The opinion of the court was delivered by: Kennelly, District Judge.
MEMORANDUM OPINION AND ORDER
Plaintiff V & S Vin & Sprit Aktiebolag, d/b/a The Absolut
Company ("V & S"), filed a complaint against defendants Cracovia
Brands, Inc. ("Cracovia") and Przedsiebiorstwo Polmos Bialystok,
S.A. ("PPB") alleging, among other things, trademark
infringement based on PPB's application for federal registration
of its ABSOLWENT trademark. V & S served its complaint and
summons on Cracovia in December 2001 but did not serve PPB,
which is a Polish corporation. In the following months, V & S
engaged in settlement negotiations with both defendants through
Cracovia's counsel, and it ultimately reached a settlement
agreement with Cracovia on April 25, 2002. That same day, having
failed to reach an agreement with PPB, V & S timely served its
complaint and summons on the law firm of Abelman, Frayne and
Schwab, which is PPB's appointed agent for service of process in
connection with PPB's trademark application before the United
States Patent and Trademark Office ("PTO"). 15 U.S.C. § 1051(e).
A. Service Pursuant to the Hague Convention
Contrary to PPB's assertion, the Hague Convention does not
constitute the exclusive means for effecting service on a
foreign national where internal law provides for an alternative
mode of service. Volkswagenwerk Aktiengesellschaft v. Schlunk,
486 U.S. 694, 108 S.Ct. 2104, 100 L.Ed.2d 722 (1988). In
Volkswagenwerk, the plaintiff served a complaint on a German
corporation through its wholly-owned U.S. subsidiary. The German
company moved to quash service, arguing that service of a
foreign national can be accomplished only through the Hague
Convention. The Supreme Court found that because the Illinois
long-arm statute would recognize service on a foreign company's
wholly-owned U.S. subsidiary, service pursuant to the Hague
Convention was not required. Id. at 706-07, 108 S.Ct. 2104.
"Where service on a domestic agent is valid and complete under
both state law and the Due Process Clause, our inquiry ends and
the Convention has no further implications." Id. at 707, 108
S.Ct. 2104. Thus, V & S was not required to serve PPB in
accordance with the Hague Convention as long as it properly
served PPB's domestic agent.
B. Service Upon a § 1051(e) Agent
PPB argues that it does not have a domestic agent qualified to
receive service of process for the instant lawsuit
notwithstanding its appointment of an agent pursuant to
15 U.S.C. § 1051(e). Section 1051(e) requires a foreign corporation
applying for a U.S. trademark to name "some person resident in
the United States on whom may be served notices or process in
proceedings affecting the mark." PPB argues that "proceedings
affecting the mark" include only those proceedings before the
PTO and not the instant lawsuit pending before this Court.
In interpreting the meaning of the statute, we begin with the
language of the text itself, which is the most reliable
indicator of congressional intent. Bass v. Stolper,
Koritzinsky, Brewster & Neider, S.C., 111 F.3d 1322, 1324-25
(7th Cir. 1997). The statute does not define the term
"proceeding," but that term is commonly understood to include
lawsuits. And there can be no question that this case is a
proceeding "affecting the mark" because it concerns whether
PPB's mark infringes V & S's mark. However, the fact that the
provision for designating a resident for service of process
appears in the section of the trademark law regarding
registrations suggests that Congress may have intended the
appointment to cover only those proceedings concerning the
registration of the mark. This, in turn, gives rise to an
ambiguity in the meaning of the statute, so we look to the
legislative history for guidance. Newsom v. Friedman,
76 F.3d 813, 816 (7th Cir. 1996) ("[a] court may examine legislative
history when it encounters language in a statute that is
undeniably ambiguous, but it should be the final option").
"Legislative history is problematic under the best
circumstances," Board of Trade of the City of Chicago v.
Securities and Exchange Commission, 187 F.3d 713, 720 (7th Cir.
1999), and here the legislative history regarding the phrase
"proceedings affecting the mark" is equivocal. In Outboard
Marine Corp. v. Chantiers Beneteau, 687 F. Supp. 366 (N.D.Ill.
1988), the court relied upon testimony given by a U.S. Trademark
Association official, Arthur W. Barber, in hearings held in 1925
before the Congressional Joint
Committees on Patents to determine the scope of the term
"proceeding." The plaintiff in Outboard Marine filed suit
alleging, among other things, trademark infringement and unfair
competition. Foreign defendant Beneteau S.A. had designated an
agent to receive service of process pursuant to § 1051(e), and
the plaintiff served that agent with the lawsuit. Beneteau
sought to quash service of process on the grounds that the
federal lawsuit was not a proceeding affecting the mark as
contemplated by § 1051(e); that is, it was not pending before
the PTO. 687 F. Supp. at 368.
In his testimony before the Congressional Joint Committees,
Mr. Barber stated that the then-pending version of the bill that
ultimately became § 1051(e) provided for service of process "in
any action or proceeding affecting his trademark brought under
the provisions of this act, or under the provisions of any other
laws of the United States." Id.; Hearings on S. 2679 Before
the Joint Committees on Patents ("Hearings on S. 2679"), 68th
Cong., 2d Sess. 133 (1925). Mr. Barber suggested that the
service of process provision "should be limited to the process
in a proceeding affecting the registration; it should not be
extended so as to enable a party to get jurisdiction of a
foreign registrant in an action not confined — or a proceeding
not confined to his registration." Id. The court noted that §
1051(e), as ultimately enacted, did not mention the term
"action," and he concluded that "[i]t is therefore reasonable to
infer that this term was elided from the section in order to
limit the service provision to proceedings in the PTO." Id.
This Court does not find the decision in Outboard Marine
particularly persuasive, for several reasons. First, this Court
does not agree that the term "proceeding," standing alone, is
sufficiently ambiguous to require an analysis of its legislative
history. In addition, the court's construction of the term
"proceedings" is not supported by any direct evidence from the
1925 Congressional hearings but, rather, is based on a series of
inferences regarding what Congress ultimately intended. These
inferences are drawn from the testimony of a witness before a
committee, which is not a particularly meaningful aspect of
legislative history. See Kelly v. Robinson, 479 U.S. 36, 51 n.
13, 107 S.Ct. 353, 93 L.Ed.2d 216 (1986) (declining to accord
any significance to statements which were not made by a member
of Congress and which did not appear in the House or Senate
Reports). Finally, V & S argues that Congress did not actually
make a decision to omit the word "action" from the service of
process provision; in fact, that word never appeared in any
version of the bill. See S. 2679; H.R. 6248; H.R. 13486; H.R.
6683 (attached to Plaintiffs Response as Exs. E-H). Moreover,
the legislative history indicates that Congress did not intend
for the § 1051(e) agent to receive service of process only in
proceedings affecting the registration of the mark
notwithstanding the provision's placement in the part of the
trademark statute that concerns registration. Early versions of
the bill contained that exact language, but as enacted, the
provision covers all "proceedings affecting the mark." See S.
2679; H.R. 6248; H.R. 13486; H.R. 6683. And in any event, PPB
would not prevail even were we to construe § 1051(e) as applying
only to proceedings and actions concerning registrations: this
is such a proceeding, as V & S seeks an order directing PPB to
abandon its trademark application. Pl. Mem., p. 11.
In sum, there is nothing in the text of § 1051(e) itself or in
the legislative history which suggests that "proceedings
affecting the mark" are limited to proceedings before the PTO.
Foreign companies seeking to benefit from the protections of the
U.S. trademark laws must designate an agent
to receive service of process, and this extends to civil
proceedings. See, e.g., Havana Club Holding, S.A. v. Galleon
S.A., 974 F. Supp. 302, 311-12 (S.D.N.Y. 1997) (foreign company
was "subject to service of process by service on its United
States representative" designated pursuant to § 1051(e)).
Compare U.S. Industries, Inc. v. Maclaren, 1976 WL 21010, 191
U.S.P.Q. 498, 501 (D.C. 1976) (considering patent law service of
process provision analogous to § 1051(e), and finding that
foreign patent owners make themselves amenable to process in the
U.S. by designating an agent for service of process pursuant to
that provision). But see Sunshine Distribution, Inc. v. Sports
Authority Michigan, Inc., 157 F. Supp.2d 779, 787 (E.D.Mich.
2001) ("§ 1051 deals solely with proceedings before the Patent
and Trademark Office, not with service for civil proceedings" as
evidenced by its placement in the principal register).
Accordingly, PPB's designated agent pursuant to § 1051(e) was
authorized to receive service of process on behalf of PPB for
purposes of this lawsuit.
For the reasons stated above, PPB's motion to quash service
[docket item 17] is denied. PPB is directed to answer ...