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 the
complaint on or before August 2, 2002.
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