

Academic journal article Northwestern Journal of Technology and Intellectual Property

The Aftermath of Louis Vuitton: Why Bringing a Trademark Infringement Case in the ITC Is a Viable Option

Article excerpt


¶1 The United States Tariff Act of 1930 (hereinafter "the Act"), 19 U.S.C. § 1337, prohibits unfair acts and unfair methods of competition involving the importation or sale of infringing goods in the United States.1 The Act specifically prohibits the import of patent infringing or trademark infringing products and allows the rights holder to bring investigations under the International Trade Commission ("ITC"), an independent judicial Federal agency.2 The majority of ITC investigations to date have involved alleged patent infringement, and there are limited examples of the ITC hearing and ruling on the import of trademark infringing products.3 However, in a landmark case in 2012 involving Louis Vuitton, the ITC granted a general exclusion order against counterfeit Louis Vuitton products.4 This case was one of the first ITC trademark cases dealing with such a large company.

¶2 This comment will discuss why the ITC is a better alternative than U.S. district courts for parties looking to quickly resolve disputes and hoping for injunctive relief more powerful than that available from district courts.

¶3 This comment will first explain in Part 2 the basis for the ITC's authority and the process of initiating an ITC investigation. Next, it will explain the process of initiating an ITC investigation. Included in this section will be recent changes to the statute regarding the initiation of an investigation, what practical changes this will entail, and why those changes should not dissuade potential parties from filing in the ITC. Then, in Part 3, this comment will discuss trademark infringement cases in the ITC, with particular emphasis on the Louis Vuitton case and the standards that have been applied in trademark infringement cases, as well as the deviations within the proceedings regarding the applied standards and tests. This comment will attempt to discern what issues parties need to be aware of when thinking of filing within the ITC and how they prepare their cases going forward. It will then discuss in Part 4 the differences between ITC investigations and district courts cases, the differences in procedure and scope, as well as the differences in forms of relief offered. While discussing this, it will address the benefits and disadvantages of each option, and in which scenarios filing in the ITC will be the better option. Finally, in Part 5, this paper will discuss certain issues the ITC will face going forward, particularly with respect to trademark infringement cases.


¶4 The ITC is an "independent, quasijudicial Federal agency with broad investigative responsibilities on matters of trade."5 Section 335 of the Act (19 U.S.C. § 1335) specifically authorizes the ITC to adopt such reasonable procedures and rules and regulations to carry out its functions and duties.6 One of the powers granted to the ITC is to adjudicate cases dealing with allegations of intellectual property rights infringement.7 Specifically, the ITC states in its mission that one of its duties is to "administer U.S. trade remedy laws within its mandate in a fair and objective manner."8 In furthering this mission, the ITC has the power to deal with the import of allegedly infringing trademarks or patents.9

¶5 An ITC investigation begins when a party files a detailed and fact-based complaint at the ITC.10 The complaint is then directed to staff attorneys at the Office of Unfair Import Investigations, who check the complaint to make sure it follows procedural rules.11 The Commission votes whether to institute an investigation within 30 days of the complaint filing, but if the complaint follows procedural rules, the Commission generally grants an investigation.12 If an investigation is granted, it is then assigned to an Administrative Law Judge who will preside over the investigation.13 Additionally, the ITC is different from district courts in that a Staff Attorney is assigned to the case from the Office of Unfair Import Investigations of the Commission. …

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