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You're Going to Serve Someone, But Will You Have Jurisdiction?
When is a proceeding not a proceeding, or more precisely, when is a proceeding affecting a mark not a proceeding affecting a mark? No mere word game, the answer can have a profound impact on foreign trademark owners who routinely (and perhaps unthinkingly) appoint their U.S. attorneys as agents to accept service in proceedings affecting their marks. The answer ' or at least an answer ' recently was provided by the U.S. District Court for the Eastern District of California in E&J Gallo Winery v. Cantine Rallo, S.p.A., slip op. 1:04 cv 5153 (OWW) (Aug. 17, 2005), where just such a profound impact faced an Italian winery with a long history whose American counsel accepted service of a summons and complaint in an infringement suit, but made only fleeting efforts to alert his foreign client. The court vacated a default judgment that threatened to terminate a 50-year business in this country because the domestic attorney designated by the foreign trademark applicant under 15 U.S.C. '1051(e) to receive service in “proceedings” affecting the mark was deemed not authorized to receive service in a “litigation” affecting the mark. (The defendant's failure to answer was also deemed excusable neglect. Following the default, the author is now representing the defendant.)
Prior to its recent amendment in 2002, 15 U.S.C. '1051(e) of the Lanham Act required foreign trademark applicants to designate a domestic representative authorized to accept service in “proceedings affecting the mark.” The provision, which in 2002 was made voluntary (no longer mandatory), is not unlike the section of the Patent Act, 35 U.S.C. '293, that provides for the filing in the Patent and Trademark Office by non-resident patentees of “a written designation stating the name and address of a person residing in the United States on whom may be served process or notice of proceedings affecting the patent or rights thereunder.” E&J Gallo Winery parted company with the few recent decisions to assess the meaning of the statute in holding that such an appointment ' whatever its effect in administrative proceedings ' does not authorize the designated agent to accept service in litigations affecting the mark. The court thus vacated the default judgment, finding that service on an attorney who had appointed himself domestic representative did not make him agent for service of process for all purposes.
What 15 U.S.C. '1051(e) specifically required ' and after 2002 simply permits ' is that an applicant “not domiciled in the United States” who is seeking to register a trademark must designate in writing “the name and address of some person resident in the United States on whom may be served notices or process in proceedings affecting the mark.” The courts are divided whether a representative so-appointed is authorized to accept service of process only in administrative proceedings affecting the mark, or in all manner or legal proceedings. The first two district courts to have assessed the statute concluded that it did not authorize service in district court proceedings. Outboard Marine Corp. v Chantiers Bentau, 687 F. Supp. 366 (N.D. Ill. 1988); Sunshine Sports Distrib., Inc. v. Sports Authority, Inc., 157 F. Supp. 2d 779 (E.D. Mich. 2001). More recent cases have taken a contrary view. V&S Vin & Sprit Aktiebolag v. Cracovia Brands, Inc., 212 F. Supp. 2d 852 (N.D. Ill. 2002); Haemoscope Corp. v. Pentapharm AG, 2002 WL 31749195 (N.D. Ill. Dec. 9, 2002). Accord, Havana Club Holding, S.A. v. Galleon, S.A., 974 F. Supp. 302 (S.D.N.Y. 1997) (dicta).
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