Serving the USPTO Director in Actions Involving Non-US Companies: An Obscure Arrangement of the Lanham Act

This post was initially released to Seyfarth’s International Conflict Resolution Blog Site

There is an obscure arrangement of the Lanham Act (the United States Hallmark Act) that loads a possibly huge punch. 15 USC § 1051( e) offers that if a non-U.S. entity signs up for a hallmark in the United States without designating a United States local for service of “notifications or procedure in procedures impacting the mark” (a “Domestic Agent”), or if the Domestic Agent can not be discovered, then service, including of court pleadings starting and connected to a suit, can be achieved on the non-U.S. entity by serving the Director of the United States Patent and Hallmark Workplace (USPTO). The useful result of this arrangement is that specific non-U.S. entities who get hallmarks in the United States might discover themselves a celebration to U.S. lawsuits if the non-U.S. entity is never ever straight served with court documents.

Current Choices Use Area 1051( e) to Court Procedures

2 current cases recommend that Area 1051( e) might not be obscure a lot longer. In San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd,[1] the complainant took legal action against a foreign hallmark candidate and served the court documents on the USPTO Director, after which the USPTO sent out the documents to the foreign candidate. After the foreign candidate stopped working to appear in court, the complainant looked for a default judgment. The district court turned down that application, holding that Area 1051( e) just uses in USPTO administrative procedures, not lawsuit.[2] On appeal, the Ninth Circuit abandoned the district court’s choice. It discovered that the plain significance of “continuing” consists of lawsuit since lawsuit can “impact” a hallmark. This consists of, to name a few things, figuring out whether somebody deserves to sign up a mark, canceling an authorized mark or bring back canceled registrations.[3] The Ninth Circuit likewise depended on Area 1051( e)’s referrals to service of notifications or “procedure,” which it held used to service of procedure in a lawsuit.[4]

The Ninth Circuit likewise held that Area 1051( e) does not contravene the Hague Service Convention, which offers treatments for service on non-U.S. accuseds in nations that are signatories to the Convention.[5] The appeals court reasoned that the Convention uses just if “the approach of service at problem ‘need[s] the transmittal of files abroad.'”[6] Since Area 1051( e) includes domestic service on the USPTO Director, it “falls outside the scope of the Convention.”[7] Following the Ninth Circuit’s choice, the district court went into the default judgment looked for by the complainant.[8]

Right After the Ninth Circuit’s choice, a federal court in New york city followed the very same method. In Equibal, Inc. v. 365 Sun LLC,[9] 2 Brazilian entities that had actually requested U.S. hallmarks had actually noted U.S. lawyers as their counsel in their applications. However the lawyers were no longer in contact with the Brazilian entities or licensed to accept service on the entities’ behalf.[10] Neither entity had actually designated a Domestic Agent. Under those scenarios, the New york city court discovered that Area 1051( e) uses in court procedures, and concluded that service through the USPTO Director appertained.

The New york city court held that service on the USPTO Director pleased Federal Guideline of Civil Treatment 4( f), which offers that people or entities outside the United States can be served: (1) by methods stated in a global contract, such as the Hague Convention or the Inter-American Convention; (2) if there is no appropriate global contract, by methods computed to provide affordable notification; or (3) by implies not forbidden by a global contract that a U.S. court might purchase.[11] The New york city court discovered that the 3rd choice was pleased. Like the Ninth Circuit, the New york city court concluded that neither the Hague Convention nor the Inter-American Convention (to which Brazil is a signatory) bars service on the USPTO Director. The New york city court discovered that service on the USPTO Director likewise pleased due procedure since the Brazilian entities were “clearly caution[ed]” by Area 1051( e) that if they availed themselves of U.S. hallmark security, they might be served through the USPTO Director if they stopped working to designate a Domestic Agent or their Agent might not be discovered.[12] The court concluded by discovering that service on the USPTO Director was required in the event prior to it because of the problem of service through other methods.[13]

Points for Complainants

Area 1051( e) is a possibly beneficial tool for Lanham Act complainants looking for to take legal action against non-U.S. entities in connection with marks those entities use to sign up in the United States. If accepted in the specific judicial Circuit, service through Area 1051( e) might enable complainants to prevent treatments like those stated in the Hague Convention, which can typically be troublesome and pricey The statute, as analyzed by the Ninth Circuit and New york city court, might likewise allow service through Federal Guideline of Civil Treatment 4( f) on entities in nations that are not signatories to the Hague Convention, such as Algeria, Ghana, Kenya, Laos, Lebanon, Nigeria, Uganda, and Yemen.

It deserves keeping in mind, nevertheless, that the New york city court was inclined to allow service in part since the complainant had actually made efforts to serve the Brazilian entities straight, and after that looked for leave to serve the USPTO Director when those efforts stopped working. Complainants who rely entirely on serving the USPTO Director, however do not try to serve through other methods, might discover courts to be less responsive to the application of Area 1051( e).

In addition, Lanham Act complainants must stay mindful that, merely since service of procedure might be made through the USPTO Director, that in and of itself does exempt the foreign hallmark candidate to individual jurisdiction in a federal district court. The cases translating Area 1051( e) were based upon the accuseds’ United States usage of presumably infringing marks that they had actually likewise used to sign up.

Points for Non-U.S. Entities

Non-U.S. entities must think about designating a Domestic Agent when they use to sign up a hallmark in the United States. This must be a relatively simple thing to do, as all foreign-domiciled hallmark candidates, registrants, and celebrations to procedures should be represented by a U.S. lawyer,[14] and lawyers might, and frequently are, designated as foreign entities’ Domestic Agents. This stated, designees might retire, die, or have a modification in contact info. Non-U.S. entities must discover a relied on representative they can designate as Domestic Agent and share that representative’s information with their hallmark lawyers. That method, they guarantee domestic representation for the long-lasting and can keep tabs on that representative so that they can upgrade their Domestic Agent if the requirement emerges. Non-U.S. entities might wish to think about utilizing a business representative as a Domestic Agent to guarantee connection and predictability, with the caution that the non-U.S. entity requires to guarantee that the business representative has current contact info for the non-U.S. entity.

Non-U.S. entities must likewise make sure to ensure that the USPTO has the most current contact info for the non-U.S. entity, in case service does go through the USPTO director. In the Ninth Circuit case, the USPTO sent by mail the court files to the non-U.S. entity at the address the entity had actually consisted of in its hallmark application. If that address runs out date, the non-U.S. entity might never ever get the court documents even if the USPTO sends them immediately.


Area 1051( e) is a crucial arrangement of the Lanham Act that, as just recently analyzed by the 2nd and Ninth Circuit Courts of Appeal, can have a possibly considerable influence on both non-U.S. entities signing up hallmarks in the United States and Lanham Act complainants looking for to take legal action against those entities. Hallmark registrants and litigants must pay very close attention to both the statute and choices translating that statute.

[1] 53 F. fourth 1136 (9th Cir. 2022).

[2] Id. at 1139-40.

[3] Id. at 1141.

[4] Id.

[5] Id. at 1143.

[6] Id.

[7] Id. at 1143-44.

[8] Case No. 20-cv-9663-GW, ECF No. 57 (C.D. Cal. Nov. 28, 2022).

[9] 2023 U.S. Dist. LEXIS 62759 (S.D.N.Y. Apr. 10, 2023).

[10] Id. at * 18-19.

[11] Fed. R. Civ. P. 4( f).

[12] 2023 U.S. Dist. LEXIS 62759, at * 22.

[13] Id. at * 22-24.

[14] 37 C.F.R. § 2.11( a).

Like this post? Please share to your friends:
Leave a Reply

;-) :| :x :twisted: :smile: :shock: :sad: :roll: :razz: :oops: :o :mrgreen: :lol: :idea: :grin: :evil: :cry: :cool: :arrow: :???: :?: :!: