Certain Cigarettes and Packaging Thereof; Notice of Issuance of General Exclusion Order and Cease and Desist Order

AGENCY:

U.S. International Trade Commission.

ACTION:

Notice.

SUMMARY:

Notice is hereby given that the U.S. International Trade Commission has issued a general exclusion order and a cease and desist order in the above-captioned investigation.

FOR FURTHER INFORMATION CONTACT:

Shara L. Aranoff, Esq., Office of the General Counsel, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436; telephone (202) 205-3090, e-mail saranoff@usitc.gov.

SUPPLEMENTARY INFORMATION:

The Commission instituted this investigation on September 16, 1999, based on a complaint and supplement to the complaint filed by Brown & Williamson Tobacco Corporation (“complainant” or “Brown & Williamson”). Complainant alleged unfair acts in violation of section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) in the importation, sale for importation, and/or sale within the United States after importation of certain cigarettes and packaging thereof, by reason of: (a) Infringement of 11 federally registered U.S. trademarks (U.S. Reg. Nos. 118,372; 311,961; 335,113; 366,744; 404,302; 508,538; 747,482; 747,490; 2,055,297; 2,174,493; and 2,218,589) (“the Brown & Williamson trademarks”); (b) trademark dilution; (c) false representation of source; and (d) false advertising. The Commission's notice of investigation named Allstate Cigarette Distributors, Inc. (“Allstate”), Dood Enterprises, Inc. (“Dood”), Prestige Storage and Distribution, Inc. (“Prestige”), and R.E. Tobacco Sales, Inc. (“R.E. Tobacco”) as respondents.

On December 15, 1999, the Commission determined not to review an initial determination (“ID”) (Order No. 15) granting the motion of PTI, Inc., doing business as Ampac Trading (“PTI” or “intervenor”), to intervene in this investigation. On February 22, 2000, the Commission determined to review and affirm an ID (Order No. 30) granting the motion of respondent Allstate to terminate the investigation as to it based on a consent order. On March 24, 2000, the Commission determined not to review two IDs (Orders Nos. 60 and 61) granting the motions of respondents Prestige and R.E. Tobacco to terminate the investigation as to them based on consent orders. On April 27, 2000, the Commission determined not to review an ID (Order No. 68) granting the motion of respondent Dood to terminate the investigation as to it based on a consent order.

On March 24, 2000, the Commission determined not to review an ID (Order No. 59) granting complainant's motion for partial summary determination that a domestic industry exists with respect to complainant's trademarks.

The presiding administrative law judge (“ALJ”) held an evidentiary hearing on violation beginning on March 20, 2000. On March 24, 2000, the last day of the hearing, PTI filed a motion for dismissal of Brown & Williamson's complaint pursuant to Federal Rule of Civil Procedure (“FRCP”) 41(a), alleging that Brown & Williamson failed to set forth facts showing entitlement to relief for trademark infringement. The ALJ permitted complainant and the Commission investigative attorney (“IA”) to respond to PTI's motion in their posthearing briefs.

On June 22, 2000, the ALJ issued her final ID finding a violation of section 337 and denying PTI's motion to dismiss. She found that there had been imports of the accused products by intervenor PTI; that PTI's importation and sale of certain “KOOL” and “LUCKY STRIKE” cigarettes infringed the Brown & Williamson trademarks; that PTI's importation and sale of accused cigarettes diluted the Brown & Williamson trademarks; that PTI's importation and sale of accused cigarettes constituted a false designation of origin; that complainant had failed to demonstrate that PTI engaged in false advertising with respect to the accused cigarettes; that PTI's trademark dilution and false designation had the threat or effect of substantially injuring the domestic industry; and that PTI was not denied due process in proceedings before the ALJ in this investigation.

On June 27, 2000, the Commission determined to extend the date by which it was required determine whether to review the instant ID to August 28, 2000, and to extend the target date in this investigation to October 16, 2000.

On July 12, 2000, intervenor PTI filed a petition for review of the final ID. On July 17, 2000, complainant and the IA filed responses to the petition. On August 28, 2000, the Commission determined not to review the ID and requested written submissions on the issues of remedy, the public interest, and bonding. 65 FR 53334 (Sept. 1, 2000).

Submissions on remedy, the public interest, and bonding were received from complainant, intervenor PTI, and the IA. Reply submissions were received from complainant and the IA. Comments on the public interest were received from one U.S. Senator, nineteen Members of Congress, the National Association of Attorneys General, the Attorney General of Florida, the Petroleum Marketers Association of America, the National Association of Convenience Stores, and the National Grocers Association.

Having reviewed the record in this investigation, including the written submissions of the parties and the public comments, the Commission has determined that the appropriate form of relief is a general exclusion order prohibiting the unlicenced entry for consumption of KOOL and LUCKY STRIKE cigarettes manufactured by Brown & Williamson that infringe the eleven federally-registered Brown & Williamson trademarks (U.S. Reg. Nos. 118,372; 311,961; 335,113; 366,744; 404,302; 508,538; 747,482; 747,490; 2,055,297; 2,174,493; and 2,218,589), dilute the identified trademarks, or bear the identified trademarks and falsely represent that the trademark owner is the source of such product, and a cease and desist order directed to intervenor PTI, prohibiting the importation, sale for importation, or sale in the United States after importation of KOOL and LUCKY STRIKE cigarettes that infringe the Brown & Williamson trademarks.

The Commission has also determined that the public interest factors enumerated in subsections 1337(d) and (f) do not preclude the issuance of the general exclusion order and the cease and desist order, and that the bond during the Presidential review period shall be in the amount of seven dollars ($7.00) per carton of cigarettes.

This action is taken under the authority of section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) and section 210.50 of the Commission's Rules of Practice and Procedure (19 CFR 210.50).

Copies of the Commission's orders, the public version of the Commission's opinion in support thereof, and all other nonconfidential documents filed in connection with this investigation are or will be available for inspection during official business hours (8:45 a.m. to 5:15 p.m.) in the Office of the Secretary, U.S. International Trade Commission, 500 E Street, SW., Washington, DC 20436, telephone (202) 205-2000. Hearing impaired persons are advised that information can be obtained by contacting the Commission's TDD terminal on (202) 205-1810. Public documents are available for downloading from the Commission's Internet server (http://www.usitc.gov). General information concerning the Commission may also be obtained by accessing its Internet server.