The Vantone Group Ltd. Liab. Co. v. Yangpu NGT Indus. Co., No. 13-CV-7639 (S.D.N.Y. July 15, 2016) [click for opinion]
Plaintiff sued Defendant, a Chinese company, and several affiliated entities alleging violations of the Lanham Act and New York law. Plaintiff sought an agreement from Defendant's counsel to waive or accept service on Plaintiff's behalf, but Defendant's counsel declined. Plaintiff then attempted to serve Defendant pursuant to the terms of the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents (the "Hague Convention"), using a Chinese address listed on the trademark applications at issue in the case, but the service package was returned as undeliverable.
Plaintiff proceeded to file a certificate of service with the court contending that Defendant had been properly served under 15 U.S.C. § 1051(e) (the "Lanham Act") through service on the General Clerk of the U.S. Patent and Trademark Office ("USPTO"). Defendant filed its first motion to dismiss for insufficient and untimely service, arguing that Defendant's counsel would be the appropriate designee for service under Section 1051(e). Plaintiff then sought to serve Defendant through its counsel, and Defendant filed a second motion to dismiss on the grounds that Section 1051(e) does not govern service of process in judicial actions. In both motions, Defendant contended that Plaintiff failed to timely effectuate service within the then-applicable 120-day service window provided by Federal Rule of Civil Procedure 4(m).
The court granted the motions and dismissed Plaintiff's complaint without prejudice for failure to properly serve Defendant. The court agreed with Defendant that service pursuant to Section 1051(e) of the Lanham Act was not sufficient to confer jurisdiction, holding that the provision only governs service in administrative proceedings before the USPTO. The court further held that, while the time limit in Rule 4(m) applied to Plaintiff's domestic service attempts, the plain language of the rule exempts service in a foreign country from that deadline.
While Plaintiff's case had been pending for over two years, the court held that good cause warranted a 45-day extension of time to allow Plaintiff to either renew its attempts at service under the Hague Convention or file a motion to authorize substituted service. The court reasoned that Plaintiff had been sufficiently diligent in its attempts to serve Defendant, and Defendant would not be unduly prejudiced by an extension of time for service because it was aware of the litigation and its affiliates had been actively defending the case.