Tackling counterfeiters where it hurts the most: the allure of the ITC

Addressing trademark infringement traditionally begins with a cease and desist letter backed by the threat of legal action. But whereas flexing litigation muscles in state or federal court may be effective in enforcing domestic infringement, it is often inadequate to halt infringement originating abroad. Nicole McLaughlin looks at the case for the International Trade Commission.

Addressing trademark infringement traditionally begins with a cease and desist letter backed by the threat of legal action. But whereas flexing litigation muscles in state or federal court may be effective in enforcing domestic infringement, it is often inadequate to halt infringement originating abroad. Nicole McLaughlin looks at the case for the International Trade Commission.When threatened with international counterfeiters, the key challenges are addressing who to sue and how to maximise enforcement, so that regardless of their location, the counterfeiting stops.

Proceedings before the International Trade Commission (ITC) can eliminate challenges when a plaintiff company is faced with foreign or anonymous infringers. Although monetary damages are unavailable, exclusion orders are frequently handed down and immediately enforced by the US Customs and Border Protection (CBP). Moreover, the ITC is not only statutorily required to issue its final decision within a defined period of time, but with only 58 investigations on its docket in 2010, it is still on the path to completing them expeditiously. As such, there are powerful incentives to consider the ITC as an alternative venue to a district court.

Framing litigation strategy