On December 27, 2007, the United States Court of Appeals for the Fourth Circuit issued a decision that has important practical ramifications for non-United States business entities that apply for registration of trademarks or service marks in the United 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.

In Rosenruist-Gestao E Servicos LDA v. Virgin Enterprises Ltd., No. 06-1588 (4th Cir. Dec. 27, 2007), the Fourth Circuit considered whether a non-United States corporation, having filed an “intent-to-use” application for registration of a trademark in the United States, could be compelled to appear in the United States and give testimony in an administrative “opposition” proceeding commenced by a prior registrant, despite the applicant’s not having any existing and ongoing business in the United States.

In a 2-1 decision, the Fourth Circuit held that service of a subpoena on a non-United States trademark applicant’s domestic representative was sufficient to require the non-resident applicant to appear and give testimony with respect to the merits of its United States application. The majority rejected arguments that trial testimony from a non-United States trademark applicant was available only through international letters rogatory. Fried Frank represented the prevailing defendant/opposer in the Rosenruist case.

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.