FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

SAN ANTONIO WINERY, INC., 

Plaintiff-Appellant, 

 v. 

JIAXING MICAROSE TRADE CO., LTD., 

Defendant-Appellee.

No. 21-56036 

D.C. No. 

2:20-cv-09663-GW-KS 

OPINION

Appeal from the United States District Court

for the Central District of California

George H. Wu, District Judge, Presiding

Argued and Submitted August 3, 2022

Pasadena, California

Before: Eugene E. Siler,* Consuelo M. Callahan, and Holly A. Thomas, Circuit 

Judges.

Opinion by Judge H.A. Thomas

* The Honorable Eugene E. Siler, United States Circuit Judge for the 

U.S. Court of Appeals for the Sixth Circuit, sitting by designation.

FILED

NOV 14 2022

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS
SUMMARY**

Lanham Act

The panel vacated the district court’s order denying San Antonio Winery, Inc.’s 

motion for a default judgment against Jiaxing Micarose Trade Co., Ltd., in an action 

in which San Antonio asserts claims under the Lanham Act and related state-law 

claims.

Section 1051(e) of the Lanham Act allows trademark applicants domiciled in 

foreign countries to designate “a person resident in the United States on whom may 

be served notices or process in proceedings affecting the mark.” If the foreigndomiciled applicant declines to designate someone, or the designated person cannot 

be found, the statute provides that the applicant may be served through the Director 

of the U.S. Patent and Trademark Office (PTO).

San Antonio filed a proof of service in which it stated that it had served Jiaxing 

through the Director of the PTO. When Jiaxing did not appear to defend itself in the 

action, the district court clerk granted San Antonio’s request for entry of default, 

after which San Antonio filed the motion for default judgment in which it asked the 

district court to issue a permanent injunction. Noting the lack of circuit-level 

precedent on whether the procedures of Section 1051(e) provide a means of serving 

defendants in court proceedings, the district court denied the motion on the ground 

that Jiaxing had not been properly served.

The panel held that the service procedures of Section 1051(e) apply not only in 

administrative proceedings before the PTO, but also in court proceedings. Because 

the district court erred in concluding otherwise, the panel vacated the district court’s 

order and remanded for further proceedings.

** This summary constitutes no part of the opinion of the court. It has 

been prepared by court staff for the convenience of the reader.
COUNSEL

Jeffrey G. Sheldon (argued) and Katherine M. Bond, Cislo & Thomas LLP, Los 

Angeles, California, for Plaintiff-Appellant.

Jiaxing Micarose Trade Co. Ltd., Xiuzhou District, Jiaxing City, Zhejiang, China,

pro se Defendant-Appellee.

Amanda Lee Mundell (argued) and Daniel Tenny, Appellate Staff Attorneys, Civil 

Division; Tracy Wilkison, United States Attorney; Brian M. Boynton, Acting 

Assistant Attorney General; United States Department of Justice, Washington, D.C.; 

Thomas L. Casagrande, Associate Solicitor; Christina J. Hieber, Senior Counsel for 

Trademark Policy and Litigation; Farheen Y. Rasheed, Acting Solicitor; United 

States Patent and Trademark Office; Alexandria, Virginia; for Amicus Curiae United 

States of America.
2 

H.A. THOMAS, Circuit Judge:

The Lanham Act allows trademark applicants domiciled in foreign countries

to designate “a person resident in the United States on whom may be served 

notices or process in proceedings affecting the mark.” 15 U.S.C. § 1051(e). If the

foreign-domiciled applicant declines to designate someone, or the designated 

person cannot be found, the statute provides that the applicant may be served 

through the Director of the U.S. Patent and Trademark Office (PTO). Id.

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.

I.

A.

San Antonio Winery (San Antonio) is a historic Los Angeles winery, best 

known for its Stella Rosa brand of wines. The winery has long been owned and 

operated by members of the Riboli family. San Antonio has registered the 

trademarks RIBOLI and RIBOLI FAMILY, which it has used since at least 1998 

to market its wines and other products. 
3 

Jiaxing Micarose Trade Co., Ltd. (Jiaxing) is a Chinese company that has 

sold products using the Riboli name. In 2018, Jiaxing registered the mark RIBOLI 

for use in connection with articles of clothing and shoes. In 2020, Jiaxing applied 

to register the mark RIBOLI for use with additional types of products, including

wine pourers, bottle stands, containers, cocktail shakers, dishware, and various 

other kitchen and household items. Jiaxing’s registrations reflect considerable 

overlap with products sold by San Antonio at its wineries and restaurants.

After learning that Jiaxing was using the Riboli name to sell products in the 

United States, including through Amazon.com, San Antonio filed suit against the 

company in the Central District of California. The complaint asserted claims

against Jiaxing under the Lanham Act for trademark infringement, trademark 

dilution, and false designation of origin, as well as related state-law claims. Among 

other forms of relief, San Antonio sought an injunction prohibiting Jiaxing from 

using the mark RIBOLI in connection with its products, an order cancelling 

Jiaxing’s 2018 registration of the RIBOLI mark, and an order either directing 

Jiaxing to abandon its 2020 application to register RIBOLI for additional uses or 

prohibiting the PTO from granting the application.

1

1 After San Antonio filed suit, Jiaxing abandoned its 2020 application to register 

the mark RIBOLI for use with kitchen and household goods. In 2021, the 

Trademark Trial and Appeal Board cancelled Jiaxing’s original 2018 registration 

after San Antonio filed a petition to cancel the registration, and Jiaxing failed to 
4 

San Antonio’s efforts to serve Jiaxing with process gave rise to this appeal. 

B.

Because Jiaxing is a Chinese company, San Antonio’s service of process 

was governed by the rules for serving parties abroad. One source of such rules is 

Federal Rule of Civil Procedure 4(f).2 Under Rule 4(f), a defendant may be served

abroad by, among other means, “any internationally agreed means of service that is 

reasonably calculated to give notice,” including the procedures of the Hague 

Convention on the Service Abroad of Judicial and Extrajudicial Documents (the 

Hague Service Convention or Convention).

The Hague Service Convention is the principal international agreement 

governing service of process. Both the United States and China are parties to the 

Convention. Pursuant to Rule 4(f), San Antonio could therefore have attempted to 

serve Jiaxing through the procedures set forth in the Convention. In general terms, 

this would have required San Antonio to deliver the summons and complaint to a

“Central Authority” designated by the Chinese government, which would then 

appear to oppose the petition. Jiaxing thus no longer holds a registration for the 

RIBOLI mark.

2 Although Rule 4(f), by its terms, applies only to service on individuals, Rule 

4(h)(2) provides that corporations domiciled abroad may be served through the 

procedures of Rule 4(f), with one exception not relevant here.
5 

have responsibility for effecting service on Jiaxing. See generally Brockmeyer v. 

May, 383 F.3d 798, 801 (9th Cir. 2004).

Concerned with the amount of time it might take to effect service under the

Hague Service Convention, San Antonio instead sought to serve Jiaxing under a 

provision of the Lanham Act applicable to foreign domiciliaries who apply to

register a trademark. This provision states that if a trademark applicant “is not 

domiciled in the United States the applicant may designate, by a document filed in 

the [PTO], 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.” 15 U.S.C. 

§ 1051(e). If such a designation is made, then “notices or process may be served 

upon the person so designated by leaving with that person or mailing to that person 

a copy [of the notices or process] at the address specified in the last designation so 

filed.” Id. If, however, “the person so designated cannot be found at the address 

given in the last designation, or if the registrant does not designate . . . a person 

. . . on whom may be served notices or process in proceedings affecting the mark, 

such notices or process may be served on the Director [of the PTO].” Id.

Seeking to avail itself of the service procedures of Section 1051(e), San 

Antonio first inquired whether a U.S.-based attorney who had represented Jiaxing 

in connection with its trademark applications would accept service on Jiaxing’s 

behalf. When that attorney did not respond, San Antonio served the summons, 
6 

complaint, and accompanying documents on the Director of the PTO. Upon 

receiving the documents, the PTO sent Jiaxing a letter confirming that “[p]ursuant 

to 15 U.S.C. § 1051(e), service of process in the . . . lawsuit was effectuated” 

through service on the Director. The PTO sent Jiaxing copies of the documents and 

also placed them in Jiaxing’s trademark registration files.

C.

San Antonio filed a proof of service in which it stated that it had served 

Jiaxing through the Director of the PTO. When Jiaxing did not appear to defend 

itself in the action, the district court clerk granted San Antonio’s request for entry 

of default. After default was entered, San Antonio filed a motion for default 

judgment in which it asked the district court to issue a permanent injunction 

prohibiting Jiaxing from using the RIBOLI and RIBOLI FAMILY marks.

The district court denied San Antonio’s motion for default judgment on the 

ground that Jiaxing had not been properly served. Noting the lack of circuit-level 

precedent on whether the procedures of Section 1051(e) provide a means of 

serving defendants in court proceedings, the district court followed the decision in 

E. & J. Gallo Winery v. Cantine Rallo, S.p.A., 430 F. Supp. 2d 1064 (E.D. Cal. 
7 

2005), which held that the procedures of Section 1051(e) apply only in 

administrative proceedings before the PTO.3

San Antonio asked the district court to certify its order for immediate appeal 

under 28 U.S.C. Section 1292(b). The district court granted the request, and we

agreed to accept the interlocutory appeal.

II.

Whether Section 1051(e) provides a means of serving defendants in court 

proceedings is a question of law that we review de novo. See United States v. 

Pacheco, 977 F.3d 764, 767 (9th Cir. 2020). In answering this question, we follow

well-established rules of statutory construction. “We begin with the statutory text.” 

3 The district court acknowledged that district courts across the country were split 

on this issue. See San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., No. 

CV-20-9663, 2021 WL 6752252, at *3–4 (C.D. Cal. Apr. 5, 2021); compare Night 

Owl SP, LLC v. Dongguan Auhua Elecs. Co., No. 2:19-cv-109, 2019 WL 5084162, 

at *2–3 (M.D. Fla. Mar. 15, 2019) (holding that Section 1051(e) provides a means 

of service in court proceedings); Haemoscope Corp. v. Pentapharm AG, No. 02 C 

4261, 2002 WL 31749195, at *3 (N.D. Ill. Dec. 9, 2002) (same); V & S Vin & 

Spirit Aktiebolag v. Cracovia Brands, Inc., 212 F. Supp. 2d 852, 854–56 (N.D. Ill. 

2002) (same), with Vantone Grp., LLC v. Yangpu NGT Indus. Co., No. 13CV7639, 

2016 WL 3926449, at *2–3 (S.D.N.Y. July 15, 2016) (holding that Section 1051(e) 

applies only in administrative proceedings before the PTO); LA Gem & Jewelry 

Design, Inc. v. Gold Star Jewellery PVT Ltd., No. CV 14-4807, 2014 WL 

10401936, at *3 (C.D. Cal. Aug. 11, 2014) (same); Gallo, 430 F. Supp. 2d at

1072–83 (same); Sunshine Distrib., Inc. v. Sports Auth. Mich., Inc., 157 F. Supp. 

2d 779, 787 (E.D. Mich. 2001) (same); Outboard Marine Corp. v. Chantiers 

Beneteau, 687 F. Supp. 366, 368–69 (N.D. Ill. 1988) (same).
8 

United States v. Lopez, 998 F.3d 431, 435 (9th Cir. 2021). If the meaning of the 

text is plain, then that is also where we end. Id. 

Here, we interpret Section 1051(e), which governs service of notices or 

process in “proceedings affecting [a trademark].” 15 U.S.C. § 1051(e). Because 

court proceedings are “proceedings,” and because those proceedings can “affect” a 

trademark, we conclude that Section 1051(e) provides a means of serving process 

in court. 

A.

We turn first to the word “proceedings.” The phrase “proceedings affecting 

the mark” has been part of the Lanham Act since the statute’s enactment in 1946.

Pub. L. No. 79-489, § 1(d), 60 Stat. 427, 428 (1946). 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. See United States v. Carter, 421 F.3d 909, 911 (9th Cir. 2005) (“[W]e 

follow the common practice of consulting dictionary definitions to clarify 

. . . ordinary meaning[].”). The 1933 edition of Black’s Law Dictionary defined the 

word “proceeding” as, “[i]n a general sense, the form and manner of conducting 

juridical business before a court or judicial officer.” Proceeding, Black’s Law 

Dictionary (3d ed. 1933). Similarly, the 1936 edition of Webster’s New 
9 

International Dictionary of the English Language defined a proceeding as, among 

other things, “[t]he course of procedure in an action at law” and “[a]ny step or act 

taken in conducting litigation.” Proceeding, Webster’s New International 

Dictionary of the English Language (2d ed. 1936). Nothing in the statute suggests

that Congress, in enacting Section 1051(e), intended to depart from the wellunderstood meaning of this word.

It is equally clear that court proceedings can “affect” a trademark. From the

time of its enactment, the Lanham Act has granted courts authority to affect 

trademarks in various ways, including the power to “determine the right to [a 

trademark] registration, order the cancelation of registrations, . . . [and] restore 

canceled registrations.” Pub. L. No. 79-489, § 37, 60 Stat. at 440; see also 15 

U.S.C. § 1119 (version in effect today). This authority has been exercised. Our 

case law is replete with examples of civil cases affecting trademarks. See, e.g.,

CreAgri, Inc. v. USANA Health Scis., Inc., 474 F.3d 626, 634 (9th Cir. 2007)

(affirming the district court’s cancellation of a trademark); Talking Rain Beverage 

Co. v. S. Beach Beverage Co., 349 F.3d 601, 603 (9th Cir. 2003) (same); see also 5 

McCarthy on Trademarks & Unfair Competition § 30:109 (5th ed. Sept. 2022 

update).

Actions like the one filed by San Antonio—which sought, among other 

things, to cancel the RIBOLI mark registered by Jiaxing in 2018—comfortably fall 
10 

within the plain and ordinary meaning of the phrase “proceedings affecting the

mark.” These actions are “proceedings,” and their aim is to “affect” a trademark.

Our analysis could end here. 

But if we needed another clue to the meaning of Section 1051(e), the 

statute’s reference to the service of “notices or process” provides it. “Process” 

connotes court proceedings. It refers to “the means of compelling [a] defendant in 

an action to appear in court.” Process, Black’s Law Dictionary (3d ed. 1933); see 

also Process, Black’s Law Dictionary (11th ed. 2019) (“A summons or writ, esp. 

to appear or respond in court.”); 72 C.J.S. Process § 1 (2022 update) (“[I]n a 

narrow sense of the term ‘process’ is limited to judicial writs in an action, or at 

least to writs or writings issued from or out of a court . . . .”).

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. See, 

e.g., 37 C.F.R. § 2.113(a). Were we to construe Section 1051(e) to apply solely to

administrative proceedings, the word “process” would be superfluous.

4 Only 

4 As would be the provision permitting service upon the Director of the PTO: in a 

situation where a foreign trademark applicant did not designate a U.S. person to 

receive service, or that person could not be found, the agency would be required to 

serve a notice upon itself. See, e.g., 37 C.F.R. § 2.113(a) (providing that 

administrative proceedings are initiated with notices issued by the agency).
11 

“notices” would ever be served. We decline to adopt this interpretation. See City of 

Chicago v. Fulton, 141 S. Ct. 585, 591 (2021) (“The canon against surplusage is 

strongest when an interpretation would render superfluous another part of the same 

statutory scheme.”).

B.

The district courts that have held that Section 1051(e) applies only in 

administrative proceedings have relied largely on reasoning that goes beyond the 

statutory text. We have considered these points but are not persuaded by them.5

Some courts have found it significant that the language now codified at 

Section 1051(e) was enacted as part of Section 1 of the original Lanham Act, 

which set forth the process for filing an application for a registered trademark. See 

Gallo, 430 F. Supp. 2d at 1074–75. They reasoned that the placement of the 

service provision alongside general trademark application requirements—rather 

than with other provisions of the Lanham Act that govern court proceedings—

5

Jiaxing did not enter an appearance in this matter and therefore has not provided 

briefing in opposition to San Antonio’s position. Our review of the novel issue 

presented in this case has been aided in significant part by the district courts that 

have previously considered it, and, in particular, by the Eastern District of 

California’s decision in Gallo, 430 F. Supp. 2d 1064. Although we part ways with 

the Gallo court’s conclusion that Section 1051(e) applies only in administrative 

proceedings, we are grateful for its thorough analysis, which enabled us to fully

consider both sides of this issue. In a similar vein, we are thankful for the helpful 

briefing and argument we received from the United States as amicus curiae.
12 

“suggests that Congress may have intended the appointment [of the designated 

person] to cover only those proceedings concerning the registration of the mark.”

Id. (quoting V & S Vin, 212 F. Supp. 2d at 854).

We think there is a simpler explanation. Unlike the version of the statute in 

effect today, which is written in a permissive fashion, the original Lanham Act 

required foreign trademark applicants to designate a U.S. person to receive service. 

See Pub. L. No. 79-489, § 1(d), 60 Stat. at 428 (providing that a foreign trademark 

applicant “shall designate . . . the name and address of some person resident in the 

United States on whom may be served notices or process in proceedings affecting 

the mark”). It thus makes sense that the designation requirement would originally

have been included with other requirements the applicant had to satisfy at the time 

the application was filed.

Other courts have looked to legislative history. See Outboard Marine, 687 F. 

Supp. at 368. This history, however, is murky at best. The text of what ultimately 

became Section 1051(e) evolved over the course of more than two decades

between 1924, when it was first proposed, and 1946, when the Lanham Act was 

finally enacted. See Gallo, 430 F. Supp. 2d at 1076–81 (comprehensively 

surveying the drafting history of Section 1051(e)). One early proposal provided 

that the designated representative could be served with notices or process in 

“proceedings . . . brought under the provisions of this Act or under other laws of 
13 

the United States”—language which suggests court proceedings. S. 2679, 68th 

Cong. § 8 (1924). Some subsequent proposals, however, restricted the applicability 

of the designation provision to “proceedings affecting the registration of the trademark,” which perhaps gestures more toward administrative proceedings. E.g., H.R. 

6248, 69th Cong. § 8 (1925) (emphasis added).

The important point for our purposes is that neither of these proposals 

became law. And there is little in the drafting history concerning the text that 

Congress finally enacted. See Gallo, 430 F. Supp. 2d at 1078–79. What we do 

know is that the language Congress chose is clear. Nothing in the legislative 

history convinces us that we should depart from its plain meaning. See Schroeder 

v. United States, 793 F.3d 1080, 1086 (9th Cir. 2015).

Finally, the Gallo court found it notable that other, unrelated statutes contain 

service provisions that more clearly state that they apply in both court and 

administrative proceedings. See Gallo, 430 F. Supp. 2d at 1082–83. As one 

example, the Federal Food, Drug, and Cosmetic Act requires “every manufacturer 

offering an electronic product for importation into the United States to designate in 

writing an agent upon whom service of all administrative and judicial processes, 

notices, orders, decisions, and requirements may be made.” 21 U.S.C. § 360mm(d).

The Gallo court reasoned that because Congress explicitly referenced court 

proceedings in the service provisions of other statutes, its failure to do so in
14 

Section 1051(e) of the Lanham Act is an indication that Section 1051(e) does not 

apply in court. See Gallo, 430 F. Supp. 2d at 1083.

We disagree. Although the use of different language in separate provisions 

of the same statute can indicate that the provisions have different meanings, this 

presumption “can hardly be said to apply across the whole corpus juris.”

6 Antonin 

Scalia & Bryan A. Garner, Reading Law, 170–72 (2012). The statutes identified by 

the Gallo court have no connection to the Lanham Act—they have nothing to do 

with trademarks, or even intellectual property writ large. These statutes are

therefore of little value in determining the meaning of Section 1051(e).7 See United 

States v. King, 478 F.2d 494, 504 (9th Cir. 1973) (“The fact that [Congress] used 

6 Our entire body of law.

7

If we required reference to another statute to interpret Section 1051(e), the Patent 

Act would likely be the most relevant. The Patent Act contains a service provision 

similar to that set forth in Section 1051(e): it permits a “patentee not residing in the 

United States” to designate a U.S. person “on whom may be served process or 

notice of proceedings affecting the patent or rights thereunder.” 35 U.S.C. § 293. 

There is no doubt that the phrase “proceedings affecting the patent or rights 

thereunder” in the Patent Act includes court proceedings—the Patent Act’s service 

provision expressly references proceedings in federal district court. See id.

(providing that if the patentee declines to designate a person to receive service, 

“the Eastern District of Virginia shall have jurisdiction and summons shall be 

served by publication or otherwise as the court directs”). That Section 1051(e) 

contains similar language—referring to “proceedings affecting the mark”—

supports our conclusion that it, too, applies in court proceedings.
15 

different language to achieve the same result in a totally unrelated statute is 

irrelevant.”). 

In sum, we see no reason to look beyond the statutory text. Because the

ordinary meaning of “proceedings affecting the mark” includes proceedings in 

court, we conclude that the procedures of Section 1051(e) may be used to serve 

process in such proceedings.

C.

Our decision today is not in conflict with the Hague Service Convention.8

The Convention’s procedures apply only when the method of service at issue 

“require[s] the transmittal of documents abroad.” Volkswagenwerk 

Aktiengesellschaft v. Schlunk, 486 U.S. 694, 700 (1988); see also id. at 704. When 

the law of the forum state permits service through means that do not require the 

international transmittal of documents, the Convention is not triggered. Id. at 706–

08 (holding that a state law permitting a foreign corporation to be served

domestically through its U.S. subsidiary did not implicate the Hague Service 

Convention).

8 Our decision is also not in conflict with Rule 4, which expressly contemplates 

that Congress might create alternative service procedures like those contained in 

Section 1051(e). See Fed. R. Civ. P. 4(h) (setting forth rules for serving a 

corporation that apply “[u]nless federal law provides otherwise”).
16 

Service under Section 1051(e) occurs domestically and thus falls outside the 

scope of the Convention. The statute presents trademark applicants with a choice: 

either designate a U.S. person to be served with notices or process, or submit to 

service through the Director of the PTO. In each case, service occurs within the 

United States, without the international transmittal of documents.

It is of no moment that the recipient of the served documents—the 

designated U.S. person or the Director of the PTO—might ultimately send them to 

a defendant domiciled in a country that is a signatory to the Convention. As the

Supreme Court explained in rejecting a similar argument, once service on the U.S. 

recipient is valid and complete, “[the] inquiry ends and the Convention has no 

further implications.”9Id. at 707; accord Night Owl, 2019 WL 5084162, at *3 

(holding that service on the Director of the PTO under Section 1051(e) does not 

implicate the Hague Service Convention).

9 Of course, under the Due Process Clause, foreign defendants remain entitled to 

“notice reasonably calculated, under all the circumstances, to apprise [them] of the 

pendency of the action and afford them an opportunity to present their objections.” 

Schlunk, 486 U.S. at 705 (quoting Mullane v. Cent. Hanover Bank & Tr., 339 U.S. 

306, 314 (1950)). We do not foreclose the possibility that a defendant may be able 

to establish, under the circumstances of a given case, that service under 

Section 1051(e) failed to provide constitutionally adequate notice. Here, however, 

the district court did not rely on a lack of notice to Jiaxing as a reason for denying 

default judgment. We therefore do not address this point further.
17 

III.

We hold today that the service procedures of Section 1051(e) of the Lanham 

Act apply in court proceedings. The district court erred in concluding otherwise.

Because the district court denied default judgment on this threshold ground, it did 

not consider the merits of San Antonio’s default judgment motion. We therefore

vacate the district court’s order and remand for it to consider the remaining issues 

in the first instance.

VACATED; REMANDED.10

10 Costs on appeal are awarded to San Antonio.