U.S. Trademark Application Subjects Applicant To Service In U.S.

• Jurisdiction: United States,Federal
• Law Firm: Jeffer Mangels Butler & Mitchell LLP
• Subject Matter: Intellectual Property, Trademark
• Author: Ms Jessica Bromall Sparkman and Rod Berman
• Published date: 13 January 2023

As a matter of first impression, the Ninth Circuit Court of Appeals recently held that in court proceedings affecting a mark that is the subject of a U.S. trademark application or registration, a foreign-domiciled applicant or registrant can be served through the domestic agent designated by it in the United States Patent and Trademark Office ("Trademark Office") during prosecution and that, if there is no such agent, such applicant or registrant can be served through the Director of the Trademark Office. See San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., 53 F.4th 1136, 1138 (9th Cir. 2022).

The Lanham Act allows trademark applicants domiciled in foreign countries to designate "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) [emphasis added]. If a foreign-domiciled applicant does not designate such a person, the Lanham Act states that such notices or process can be served on the Director of the Trademark Office. Id. Such service may be accomplished by leaving the documents with or mailing the documents to the designated person or, if there is none, the Director. Id.

Numerous U.S. district courts across the country have considered whether "proceedings affecting the mark" is limited proceedings in the Trademark Office or whether it also includes court proceedings and have reached conflicting results; the results have been fairly evenly split.¹ The Ninth Circuit is the first appellate court to consider the issue. The Ninth Circuit found, unambiguously, that court proceedings affective a mark, the Lanham Act allows for service on a foreign applicants' or registrants' designated domestic representatives or, if there is none, on the Director of the Trademark Office. While only binding on district courts within the Ninth Circuit (Alaska, Arizona, California, Hawaii, Idaho, Montana, Nevada, Oregon, Utah, and Washington), the decision is likely to be persuasive nationwide.

The practical implications for foreign entities are significant. Where Lanham Act service is not an option, serving a foreign defendant in a U.S. lawsuit is often a complicated and costly proposition. Lanham Act service, now Ninth Circuit-approved, however, allows a plaintiff to accomplish service simply by mailing a summons and complaint to a defendant's designated agent or, if there is none, the Director of the Trademark Office. Lanham Act service does not necessarily satisfy service requirements...