The Ninth Circuit has ruled that service of process for a lawsuit against a foreign company that affects a U.S. trademark registered to that foreign company, can be made through the Director of the U.S. Patent and Trademark Office (“USPTO”).

Under 15 U.S.C. § 1051(e), a trademark applicant domiciled in a foreign country can designate “a person resident in the United States on whom may be served notices or process in proceedings affecting the mark.” If the foreign-domiciled applicant declines to designate someone, or the designated person cannot be found, the statute provides that the foreign applicant may be served via the Director of the USPTO.

In San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co. Ltd., No. 21-56036 (9th Cir. Nov. 14, 2022), the historic San Antonio Winery in Los Angeles, which owns registered trademarks for RIBOLI and RIBOLI FAMILY for wines, filed a trademark lawsuit in the Central District of California against a Chinese company, Jiaxing Micarose Trade Co., Ltd., owner of a trademark registration for RIBOLI in connection with articles of clothing and shoes, and a pending trademark application to register RIBOLI for additional types of products, including wine pourers, bottle stands, containers, cocktail shakers, dishware, and various other kitchen and household item.

San Antonio asserted claims against Jiaxing for trademark infringement, trademark dilution, and false designation of origin; and sought an injunction prohibiting Jiaxing from using the mark RIBOLI in connection with its products, an order cancelling Jiaxing's 2018 registration of the RIBOLI mark, and an order either directing Jiaxing to abandon its 2020 application to register RIBOLI for additional uses or prohibiting the PTO from granting the application.

Service of process for a Chinese company such as Jiaxing may be done abroad by, among other means, “any internationally agreed means of service that is reasonably calculated to give notice,” including the procedures of the Hague Convention. See Federal Rule of Civil Procedure 4(f).

Both the United States and China are parties to the Hague Convention; but the Hague Convention can be a slow and cumbersome process.

Concerned with the amount of time it might take to effect service under the Hague Convention, San Antonio instead sought to serve Jiaxing under Section 1051(e) of the Lanham Act.

            Seeking to avail itself of the service procedures of Section 1051(e), San Antonio first inquired whether a U.S.-based attorney who had represented Jiaxing in connection with its trademark applications would accept service on Jiaxing's behalf. When that attorney did not respond, San Antonio served the summons, complaint, and accompanying documents on the Director of the PTO. Upon receiving the documents, the PTO sent Jiaxing a letter confirming that “[p]ursuant to 15 U.S.C. § 1051(e), service of process in the . . . lawsuit was effectuated” through service on the Director. The PTO sent Jiaxing copies of the documents and also placed them in Jiaxing's trademark registration files.

District courts across the country, however, have been split on whether Section 1051(e) only applied to USPTO administrative proceedings, or also applied to court proceedings—and there was no circuit-level precedent on whether the procedures of Section 1051(e) provide a means of serving defendants in court proceedings.

Here, the district court in the San Antonio Winery case held that the procedures of Section 1051(e) apply only in administrative proceedings.

On appeal, the Ninth Circuit reversed the district court. The Court started with the statutory text of Section 1051(e) which governs service of notices or process in “proceedings affecting [a trademark].” 15 U.S.C. § 1051(e).

Because court proceedings are “proceedings,” and because those proceedings can “affect” a trademark, we conclude that Section 1051(e) provides a means of serving process in court.

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            Actions like the one filed by San Antonio—which sought, among other things, to cancel the RIBOLI mark registered by Jiaxing in 2018—comfortably fall within the plain and ordinary meaning of the phrase “proceedings affecting the mark.” These actions are “proceedings,” and their aim is to “affect” a trademark. Our analysis could end here.

The Ninth Circuit went on to note that Section 1051(e) refers to the service of “notices or process,” and the word “process” connotes court proceedings. See Process, Black's Law Dictionary (3d ed. 1933) (“the means of compelling [a] defendant in an action to appear in court”).

Furthermore, because proceedings before the USPTO are initiated with “notices” issued by the agency (see, e.g., 37 C.F.R. § 2.113(a)), construing Section 1051(e) to apply solely to administrative proceedings, would render the word “process” superfluous.

The attorneys at Thomas P. Howard, LLC litigate trademark cases nationwide including in Colorado.