There is a little-known provision of the Lanham Act (the US Trademark Act) that packs a potentially big punch. 15 USC §1051(e) provides that if a non-U.S. entity registers for a trademark in the United States without designating a United States resident for service of “notices or process in proceedings affecting the mark” (a “Domestic Representative”), or if the Domestic Representative cannot be found, then service, including of court pleadings commencing and related to a lawsuit, can be accomplished on the non-U.S. entity by serving the Director of the United States Patent and Trademark Office (USPTO).The practical effect of this provision is that certain non-U.S. entities who apply for trademarks in the United States could find themselves a party to U.S. litigation if the non-U.S. entity is never directly served with court papers.Recent Decisions Apply Section 1051(e) to Court ProceedingsTwo recent cases suggest that Section 1051(e) may not be little-known much longer. In San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., the plaintiff sued a foreign trademark applicant and served the court paper

By way of background, the Lanham Act provides for two different types of United States trademark applications. It allows an applicant to file a use-based trademark application pursuant to 15 U.S.C. § 1051(a)(1) and it allows an applicant to file an intent-to-use ("ITU") trademark application pursuant to 15 U.S.C. § 1051(b)(1). A use-based application can be filed if the applicant is using the mark in United States commerce, and an ITU application may be filed if the applicant presently has a genuine intent to use the mark in United States commerce in the future.

Under 15 U.S.C. § 1051(e), foreign trademark owners “may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark.”1 This differs from a power of attorney as a domestic representative does not automatically have authority to act on the trademark owner’s behalf. Rather, the purpose of the domestic representative is to bring foreign trademark applicants and registrants under the jurisdiction of the United States.Notably, designation of a domestic representative under Section 1051(e) is not required, but optional. Accordingly, foreign trademark owners should be careful to weigh the pros and cons before simply designating a representative with the USPTO. One obvious downside is that designation of a domestic representative will make service of process much easier in the event the rights holder is sued.In this case, Defendant TNSG Health Co., Ltd.’s (“TNSG

Suppose that you are a foreign applicant who either files a trademark application, opposition proceeding, or cancellation proceeding with the USPTO. Can this act of filing subject the foreign applicant to service of process or specific or personal jurisdiction in court proceedings in the U.S.? The answer is YES! as to service of process if you are in the Ninth Circuit (Alaska, Arizona, California, Hawaii, Idaho, Montana, Nevada, Oregon, Utah, and Washington) and it depends on the jurisdiction of where the court proceeding is commenced.Under Section 1051(e) of the Lanham Act, 15 U.S.C. §1051(e), a trademark applicant may designate a resident for service of process and notices as follows:If the applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served on the Director.When a foreign applicant

ng overseas trademark infringement is often a challenge due to the time, expense, and difficulty with serving foreign companies with U.S. litigation. A recent decision by the Ninth Circuit Court of Appeals may have made that process much easier and far less expensive in certain situations.Last month, in a case of first impression, the Ninth Circuit Court of Appeals held that a lawsuit affecting a trademark may be served on a foreign defendant if the defendant has filed an application for registration of a conflicting trademark with the United States Patent and Trademark Office (USPTO). In San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., a Los Angeles-based winery and owner of RIBOLI and RIBOLI FAMILY trademarks sued a Chinese-based company that had applied for federal registration of RIBOLI covering wine pourers and bottle stands. Looking for a faster and more cost-effective route for service other than the Hague Convention, the plaintiff winery served the Chinese company under 15 U.S.C. § 1051(e), which allows a U.S. resident to serve a foreign applicant’s USPTO designated agent or the USPTO director in “proceedings” affecting a mark.District courts had previously been split on whether § 1051(e) was limited to USPTO proceedings or could be used for civil lawsuits. The Ninth Circuit resolved the issue by finding that the statute’s use of “proceedings” “affecting” a mark was broad enough to encompass litigation that would impact trademark rights. The Ninth Circuit also held that service through § 1051(e) does not violate the Hague Convention because that Convention governs service among foreign countries and § 1051(e) allows for service wholly within the United States vis-a-vis the USPTO.The immediate takeaway? The Ninth Circuit’s decision could be a strong tool for domestic companies to use against foreign-based applicants of confusingly similar trademarks. This could be particularly effective for the increasing number of trademark “trolls” applying for registrations to sell co

This may be more difficult than it seems – unlike trademark registrations, which are relatively straightforward to assign, intent-to-use trademark applications must be assigned “to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing,” according to TMEP § 501.01(a): In an application under §1(b) of the Trademark Act, 15 U.S.C. §1051(b), the applicant cannot assign the application before the applicant files an allegation of use (i.e., either an amendment to allege use under 15 U.S.C. §1051(c) or a statement of use under 15 U.S.C. §1051(d), except to a successor to the applicant’s business, or portion of the business to which the mark pertains, if that business is ongoing and existing. Section 10 of the Trademark Act, 15 U.S.C. §1060; 37 C.F.R. §3.

[14] 15 U.S.C. 1127.[15] 15 U.S.C. § 1051(a).[16] 15 U.S.C. 1051(b).

ainst a Chinese company, Jiaxing. San Antonio has been selling wine under the marks RIBOLI and RIBOLI FAMILY since at least 1998. Jiaxing was able to obtain a U.S. trademark registration for the mark RIBOLI used with clothing and shoes in 2018, and the company later filed new applications to register the mark RIBOLI for use with wine pourers, cocktail shakers, and other household items. San Antonio filed a lawsuit seeking to bar Jiaxing from selling goods bearing the RIBOLI mark and cancellation of its trademark registration and pending application. Because Jiaxing is located in China, San Antonio would typically be required to go through an expensive and time-consuming process to serve Jiaxing. That process involves translating the documents, delivering them to a “Central Authority” designated by China, and waiting for that Central Authority to deliver the documents to Jiaxing and confirm receipt.Seeking to avoid this process, San Antonio served its complaint upon Jiaxing pursuant to 15 U.S.C. § 1051(e), a provision of the trademark statute which, in “proceedings” that affect the trademark, allows for service of a foreign trademark owner via delivery of documents to the director of the United States Patent and Trademark Office (USPTO). District courts have been split on whether this provision applies only to proceedings before the USPTO or covers civil actions commenced in federal district courts.Decision.The Ninth Circuit held that Jiaxing was properly served. It further held that the language of § 1051(e) is broad enough to encompass civil actions. The court further ruled that permitting foreign trademark owners to be served via the USPTO does not conflict with the U.S.’s obligations under international treaties concerning service of process. As a result of the ruling, a foreign trademark owner can now be properly served notice of a trademark infringement lawsuit via service on the USPTO. This was the first appellate decision on this issue.Key Takeaways.The ruling provides a faster

The USPTO examiner refused registration of the mark as not having been used in commerce for the services. The applicant appealed the refusal to the TTAB.The TTAB initially referred in Suuberg to the Section 1(a) requirement of the Trademark Act, 15 U.S.C. Section 1051(a), that an applicant must use a mark in commerce “on or in connection with all the goods and services” listed in an application as of the filing date, Id. at p. 2, and referred to the definition of service mark use in Section 45 of the Act, 15 U.S.C. Section 1127, as “when [1] it is used or displayed in the sale or advertising of services and [2] the services are rendered in commerce or the services are rendered in more than one State or in the United States and a foreign country and the person rendering the services is engaged in commerce in connection with the services.”

Any practitioner, applicant, registrant, or other person associated with the filing or fee who was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.What deadlines are applicable?The deadline for any of the following filings may be extended:Response to PTO action or notice of appeal (15 U.S.C. §1062(b) and 37 C.F.R. §§2.62(a) and 2.141(a));Statement of use or request for extension of time to file a statement of use (15 U.S.C. §1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a));Notice of opposition or request for extension of time to file a notice of opposition (15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a));Priority filing basis (15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i));Priority filing basis (15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c));Transformation of an extension of protection to the U.S. into a U.S. application (15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a));Affidavit of use or excusable non-use (15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);Affidavit of use or excusable non-use (15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b)); andRenewal application (15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182).If a filing before the Trademark Trial and Appeal Board (the “TTAB”) is not covered by the list above, the affected person may file a request or motion with the TTAB.What is the new deadline?The PTO will extend any of the above deadlines that fall between March 27, 2020 and April 30, 2020 for thirty (30)