Cislo & Thomas Argues Important Trademark Question Before the Ninth Circuit

Cislo & Thomas attorneys Jeffrey Sheldon and Katherine Bond recently argued an important trademark case before the 9th Circuit Court of Appeals in Pasadena.

In a civil lawsuit, it can be challenging and costly to serve a foreign defendant in a U.S. lawsuit if that defendant does not have a U.S. agent or location. The Hague Convention allows for such service, but it is slow and expensive. In addition, it requires documents be translated and the cooperation of a foreign government. However, for defendants who sought 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 USPTO. 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.

Currently, the District Courts are split on this issue, and no appellate court has ruled on the issue. So is a civil court proceeding a “proceeding” under 15 U.S.C. 1051(e)?

On August 3, 2022, our Cislo & Thomas attorneys argued that this statute applies in a Federal Court “proceeding” and not just Trademark Office proceedings. Our arguments were supported by counsel for the Department of Justice, who submitted an amicus brief and also argued the position that service on the Director of the USPTO is proper for district court litigation for defendants who have sought trademark registration in the United States. The decision now resides with the judges. A favorable ruling will result in a less costly and more efficient method (as compared to the Hague Convention) for serving foreign defendants in civil lawsuits.

The appeals court case is captioned SAN ANTONIO WINERY, INC. v. JIAXING MICAROSE TRADE CO., LTD., Case No. 21-56036. We will keep you posted on the Court’s decision.