Court clears new way for trademark owners to serve foreign infringers

Wine being poured into a wine glass

Stopping overseas trademark infringement is often a challenge due to the time, expense, and difficulty with serving foreign companies with U.S. litigation. A recent decision by the Ninth Circuit Court of Appeals may have made that process much easier and far less expensive in certain situations.

Last month, in a case of first impression, the Ninth Circuit Court of Appeals held that a lawsuit affecting a trademark may be served on a foreign defendant if the defendant has filed an application for registration of a conflicting trademark with the United States Patent and Trademark Office (USPTO). In San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., a Los Angeles-based winery and owner of RIBOLI and RIBOLI FAMILY trademarks sued a Chinese-based company that had applied for federal registration of RIBOLI covering wine pourers and bottle stands. Looking for a faster and more cost-effective route for service other than the Hague Convention, the plaintiff winery served the Chinese company under 15 U.S.C. § 1051(e), which allows a U.S. resident to serve a foreign applicant’s USPTO designated agent or the USPTO director in “proceedings” affecting a mark.

District courts had previously been split on whether § 1051(e) was limited to USPTO proceedings or could be used for civil lawsuits. The Ninth Circuit resolved the issue by finding that the statute’s use of “proceedings” “affecting” a mark was broad enough to encompass litigation that would impact trademark rights. The Ninth Circuit also held that service through § 1051(e) does not violate the Hague Convention because that Convention governs service among foreign countries and § 1051(e) allows for service wholly within the United States vis-a-vis the USPTO.

The immediate takeaway? The Ninth Circuit’s decision could be a strong tool for domestic companies to use against foreign-based applicants of confusingly similar trademarks. This could be particularly effective for the increasing number of trademark “trolls” applying for registrations to sell counterfeit products on websites like Amazon, which rely on trademark registrations to verify IP ownership. And, foreign companies seeking trademark protection in the United States should be aware that an application with the USPTO could be all that is required for service of a U.S. lawsuit involving the trademark.