6
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, DC
`
`InvestigationNo. 337-TA-936
`
`
`
`In the Matter of
`
`
`CERTAIN FOOTWEAR PRODUCTS
`
`CONSENT ORDER
`
`The International Trade Commission (the “Commission”) has instituted the above-
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`captioned investigation under Section 337 of the Tariff Act of 1930 as amended (19 U.S.C.
`
`§ 1337), based upon the allegations contained in the Complaint filed by Converse Inc., which
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`alleges violations of Section 337 by Respondent Iconix Brand Group, Inc. (“Iconix”)
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`based upon the importation into the United States, the sale for importation into the United States,
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`and/or the sale within the United States after importation of certain footwear products that
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`infringe U.S. Trademark Registration No. 4,398,753 (“the ’753 Registration”).
`Respondent Iconix has executed a Consent Order Stipulation in which it agrees to the
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`entry of this Consent Order and to all waivers and other provisions as
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`required by the
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`Commission's Rules of Practice and Procedure, has executed a Settlement Agreement with
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`Converse, and has consented to the filing of the Joint Motion to Terminate Investigation as to
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`Iconix Based on Settlement Agreement and Consent Order.
`
`
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`UNITED STATES INTERNATIONAL TRADE COMMISSION
`
`WASHINGTON, DC
`
`InvestigationNo. 337-TA-936
`
`
`
`In the Matter of
`
`
`CERTAIN FOOTWEAR PRODUCTS
`
`CONSENT ORDER
`
`The International Trade Commission (the “Commission”) has instituted the above-
`
`captioned investigation under Section 337 of the Tariff Act of 1930 as amended (19 U.S.C.
`
`§ 1337), based upon the allegations contained in the Complaint filed by Converse Inc., which
`
`alleges violations of Section 337 by Respondent Iconix Brand Group, Inc. (“Iconix”)
`
`based upon the importation into the United States, the sale for importation into the United States,
`
`and/or the sale within the United States after importation of certain footwear products that
`
`infringe U.S. Trademark Registration No. 4,398,753 (“the ’753 Registration”).
`Respondent Iconix has executed a Consent Order Stipulation in which it agrees to the
`
`entry of this Consent Order and to all waivers and other provisions as
`
`required by the
`
`Commission's Rules of Practice and Procedure, has executed a Settlement Agreement with
`
`Converse, and has consented to the filing of the Joint Motion to Terminate Investigation as to
`
`Iconix Based on Settlement Agreement and Consent Order.
`
`
`
`NOW, THEREFORE, the Commission issues the following Consent Order:
`
`1.
`
`The Complainant in this Investigation is Converse Inc., aDelaware corporation
`
`having aplace ofbusiness at 1 High Street, North Andover, Massachusetts 01845 (“Converse”).
`
`2.
`
`The Respondent covered by this Consent Order is
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`Iconix, a corporation
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`' organized and existing under the laws of Delaware, having a place of business at 1450
`
`Broadway, 3"‘ and 4”‘ Floor, New York, NY 10018.
`
`3.
`
`The subject articles are footwear products that were previously imported into the
`
`United States, sold for importation into the United States, and/or sold within the United States
`
`after importation and that are alleged to infringe the j’753 Registration (the “Subject Articles”).
`
`4.
`In its Complaint, Converse alleges that Iconix sells for importation,
`imports,
`and/or sells in the United States after importation Subject Articles in violation of Section 337 of
`
`the Tariff Act of 1930 as amended (19 U.S.C. § 1337) by reason of infringement of the ’753
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`Registration.
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`5.
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`Iconix has executed a Consent Order Stipulation and stipulates toithe entry of
`
`this Consent Order.
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`6.
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`Iconix shall not sell for importation,
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`import, or sell after importation Subject
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`Articles, directly or indirectly, and shall not aid, abet, encourage, participate in, or induce the
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`sale for importation, the importation, or the sale after importation of Subject Articles except
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`under consent or license from Converse, or to the extent permitted by the Settlement Agreement
`
`between Converse and Iconix.
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`7.
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`Iconix shall cease and desist from importing and distributing Subject Articles in
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`the United States.
`
`
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`8.
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`Iconix shall be precluded from seeking judicial
`
`review or
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`otherwise
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`challenging or contesting the validity ofthe Consent Order.
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`9.
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`‘
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`Iconix shall cooperate with and shall not seek to impede by litigation or other
`
`means the Commission's efforts to gather information under Subpart I of the Commission's
`
`Rules of Practice and Procedure, 19 C.F.R. Part 210.
`
`10.
`Iconix and its officers, directors, employees, agents and any entity or individual
`acting on its behalf and with its authority shall not seek to challenge the validity or enforceability
`
`of the ’753 Registration in any administrative or judicial proceeding to enforce the Consent
`
`Order.
`
`11.
`
`If the ’753 Registration expires, this Consent Order shall become null and void
`
`as to such expired trademark.
`
`12.
`
`The Consent Order shall become null and void with respect
`
`to the ’753
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`Registration if it is held invalid or unenforceable by a court or agency of competent jurisdiction
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`or as to any articles that have been found or adjudicated not to infringe the ’753 Registration in a
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`final decision, no longer subject to appeal.
`
`13.
`
`This
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`Investigation is hereby terminated with respect
`
`to Iconix; provided,
`
`however, that enforcement, modification, or revocation of this Consent Order shall be carried out
`
`pursuant to Subpart I of the Commission's Rules of Practice and Procedure, 19 C.F.R. Part 210.
`
`By order of the Commission.
`
`Issued: May 13, 2015
`
`W‘?-%@
`
`Lisa'Barton
`
`Secretary to the Commission
`
`
`
`CERTAIN FOOTWEAR PRODUCTS
`
`Inv. No. 337-TA-936
`
`PUBLIC CERTIFICATE OF SERVICE
`
`1, Lisa R. Barton, hereby certify that the attached COMMISSION ORDER has been
`served by hand upon the Commission Investigative Attorney, Sarah J. Sladic, Esq., and the
`following parties as indicated, on May 13, 2015.
`
`“
`
`Lisa R. Barton, Secretary
`U.S. International Trade Commission
`
`500 E Street, SW, Room 112
`
`Washington, DC 20436
`
`On Behalf of Complainant Converse Inc.:
`
`V. James Adduci, II, Esq.
`ADDUCI, MASTRIANI & SCHAUMBERG, LLP
`1133 Connecticut Avenue, N.W., 12”‘ Floor
`Washington, DC 20036
`
`C! Via Hand Delivery
`
`Cl Via Express Delivery
`Via First Class Mail
`
`Cl Other:
`
`On Behalf of Respondent Fortune Dynamic, Inc.
`
`Gary J. Rinkerrnan, Esq.
`DRINKER BIDDLE & REATH LLP
`
`1500 K Street, N.W. Suite 1100
`Washington, DC 20005
`
`On Behalf of Respondent Wal-Mart Stores, Inc.:
`
`Mareesa A. Frederick, Esq.
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER LLP
`
`901 New York Avenue, NW
`
`Washington, DC 20001
`
`On Behalf of Respondent KMART Corporation:
`
`Catherine Kuersten, Esq.
`MORGAN, LEWIS & BOCKIUS LLP
`11 11 Pennsylvania Ave., NW
`Washington, DC 20004
`
`Cl Via Hand Delivery
`
`Cl Via Express Delivery
`Via First Class Mail
`
`D Other:
`
`El Via Hand Delivery
`
`D Via Express Delivery
`Via First Class Mail
`
`Cl Other:
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`El Via Hand Delivery
`
`Cl Via Express Delivery
`Via First Class Mail
`
`Cl Other:
`
`
`
`CERTAINFOOTWEAR PRODUCTS
`
`Inv.- No. 337-TA-936
`
`Certificate of Service — Page 2
`
`On Behalf of Respondent Skechers U.S.A., Inc.:
`
`Barbara A. Murphy, Esq.
`FOSTER, MURPHY, ALTMAN & NICKEL, PC
`L StI'€€t, NW, S1.llt€
`Washington, DC 20036
`
`_
`
`E] Via Hand Delivery
`[3 Via Express Delivery
`First Class
`D Other:
`
`On Behalf of Respondent Iconix Brand Group Inc. d/b/a Ed
`Hardy:
`
`Kieran G. Doyle, Esq.
`COWAN, LIEBOWITZ & LATMAN, P.C.
`1133 Avenue of the Americas
`New York, NY 10036-6799
`
`D Via Hand Delivery
`|‘_‘] Via Express Delivery
`Via First Class Mail
`D Oth-er
`
`On Behalf of Respondent Highline United LLC d/b/a Ash
`Footwear USA:
`'
`
`Gerard P- NOITOII, ESC1
`FOX ROTHSCHILD LLP
`Princeton Pike Corporate Center
`997 Lennox Drive, Building 3
`Lawrenceville, NJ 08648-2311
`
`D Via Hand Delivery
`Cl Via Express Delivery
`Via First Class Mail
`D other
`
`On Behalf of Respondent Esguire Footwear, LLC:
`
`Darren Oved, Esq.
`OVED & OVED LLP
`401 Greenwich Street
`New York, NY 10013
`
`“
`
`El Via Hand Delivery
`D Via Express Delivery
`Via First Class Mail
`D Other:
`
`On Behalf of Respondent A-List, Inc., d/b/a Kitson :
`
`Gregory S. Cordrey, Esq.
`JEFFER MAGELS BUTLER & MITCHELLLLP
`3 Park Plaza’ Suite 1100
`Irvine, CA 92614
`
`,
`
`El Via Hand Delivery
`|:| Via Express Delivery
`IE Via First Class Mail
`D Other:
`
`
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`CERTAIN FOOTWEAR PRODUCTS
`
`T
`
`Inv. N0. 337—TA-936
`
`Certificate of Service — Page 3
`
`On Behalf of Respondent Cmerit USA, Inc., d/b/a Gotta Flurt.:
`
`Hubert H. Kuo, Esq.
`ARDENT LAW GROUP, PC
`Michelson DI'., SL1lt€
`Irvine, CA 92612
`
`On Behalf of Resgondent New Balance
`
`Thomas S. Fusco, Esq.
`FISH & RICHARDSON P~C-
`1425 K Street, NW, 11”‘ Floor
`Washington, D.C. 20005
`
`Resgondentsz
`
`Zhejiang Ouhai lntemational Trade Co. Ltd.
`Building B, Jinzhou Building
`_
`Wenzhou AVenue=
`Wenzhou Zhejiang Province
`China 325000
`
`Wenzhou Cereals Oils & Foodstuffs Foreign Trade Co., Ltd.
`24”‘ Floor, lntemational Trade Centre
`236 Liming West Road, Wenzhou
`Zhejiang Province
`China 325003
`
`El Via Hand Delivery
`D Via Express Delivery
`First Class
`D Other:
`
`Cl Via Hand Delivery
`Cl Via Express Delivery
`Via First Crass Mair
`D Other:
`
`'
`
`D Via Hand Delivery
`|‘_'] Via Express Delivery
`Via First Class Mail
`,
`B Other‘
`
`[1 Via Hand Delivery
`|:| Via Express Delivery
`Via First Class Mail
`D other
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