Ninth Circuit Broadens Means to Serve Foreign Defendants in Lanham Act Cases
Friday, December 2, 2022

Service of process is required when commencing a civil lawsuit because it informs and notifies a person or entity that it has been named in the lawsuit. If service of process does not take place or is shown to be deficient, the case cannot proceed, because the court will not have personal jurisdiction to enter a judgment against that party. Usually, service of process in the United States is merely a formality if the defendant’s residence or place of business is known, and service can be accomplished by a process server or other individual who personally delivers the documents filed to initiate the lawsuit. However, service of process on a foreign defendant outside the United States, even if their location is known, can be an expensive, time consuming, and arduous undertaking.

The United States Court of Appeals for the Ninth Circuit recently issued a ruling that may alleviate the burden of serving process on foreign defendants in connection with lawsuits involving Lanham Act claims. In San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., a California winery filed suit against a Chinese company asserting claims for trademark infringement, trademark dilution, and false designation of origin under the Lanham Act. Plaintiff San Antonio Winery is owned and operated by the Riboli family, and since 1998, it has used the trademark RIBOLI in connection with its wine product. Defendant Jiaxing, a Chinese company that sells products using the Riboli name, in 2018 acquired a U.S. trademark registration for RIBOLI that covers clothing and shoes.

When San Antonio Winery learned Jiaxing was offering products with the RIBOLI marks in the United States through e-commerce websites like, it filed suit in the Central District of California alleging Lanham Act and related state law claims. The relief sought includes: (i) an injunction prohibiting Jiaxing from using the RIBOLI mark in connection with its products; (ii) cancellation of Jiaxing’s 2018 federal registration covering the RIBOLI mark; and (iii) an order terminating Jiaxing’s 2020 application to register RIBOLI for additional uses. But before the District Court could make any of these determinations, San Antonio Winery had to serve Jiaxing, a foreign entity located in China, with process.

Ordinarily, litigants serve foreign defendants pursuant to the procedures set forth in the Hague Convention, the principal international agreement governing service of process. Here, although both China and the United States are parties to the Hague Convention, San Antonio Winery was concerned with the amount of time it could take to effect service, so instead, it served Jiaxing under a provision of the Lanham Act directed to foreign entities that apply to register a trademark at the USPTO.

Section 1(e) of the Lanham Act states that a foreign trademark applicant may designate a U.S. resident to receive service of notices or process in proceedings affecting the trademark. 15 U.S.C. § 1051(e). If the foreign trademark applicant does not designate a U.S. resident, or if the designated resident cannot be located, notices or process intended for the foreign trademark applicant may be served on the Director of the USPTO. When Jiaxing’s designated U.S. resident did not respond to San Antonio Winery’s request to accept service, San Antonio winery relied on Section 1(e) and served process on the Director of the USPTO, who in turn transmitted copies of the documents to Jiaxing.

When Jiaxing failed to appear in the case, the District Court denied San Antonio Winery’s motion for default judgment on the basis that Jiaxing was not properly served. The District Court explained that San Antonio’s service of process pursuant to Section 1(e) of the Lanham Act was ineffective because the provision applies only to administrative proceedings before the USPTO, not to federal court proceedings.

San Antonio Winery appealed the District Court’s decision, and the Ninth Circuit ruled that Section 1(e) of the Lanham Act does apply to both administrative and court proceedings. In other words, service of process on the Director of the USPTO is sufficient for the District Court to confer jurisdiction over the foreign entity defendant.

While the Ninth Circuit decision is not binding on federal courts nationwide, its ruling and rationale in San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co. could convince other courts to follow suit. Permitting plaintiffs in the United States to serve process on foreign defendants via the USPTO, instead of adhering to the strict requirements of the Hague Convention or other international agreement, could result in swifter, more cost-effective resolutions of lawsuits against foreign defendants.


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