Australian applicants for US trademarks may be subpoenaed
Australian applicants for United States trademarks should note a recent decision in the US: Rosenruist-Gestao E Servicos LDA, v. Virgin Enterprises Ltd., No. 06-1588 (4th Cir. Dec. 27, 2007) which held that a foreign company that has no US employees, locations, or business activities must produce a designee to testify at a deposition in the Eastern District of Virginia just because it filed a trademark application with the USPTO, which is located there.
As a result, a litigant in a US trademark dispute can compel an Australian witness (for example) to travel to the USA to give in-person deposition testimony "for use in any contested case" in the USPTO, such as an opposition proceeding to a trademark application.
A Memorandum by Fried Frank, who acted for the successful party in the Rosenruist case, summarises the position. It states:
"Non-U.S. business entities that file applications for United States registration of trademarks or service marks have long been required to “designate” a person “resident in the United States on whom may be served notices or process in proceedings affecting the mark.” If no such designation is made, the Director of Patents and Trademarks, located in Alexandria, Virginia, U.S.A., is deemed by default to be the applicant’s designee for purposes of service of process." . . .
Australian companies making direct filings usually appoint the attorney handling the application as the designee for notices. For applications made by non-US entities under the Madrid system, a domestic US representative or “designee” is not required until an application is provisionally refused by the USPTO.
The Memorandum goes on to say:
"In practical terms, the Rosenruist decision means that non-United States business entities should review their United States trademark registration portfolios to determine whether a suitable choice of United States domestic representative has been made. Such designations have been optional since 2002, and if no designation has been made, non-United States persons may unexpectedly find themselves subject to jurisdiction in the Eastern District of Virginia where the Director of Patents and Trademarks is located."
"Within the United States there are twelve regional circuits having jurisdiction over proceedings such as the one involved in Rosenruist. A choice of domestic representative can determine where, geographically within the United States, a non-United States trademark applicant can be required to defend its application. For example, a client headquartered in Asia may find it more convenient to choose a designee located in Hawaii or on the West Coast of the United States; a client headquartered in Europe may prefer a designee located on the East Coast."
Although Circuit Judge Wilkinson issued a strongly worded dissenting opinion in which he decried the national standard created by the decision, and John Welsh on the TTAB Blog thinks the decision “begs for an en banc hearing”, it is a decision that all foreign applicants and owners of US trade marks -- including Australian companies and the firms that act for them -- should bear it in mind when selecting a US trademark (search carefully, now) and also their US agent, attorney or "designate” to act as their US address for notices.
Hat tip to Peter Schultz.
