Big Win For Cislo & Thomas in Ninth Circuit Court of Appeals Changes Trademark Law

Takeaway: Jeffrey Sheldon, Esq. and Katherine Bond, Esq. of Cislo & Thomas win Ninth Circuit case, establishing new law allowing plaintiffs to serve foreign defendants without needing to use the Hague Convention for foreign process.

The Ninth Circuit Court of Appeals issued a decision, setting precedent and resolving a split among the circuits regarding the interpretation of the term “proceedings” as recited in 15 U.S.C. §1051(e). The question presented to the appellate court was, “Do the procedures of Section 1051(e) provide a means of serving defendants in civil court proceedings affecting a trademark?”

In a U.S. civil lawsuit, it can be challenging and costly to serve a foreign defendant if the defendant does not have a U.S. agent or location. There is a foreign convention, the Hague convention, that allows for such service but it is slow and expensive, requiring documents be translated and the cooperation of a foreign government; think China. However, for defendants who seek trademark registration in the United States, 15 U.S.C. §1051(e) states that “notices or process in proceedings affecting the mark” may be served on the Director of the U.S.P.T.O. If this statute is interpreted such that “proceedings” includes civil litigation cases, 15 U.S.C. §1051(e) would offer an alternative way to serve foreign defendants in civil cases.

Cislo & Thomas attorneys Jeffrey Sheldon and Katherine Bond argued on behalf of San Antonio Winery, Inc. that this statute applies in Federal Court “proceedings” and not just Trademark Office proceedings. This position was further supported by counsel for the Department of Justice who submitted an amicus brief.

The Supreme Court has not ruled on fair use in art since 1994. Thus, this ruling will be monumental moment in copyright law.

“Fortunately, the timing was right and we had a lot of support. San Antonio Winery should be commended for taking up a cause on behalf of smaller businesses that may not have the resources or means to challenge foreign defendants or improper district court decisions. The U.S. Trademark Office had a vested interest based on the significant increase in foreign applicants over the past few years. Katherine and I were committed to making sure 1051(e) remained a viable option for service on foreign defendants in civil proceedings,” said Senior Partner Jeffrey Sheldon.

This favorable ruling confirms that 15 U.S.C. §1051(e) is a less costly and more efficient method (as compared to the Hague convention) for serving foreign defendants in civil lawsuits who have purposely availed themselves of the trademark laws of the United States.