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Ninth Circuit:
San Antonio Winery Inventively Served Company in China
By a MetNews Staff Writer
The historic San Antonio Winery successfully served a Chinese company that infringed on its trademarks, the Ninth U.S. Circuit Court of Appeals declared yesterday, rejecting the defendant’s contention that the approach used to avoid the more time consuming procedure under the Hague Convention is available only in administrative proceedings in patent and trademark cases.
Rather than serving authorities in China, pursuant to the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents, the winery—located about two miles northeast of downtown Los Angeles—served the director of the Patent and Trademark Office (“PTO”), invoking a provision that relates to foreign companies registering trademarks here.
The Chinese company it sued is Jiaxing Micarose Trade Co., Ltd. which, in 2018, registered the mark “RIBOLI” for use in labeling shoes and clothing. That had no effect on the winery, but its ire was raised when, two years later, Jiaxing sought to register that mark in connection with household items including wine pourers, bottle stands, and cocktail shakers.
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This photo shows the entrance of the San Antonio Winery. |
Family Name
The winery sells such items, in addition to producing wines, including Stella Rosa, and running restaurants. And “Riboli” is the name of the family that owns and operates the business with “RIBOLI” and “RIBOLI FAMILY” being its registered trademarks.
Stefano Giuseppe Riboli, prior to World War II, went to work for his uncle, Santo Cambianica, who had founded the winery on Lamar Street in 1917, and upon Cambianica’s death in 1956, Riboli became owner of the business. He died in 2019 at age 97, and his three children and several grandchildren carry on the business.
San Antonio Winery brought suit in the U.S. District Court for the Central District of California. In effecting service on Jiaxing, it employed a procedure set forth in 15 U.S.C. § 1051(e), a portion of the Lanham Act. It says:
“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.”
But if the registrant fails to designate such a person, it provides, “notices or process may be served on the Director.”
Wu’s Order
A clerk entered a default when Jiaxing did not appear, but Judge George H. Wu of the Central District of California declined to enter a default judgment, perceiving defective service.
Circuit Judge Holly A. Thomas wrote the opinion reversing Wu’s order, saying:
“This case presents a question of first impression in the circuit courts of appeals: Do the procedures of Section 1051(e) provide a means of serving defendants in court proceedings affecting a trademark? Or do they apply only in administrative proceedings before the PTO? We conclude that Section 1051(e) applies in both court and administrative proceedings. We therefore vacate the district court’s decision to the contrary and remand for further proceedings.”
Thomas’s Opinion
Sec. 1051(e), she noted, refers to “proceedings affecting the mark.” Thomas wrote:
“The word ‘proceedings’ requires no complex interpretation: its plain and ordinary meaning includes proceedings in court. Indeed, as dictionary definitions from the time of the Lanham Act’s passage make clear, court proceedings are the prototypical form of legal proceeding.”
She went on to say:
“It is equally clear that court proceedings can ‘affect’ a trademark….Our case law is replete with examples of civil cases affecting trademarks.”
Thomas added:
“The use of the word ‘process’ in Section 1051(e) is particularly significant because there is no process served in administrative proceedings before the PTO. Proceedings before the PTO are initiated with ‘notices’ issued by the agency.”
She said that contrary decisions of district courts are not persuasive.
The opinion does not direct that a default judgment be entered, however. It orders a remand for the District Court “to consider the remaining issues in the first instance.”
The case is San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., 21-56036.
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