Ninth Circuit Endorses Service On The USPTO Of Trademark Suits Against Foreign Defendants

By Patrick B. Monahan

So someone is infringing your trademark and you want to sue them, but the infringer is located outside the United States. You have a lawyer draft a complaint, but to initiate the suit, the complaint will need to be served. How can that be accomplished? Federal Rule of Civil Procedure 4(f) governs the service of defendants abroad, and states that such service may be done using “any internationally agreed means of service that is reasonably calculated to give notice.” The most well-known method for serving foreign defendants is set forth in the 1965 treaty commonly known as the Hague Service Convention, though that method can take months to complete.[1] However, the Ninth Circuit recently joined a number of jurisdictions around the country that endorse an easier, faster, and less costly method of service for trademark lawsuits if certain conditions are met.

In San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., the plaintiff winery (“San Antonio”) accused the China-based defendant (“Jiaxing”) of infringing its RIBOLI trademark, which San Antonio registered with the United States Patent and Trademark Office (“USPTO”) for use in connection with the marketing of its wines and other products sold at its wineries and restaurants. In 2020, long after San Antonio first used and registered its RIBOLI trademark, Jiaxing filed an application to register RIBOLI in connection with a number of household products related to wine, including but not limited to wine pourers, bottle stands, cocktail shakers, dishware, and other kitchen items. Given the overlap between the two sets of products sold under the RIBOLI name, and San Antonio’s prior rights, San Antonio filed suit against Jiaxing in the Central District of California alleging trademark infringement, trademark dilution, and false designation of origin, in addition to state law claims. In addition to other remedies, San Antonio asked the court to enjoin Jiaxing from using the RIBOLI mark in connection with the products at issue, and an order either directing Jiaxing to abandon the RIBOLI application or directing the PTO to refuse to register that application.

While San Antonio could have used the Hague Service Convention to effect service on Jiaxiang, as the U.S. and China are both signatories, San Antonio opted for a different method in an effort to save itself the months-long Hague process. Section 1051(e) of the Lanham Act permits foreign parties applying for trademark registrations with the USPTO to designate a domestic representative in connection with that application, that is, to “designate, by a document filed in the [USPTO], the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark.” 15 U.S.C. § 1051(e). However, if the person so designated cannot be found, or if the registrant does not designate a domestic U.S. representative, “such notices or processes may be served on the Director [of the USPTO].” Id. After attempting to contact Jiaxiang’s U.S. based attorney and not receiving a response, San Antonio served its complaint on the Director of the USPTO. The USPTO then sent the complaint to Jiaixing and confirmed that service of process was made pursuant to Section 1051(e), placing a copy of the complaint in Jiaxing’s RIBOLI application file.

Jiaxing failed to appear to defend itself in the lawsuit. However, when San Antonio moved for a default judgment seeking an injunction banning Jiaxing from using the RIBOLI mark, the District Court denied the motion, stating that Jiaxing had not been properly served. San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., No. cv-20-9663 (C.D. Cal. Apr. 5, 2021). Because the Ninth Circuit had not weighed in on the issue, the District Court cited to a prior decision in which the Eastern District of California found that service on the USPTO only applies to administrative proceedings held before the USPTO. See E. & J. Gallo Winery v. Cantine Rallo, S.p.A., 430 F. Supp. 2d 1064 (E.D. Cal. 2005).

San Antonio appealed the District Court’s denial, and the Ninth Circuit reversed. In holding that service on the USPTO was sufficient, the Ninth Circuit relied on the plain language of Section 1051(e), specifically, “proceedings affecting the mark.” Simply put, as court proceedings are “proceedings”, and those proceedings can “affect” a trademark (as San Antonio’s sought relief clearly shows), the Ninth Circuit found that Section 1051(e) provided a means to serve process in court proceedings. See San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., No. 21-56306 (9th Cir. Nov. 14, 2022). The case was remanded to the District Court to determine the remaining issues in San Antonio’s default judgment motion.

This option is not limited to the Ninth Circuit, which encompasses the federal courts of Alaska, Arizona, California, Guam, Hawaii, Idaho, Montana, the Northern Mariana Islands, Oregon, and Washington. While courts are split, as the District Court in San Antonio noted, there are a number of jurisdictions around the country, including in Florida and Illinois, that hold that service on the USPTO does suffice in court proceedings. See San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., No. cv-20-9663 at *3-4 (C.D. Cal. Apr. 5, 2021).

It’s important to keep in mind that service on the USPTO is only available in instances in which a foreign entity has (i) applied for a registration for the mark at issue, and (ii) has either not designated a domestic representative or that representative has not responded. This is a somewhat limited set of circumstances, but in those circumstances service on the USPTO is a vastly preferable method to the lengthy and costly Hague Service Convention.

If you have an issue with a foreign entity infringing your intellectual property rights and are interested to see whether service on the USPTO is an option for you, please do not hesitate to contact us.

[1] Not all countries are signatories to the Hague Service Convention, and service on those countries must be effected through different channels. As always, consult with an attorney to determine what is needed.