San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co.

Under 15 U.S.C. § 1051(e), a trademark applicant may “either designate a U.S. person to be served with notice of process or submit to service through the director of the Patent Trademark Office.”

San Antonio Winery (San Antonio), a Los Angeles business, filed a trademark infringement action against Jiaxing Micarose Trade Co. (Jiaxing), a Chinese company, when one of its trademarks was used to sell various products through e-commerce.  San Antonio appealed the district court’s denial of a motion for default judgment due to Jiaxing being improperly served.  On appeal, San Antonio argued service of process was proper and confirmed when they served the director of the Patent Trademark Office and received a letter stating that “[p]ursuant 15 U.S.C. § 1051(e), service of process in the lawsuit was effectuated.”  In response, the Court noted the issue was of first impression and considered if 15 U.S.C. § 1051(e) provided a way to serve domiciled foreign companies in trademark proceedings.  Under 15 U.S.C. § 1051(e), a trademark applicant may “either designate a U.S. person to be served with notice of process or submit to service through the director of the Patent Trademark Office.”  The Court reasoned that, because San Antonio served the director of the Patent Trademark Office, service to Jiaxing was proper and thus the district court needed to consider San Antonio’s trademark infringement claims.  Vacated and remanded.