ITC Clarifies Domestic Industry Requirement for Unregistered Trade Dress

by Jones Day

The ITC issued an Opinion finding a violation of Section 337 and issuing a general exclusion order and cease and desist orders.  Of note, the Commission clarified that the “domestic industry” for unregistered trade dress need not be defined by the subheadings in 19 U.S.C. § 1337(a)(3) like they are in a patent-based or registered trademark-based investigation.

The Case

The Commission instituted Certain Hand Dryers and Housing for Hand Dryers, Inv. No. 337-TA-1015 on August 1, 2016, based on a complaint filed by Excel Dryer alleging a violation of Section 337 by twelve respondents.  Excel asserted infringement of trade dress, the threat or effect of which is to destroy or substantially injure an industry in the United States.  Excel’s asserted trade is not registered with the United States Patent and Trademark Office.  The ITC terminated six respondents from the investigation based on the entry of consent orders.  The ITC found the six remaining respondents in default for failing to respond to the complaint and notice of investigation.

On June 2, 2017, the ALJ issued an initial determination granting Excel’s motion for summary judgment of a violation of Section 337 as to the defaulted respondents.  In his ID, the ALJ found that a domestic industry existed based on investments categorized under Section 337(a)(3).  The Commission determined to review the ID’s analysis with respect to domestic industry.

On October 30, 2017, the Commission issued its Opinion affirming the ALJ’s findings, but with modified reasoning as to domestic industry.

The ALJ had found that Excel established the existence of a domestic industry by showing investments in the categories set forth in section 337(a)(3). ID at 38-42.  Section 337(a)(2) and (a)(3) provide that:

(2) Subparagraphs (B), (C), (D), and (E) of paragraph (1) apply only if ,an industry in the United States, relating to the articles protected by the patent, copyright, trademark, mask work, or design concerned, exists or is in the process of being established.

(3) For purposes of paragraph (2), an industry in the United States shall be considered to exist if there is in the United States, with respect to the articles protected by the patent, copyright, trademark, mask work, or design concerned—

(A) significant investment in plant and equipment;

(B) significant employment of labor or capital; or

(C) substantial investment in its exploitation, including engineering, research and development, or licensing.

19 U.S.C. § 1337(a)(2), (a)(3).  However, the Commission held that because a violation of Section 337 was found pursuant to subparagraph (A) of paragraph (1), specifically 337(a)(l)(A)(i), that these subcategories of investment need not define the domestic industry.  Section 337(a)(2) and (a)(3) only apply to actions pursuant to Section 337(a)(l)(B)-(E) which cover statutory intellectual property—not 337(a)(l)(A).  Therefore, the Commission held that there is no textual basis for concluding that those definitions delineate what constitutes “an industry in the United States” for purposes of section 337(a)(1)(A)(i).  The Commission did note, however, this provision requires an additional showing that the “threat or effect” of any asserted unfair method of competition or unfair act be “to destroy or substantially injure an industry in the United States.”

The Commission further clarified that, although there is no requirement that the domestic industry be defined by the section 337(a)(3) investment categories for purposes of Section 337(a)(1)(A)(i), a showing under these categories may be sufficient in certain circumstances to establish “an industry in the United States” .

The Commission concluded here that Excel’s showing under Section 337(a)(3) was sufficient to establish a domestic industry and accordingly entered a general exclusion order and cease and desist orders.


Where patents or registered trademarks are asserted in a Section 337 investigation, the complainant must establish a domestic industry under at least one of the three investment categories of Section 337(a)(2).  Where a complainant asserts an unregistered mark (or other non-statutory IP such as trade secret), there is no specific requirement that the industry be defined by these categories.  However, in such investigations the complainant must also show that the “threat or effect” of any asserted unfair method of competition or unfair act be to destroy or substantially injure an industry in the United States—a requirement not present in patent-based Section 337 Investigations.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Jones Day | Attorney Advertising

Written by:

Jones Day

Jones Day on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.