On April 29, 2015, the ITC issued a Notice modifying three exclusion orders and rescinding three others in response to a letter from U.S. Customs and Border Patrol’s Intellectual Property Rights Branch (“CBP”). CBP’s letter, originally sent to Secretary Barton on August 19, 2014, notified the Commission that six exclusion orders may be candidates for rescission as a result of changed conditions of fact or law.
All six of the exclusion orders issued more than twenty years ago, with the oldest dating back to 1979 (Inv. No. 337-TA-055). The exclusion orders resulted from violations of section 337 based on at least trademark or trade dress infringement. CBP’s letter stated that it believed the intellectual property at issue in the exclusion orders was no longer used in commerce, or that the complainants had stopped making required compliance filings.
In response to the letter, the ITC issued a Notice requesting submissions from the owners of the trademarks or trade dress at issue regarding whether the subject exclusion orders should be rescinded as suggested by CBP. Three complainants responded to the Notice and demonstrated that their intellectual property was still in use. Based on these submissions, the Commission modified the three relevant exclusion orders to require the complainants to report to the Commission, on a semi-annual basis, whether the complainants are continuing to use the trademark(s) or trade dress in commerce.
A fourth complainant also responded to the ITC’s Notice and stated that it no longer wanted the exclusion order, and a fifth complainant admitted that its subject intellectual property was no longer used in commerce. One complainant did not respond to the ITC’s request. In light of these submissions, or lack thereof, the Commission rescinded the other three exclusion orders.
The ITC’s consolidated modification or rescission of six exclusion orders in one Notice is unusual in that the request was prompted by CBP, rather than respondents in the investigations. Whether CBP continues to submit such requests to the Commission is an issue to watch, especially for complainants that have outstanding exclusion orders based on trademark or trade dress infringement.
The modified exclusion orders were originally issued in the following investigations:
- Certain Coin-Operated Audio Visual Games and Components Thereof, Inv. No. 337-TA-087, Exclusion Order (June 25, 1981);
- Certain Coin-Operated Audio Visual Games and Components Thereof (, Rally-X and PAC MAN), Inv. No. 337-TA-105, Exclusion Order (Jan. 15, 1982); and
- Certain Cube Puzzles, Inv. No. 337-TA-112, Exclusion Order (Dec. 30, 1982).
The rescinded exclusion orders were originally issued in the following investigations:
- Certain Novelty Glasses, Inv. No. 337-TA-055, Exclusion Order (July 11, 1979);
- Certain Strip Lights, Inv. No. 337-TA-287, Exclusion Order (Sept. 28, 1989); and
- Certain Novelty Teleidoscopes, Inv. No. 337-TA-295, Exclusion Order (Apr. 11, 1990).