Steptoe Achieves 337 Victory for SHARPIE Maker

Sanford L.P., a subsidiary of Newell Rubbermaid
October 27, 2005

Steptoe's Section 337 team secured an important victory at the US International Trade Commission (ITC) for Sanford, L.P., that will enable the company to protect the trademarks and trade dress of its SHARPIE® ink markers from infringing imports.  Since the Commission has handled relatively few trade dress cases under Section 337, the Commission's decision with regard to the SHARPIE® trade dress will serve as an important precedent in this developing area of Commission law.

In order to stop the increasing influx into the United States of ink markers and related packaging that infringe the SHARPIE® trademarks and trade dress, Sanford brought claims against 15 foreign and domestic respondents that manufactured, imported, and/or sold ink markers in violation of Section 337 and the Lanham Act.  The Administrative Law Judge (ALJ) found a violation of Section 337 and recommended the issuance of a general exclusion order as well as a cease and desist order against one of the respondents.  The Commission agreed with the ALJ, issuing an order to have US Customs and Border Protection exclude all ink markers and packaging that infringe or are confusingly similar to Sanford’s trademarks or trade dress.  It also issued a cease and desist order against the respondent, which, like the Consent Orders, is enforced directly by the Commission through the federal district courts. 

Sanford is a subsidiary of Newell Rubbermaid and produces more than 6,000 art supplies and writing instruments.