Court Uncorks New Way to Serve Trademark Complaints

By on November 29, 2022
Posted In Trademarks

The US Court of Appeals for the Ninth Circuit concluded that Section 1051(e) of the Lanham Act permits a plaintiff in a district court case to serve a complaint against a foreign defendant via the Director of the US Patent & Trademark Office (PTO). San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., Case No. 21-56036 (9th Cir. Nov. 14, 2022) (Siler, Callahan, Thomas, JJ.)

San Antonio Winery is a Los Angeles-based winery best known for its Stella Rosa brand of wines. The winery is owned and operated by the Riboli family. San Antonio has registered the trademarks RIBOLI and RIBOLI FAMILY, which it has used since at least 1998 to market its wines and other products.

Jiaxing is a Chinese company that has sold products using the Riboli name. In 2018, Jiaxing registered the mark RIBOLI for use in connection with articles of clothing and shoes. In 2020, Jiaxing applied to register the mark RIBOLI for use with additional types of products, including wine pourers, bottle stands, containers, cocktail shakers, dishware and various other kitchen and household items.

After learning that Jiaxing was using the Riboli name to sell products in the United States, San Antonio filed a complaint asserting Lanham Act claims for trademark infringement, trademark dilution and false designation of origin, as well as related state-law claims. San Antonio also sought an injunction prohibiting Jiaxing from using the RIBOLI mark in connection with its products, an order canceling 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.

Because Jiaxing is a Chinese company, San Antonio’s service of process was governed by rules for serving parties abroad, such as by the Hague Convention. 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, which applies to foreign domiciliaries who apply to register a trademark. Section 1051(e) states that if a trademark applicant is not domiciled in the United States, the applicant may designate the name and address of a person in the United States who may be served with notices or processes in proceedings affecting the mark. If the designated person cannot be found at the address, the notices or processes may be served on the PTO Director.

Seeking to avail itself of Section 1051(e), San Antonio inquired whether the US-based lawyer who had represented Jiaxing in connection with its trademark applications would accept service on Jiaxing’s behalf. When the lawyer did not respond, San Antonio served the district court complaint on the PTO Director, who then sent a letter to Jiaxing confirming service of process was effectuated pursuant to Section 1051(e).

After Jiaxing did not appear to defend itself in the action, San Antonio filed a motion for default judgment. The district court denied the motion on the ground that Jiaxing had not been properly served. In denying the motion, the district court noted the lack of circuit-level authority on whether the procedures of Section 1051(e) provide a means of serving defendants in court proceedings. Given the lack of clarity, the district court proceeded based on a 2005 district court decision that had concluded that Section 1051(e) applies only to administrative proceedings before the PTO. San Antonio appealed.

The Ninth Circuit reversed, finding that Section 1051(e) applies to “proceedings affecting a trademark,” and because district court proceedings are “proceedings” and because those proceedings can “affect” a trademark, Section 1051(e) provides a means for serving process in district court.

Starting with the statutory text, the Ninth Circuit first addressed the word “proceedings,” finding that the word required no complex interpretation, and that its plain and ordinary meaning includes proceedings in court. The Court next addressed the word “affect,” finding that district court proceedings can “affect” a trademark. The Court explained that since enactment, the Lanham Act has granted courts the authority to affect trademarks in various ways, including the power to “determine the right to [a trademark] registration, order the cancelation of registrations, . . . [and] restore canceled registrations.” The Court found that actions like that filed by San Antonio, which sought to cancel the RIBOLI mark registered by Jiaxing in 2018, comfortably falls within the plain meaning of the phrase “proceedings affecting the mark.”

Concluding that its analysis could end there, the Ninth Circuit nevertheless continued and found that Section 1051(e) use of the word “process” in the phrase “service of ‘notices or process’” connotes applicability to court proceedings. The Court explained that the use of the word “process” was particularly significant because there is no process served in administrative proceedings before the PTO. The Court concluded that if Section 1051(e) were interpreted to apply only to administrative proceedings, the word “process” would be superfluous and such a finding would contradict the canons of statutory interpretation.

The Ninth Circuit also made the point that its decision did not conflict with the Hague Convention, explaining that the Convention’s procedures apply only when the method of service at issue “require[s] the transmittal of documents abroad.” Because service under Section 1051(e) occurs domestically, the Court concluded it falls outside the scope of the Convention. Both methods of service under Section 1051(e)—(1) designate a US person to be served with notices or process or (2) submit to service through the PTO Director—occurs within the United States and without the international transmittal of documents.

The Ninth Circuit, therefore, vacated the district court’s order and remanded for further proceedings.

Amol Parikh
Amol Parikh concentrates his practice on intellectual property litigation, counseling and procurement. He draws on his trial and litigation experience in combination with his engineering training to quickly identify intellectual property issues and develop creative strategies to address them. Amol’s work on behalf of clients has earned him recognition in many industry publications. Most recently, Amol was recognized in February 2019 with the International Law Office’s “2019 Client Choice Award” for Intellectual Property in Illinois. The award recognizes “excellent client care” and the “ability to add real value to clients’ business above and beyond the other players in the market,” and winners may only be nominated by corporate counsel. Read Amol Parikh's full bio.