Alston & Bird client Rockwell Automation Inc. has won a significant victory at the U.S. International Trade Commission (ITC), which unanimously upheld an Administrative Law Judge’s finding that gray market importers of Rockwell’s industrial automation products infringed several of Rockwell’s trademarks.
In its April 8, 2019 ruling, the ITC agreed that the imported gray market goods infringe Rockwell’s trademarks because they were materially different from Rockwell’s genuine products in several aspects, including quality control and warranty support.
Notably, the ITC granted a rarely awarded General Exclusion Order (GEO). A GEO is the ITC’s highest form of remedy and requires a heightened-evidentiary showing of possible circumvention of ITC orders by importers or difficulty in identifying the source of the imported goods. The Commission ruled a GEO was appropriate based on strong evidence that importers can mask identities and use online marketplaces to pass off gray market goods as new.
Representing Rockwell in the matter are Alston & Bird partners Paul Tanck, Adam D. Swain, Tom Davison, and Pat Flinn, as well as counsel Greg Carbo, senior associates Neal McLaughlin and Brian Hill, associates Jacob Bass and Sarina Singh, and paralegal Desiree January (Intellectual Property Litigation).
The case caption is Certain Industrial Automation Systems and Components Thereof Including Control Systems, Controllers, Visualization Hardware, Motion and Motor Control Systems, Networking Equipment, Safety Devices, and Power Supplies, U.S. ITC Investigation No. 337-TA-1074.