By: Mallory McKenzie and Tracy Stitt – When people think of actions filed with the International Trade Commission (ITC) under section 337 of the Tariff Act of 1930, they likely think of patent infringement cases. And the majority of ITC cases do involve patents, but section 337 protects more than that. Brand owners should not overlook the ITC as an option to enforce their trademark or trade dress rights. Case in point: BIC Corporation recently filed a section 337 complaint with the ITC for the illicit importation into the United States, sale for importation, or sale after importation of six respondents’ pocket lighters because they allegedly look too much like BIC’s pocket lighters. The crux of BIC’s concern is that because respondents are imitating the appearance of its lighters, consumers are likely to be confused as to the source of those lighters and think they are buying a BIC lighter when, in fact, they are not. Accordingly, BIC requests that the ITC issue a general or limited exclusion order and cease and desist orders to protect its brand interests.

In its complaint, BIC alleges that each respondent has imported products which imitate the trade dress of its lighters—that is, the overall combination of the visual characteristics that BIC contends creates an association with a single source. BIC owns multiple federal registrations for its alleged trade dress dating back to the 1990’s. According to BIC’s complaint, its registered trade dress includes an oblong body which is elliptical in cross-section; a fork which is generally parabolic in cross-section; and a metal hood also generally parabolic in cross section.  By utilizing comparative images of the products, BIC alleges that each of respondent’s lighters share  these elements, among other similarities. BIC’s evidence of importation is straightforward—the accused products all say they are made in China, and BIC has offered importation records and invoices documenting the sale of respondents’ lighters in the United States.

Key issues in this investigation are likely to include whether BIC has a protectable trade dress interest in the first place and if so, whether consumers are likely to be confused by respondents’ products. The respondents will likely try to argue against the protectability of BIC’s trade dress, claiming it is functional or weak. BIC’s attempts to get out in front of these arguments are evident by the inclusion of allegations concerning the amount of time and money it invested into marketing the trade dress, as well as alleged evidence of how recognizable its lighters are—for example, BIC asserts that its lighters were displayed at the Museum of Modern Art in New York and the Pompidou Centre in Paris, France as examples of iconic designs of the 20th century. In their defense, respondents will also likely focus on differences between their products and BIC’s, both in appearance and other areas such as price, to argue that consumers will not be confused. BIC will likely argue that consumers of pocket lighters are not likely to exercise great care when purchasing a lighter, meaning less attention paid to price and quality differentials and thus a greater chance of confusing one of respondent’s products for its own. Another issue in contention will likely be the intent of the respondents, as BIC claims that respondents intentionally copied their design to exploit its good reputation.

So far the only development in the matter has been BIC filing a supplement to their complaint. However, the company has successfully brought similar trade dress claims in U.S. district courts both for damages and injunctions, signaling they may be successful in the ITC as well.

Takeaway

The ITC can provide a powerful tool for protecting intellectual property by barring the entry of infringing goods into the country. It is thus important to remember that this remedy is available not only to patent holders, but copyright and trademark holders as well.

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