E9-1092. In the Matter of: Certain Hydraulic Excavators and Components Thereof General Exclusion Order

The Commission has determined that there is a violation of section 337 of the Tariff Act of 1930 (19 U.S.C. 1337) based on the unlawful importation and sale of certain hydraulic excavators that infringe United States Trademark Registration Nos. 2,140,606; 2,241,077; 2,140,605 and 2,448,848, which cover the “CAT” and “Caterpillar” marks.

Having reviewed the record in this investigation, including the written submissions of the parties, the Commission has made its determination on the issues of remedy, the public interest, and bonding. The Commission has determined that a general exclusion from entry for consumption is necessary because there is a pattern of violation of section 337 and it is difficult to identify the source of the infringing products. Accordingly, the Commission has determined to issue a general exclusion order prohibiting the unlicensed importation of infringing gray market hydraulic excavators bearing the trademarks at issue.

The Commission has further determined that the public interest factors enumerated in 19 U.S.C. 1337(d) do not preclude issuance of the general exclusion order, and that the bond during the Presidential review period shall be in the amount of 100 percent of the entered value of the articles in question.

Accordingly, the Commission hereby orders that:

(1) Hydraulic excavators manufactured by or under authority of Caterpillar Inc. for sale and use outside the North America Commercial Division (United States and Canada) which (a) bear one or more of the following U.S. Trademark Reg. Nos. 2,140,605; 2,140,606; 2,421,077; and 2,448,848 and (b) are materially different from hydraulic excavators manufactured by or under authority of Caterpillar Inc. for sale and use in the United States, are excluded from entry for consumption into the United States, entry for consumption from a foreign-trade zone, or withdrawal from warehouse for consumption, except if imported by, under license from, or with the permission of the trademark owner, or as provided by law, until such date as the trademarks are abandoned, canceled, or rendered invalid or unenforceable. This paragraph shall apply to hydraulic excavators exported, shipped, sold, purchased, or imported by any and all persons, including authorized Caterpillar dealers.

(2) Notwithstanding paragraph 1 of this Order, the aforesaid hydraulic excavators excludable under paragraph 1 of this Order are entitled to entry into the United States for consumption, entry for consumption from a foreign trade zone, or withdrawal from a warehouse for consumption, under bond in the amount of 100 percent of entered value pursuant to subsection (j) of section 337 of the Tariff Act of 1930, as amended (19 U.S.C. 1337(j)), and the Presidential memorandum for the United States Trade Representative of July 21, 2005 (70 FR 43251) from the day after this Order is received by the United States Trade Representative until such time as the United States Trade Representative notifies the Commission that this Order is approved or disapproved but, in any event, not later than 60 days after the date of receipt of this Order.

(3) In accordance with 19 U.S.C. 1337(l), the provisions of this Order shall not apply to hydraulic excavators bearing the asserted trademarks that are imported by and for the use of the United States, or imported for, and to be used for, the United States with the authorization or consent of the Government.

(4) Complainant Caterpillar Inc. shall file a written statement with the Commission, made under oath, each year on the anniversary of the issuance of this Order stating whether Caterpillar Inc. continues to use each of the aforesaid trademarks in commerce in the United States in connection with hydraulic excavators, whether any of the aforesaid trademarks has been abandoned, canceled, or rendered invalid or unenforceable, and whether Caterpillar Inc. continues to satisfy the economic requirements of section 337(a)(2).

(5) The Commission may modify this Order in accordance with the procedures described in section 210.76 of the Commission's Rules of Practice and Procedure (19 CFR 210.76).

(6) The Secretary shall serve copies of this Order upon each party of record in this investigation and upon the Department of Health and Human Services, the Department of Justice, the Federal Trade Commission, and the U.S. Customs and Border Protection.

(7) Notice of this Order shall be published in the Federal Register.

(8) At the discretion of U.S. Customs and Border Protection (“CBP”) and pursuant to procedures it establishes, persons seeking to import hydraulic excavators that are potentially subject to this Order may be required to certify that they are familiar with the terms of this Order, that they have made appropriate inquiry, and thereupon state that, to the best of their knowledge and belief, the products being imported are not excluded from entry under paragraphs 1 through 7 of this Order. At its discretion, Customs may require persons who have provided the certification described in this paragraph to furnish such records or analyses as are necessary to substantiate the certification.

By Order of the Commission.

Issued: January 14, 2009.

Marilyn R. Abbott,

Secretary to the Commission.