News Releases

ABA Landslide: The ITC Solution to the Gray Market Problem in the Internet Age

WASHINGTON, D.C., March 30, 2011 -- In the most recent issue of Landslide (ABA: March/April 2011), Baker Botts Partner Mark Whitaker and co-authors Mark Kaplow and Thomas Burns write about how sophisticated trademark owners are just starting to realize the benefits of utilizing the U.S. International Trade Commission (“ITC”) to protect their brands against “gray market” products.

But the potential, they point out in the article, is huge.

For years, the ITC has been a preferred forum for patent owners seeking to exclude infringing foreign products from being imported into or sold in the United States. This is because the ITC is adept at handling patent disputes and has the power to fully enforce the exclusion of infringing products from any source in the world.

ITC trademark investigations are fairly similar procedurally to patent investigations, and offer the same substantive remedies. The ITC has the power to order the U.S. Customs and Border Protection to exclude products at the border that infringe valid trademarks, and can enforce exclusion of such infringing products beyond the parties to the dispute. Moreover, the ITC can order U.S. parties to the investigation to cease infringing activities in the United States, thus curtailing their ability to advertise, market, or sell products from existing inventories in the United States.

Like its handling of patent disputes, the ITC generally adjudicates trademark disputes more quickly and at less cost than district courts. ITC trademark investigations are an effective alternative for trademark owners to prevent the sale or importation of infringing products in the United States.

In the future, more and more corporations will look to the ITC when considering how to protect their brands and maximize the value of their trademarks.

The complete article is available here.

About Baker Botts L.L.P.
Baker Botts is an international law firm with over 725 lawyers and a network of 13 offices around the globe. Based on our experience and knowledge of our clients’ industries, we are recognized as a leading firm in the energy, technology and life sciences sectors. Throughout our 170-year history, we have provided creative and effective legal solutions for our clients while demonstrating an unrelenting commitment to excellence. For more information, please visit

Read More