On November 14 2022, the United States Court of Appeals for the Ninth Circuit ruled in &�Բ�����;(“Jiaxing”) that foreign parties to a trademark infringement complaint can be served by trademark owners within the U.S. because of . Statutory interpretation of s.1051(e) in this case provides a new way to serve foreign defendants via the Director of the United States Patent & Trademark Office (“USPTO”).  Specifically, Jiaxing provides that a foreign defendant may be served if they have filed an application for a conflicting trademark at the USPTO. This mitigates the traditional temporal, financial, and logistical challenges associated with preventing trademark infringement by foreign companies.

The Los Angeles-based &�Բ�����;(“San Antonio”) is known for their Stella Rosa brand that they have produced under the trademarks  since 1998. They , a Chinese company, for registering the mark “RIBOLI” for tands, containers, cocktail shakers, dishware, and other kitchen products. Jiaxing registered “RIBOLI” in 2018 for clothing and shoes and in 2020 for kitchen products. Accordingly, San Antonio filed a complaint for trademark infringement, trademark dilution, and false designation of origin. They are seeking an injunction against Jiaxing from using the “RIBOLI” mark, and an order to prohibit Jiaxing’s registrations.

The current route to service of foreign defendants is the Hague Convention, but San Antonio sought a faster and inexpensive way to serve Jiaxing. They did so under  which allows U.S. residents to serve the foreign defendant’s O agent or the USPTO director in “proceedings” that affect the mark. The provision states that if the trademark applicant is not in the U.S., they can designate a person in the U.S. who may be served on their behalf regarding the marks; and if that person is not found then the USPTO director may be served. 

Jurisprudence conflicts as to whether s.1051(e) is limited to USPTO proceedings or includes civil lawsuits. As such, the  that held the provision only applies to administrative proceedings. The Ninth Circuit reversed this by interpreting that the words “proceedings affecting a trademark” are broad enough to include civil litigation. Since , the provision must encompass serving process for disputes in district court. The Court held that the wording only requires that it’s plain and ordinary meaning be taken. Moreover, since the Lanham Act grants courts the power to affect trademarks in other ways, s.1051(e)’s use of the word “process” must apply to court proceedings. Further, the word , and thus it would have been  if it were not meant to also include civil proceedings.

Serving foreign defendants through s.1051(e)  as it governs service amongst foreign countries whereas s.1051(e) governs service within the U.S without international transmittal of documents; which means it .

Foreign infringers are increasingly popular and  on marketplaces that verify IP ownership, such as Amazon. The decision is significant, in that it may act as a deterrent — it warns foreign companies that an application at the USPTO is all that is needed to be served a U.S. lawsuit. The Court’s adoption of the plain and ordinary meaning is akin to the starting point of statutory interpretation in this context in Canada —  as adopted in Rizzo and Bell ExpressVu. This points to an expectation of similar results in Canadian courts, wherein a purposive analysis would be adopted to assess the ability of domestic trademark owners to serve foreign infringers.

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Many jurisdictions have provisions that prohibit the registration of offensive marks in accordance with moral and public policy concerns. For example, section 9(1)(j) of Trade-marks Act prohibits the registration of “any scandalous, obscene or immoral word or device.”�� and Australia[1] also enforce similar clauses. Therefore, while the decision in Matal has direct implications for US trademark law, it also raises a host of questions for trademark law around the world.

The amicus briefs filed in Matal present illuminating insights on how the Court may have taken a step too far. The ��submitted by the American Bar Association (ABA) is a logical place to begin this analysis, given the foundational issue that was the focus of the submission. The ABA sought to correct the Court of Appeals for the Federal Circuit on the distinction between trademark validity and trademark registrability. In addition to the Court confusing validity and registrability, a finding that section 2(a) of the Lanham Act violates the First Amendment would lead to uncertainty about the consequences of a finding of “unregistrability”. The ABA correctly pointed out that the Court of Appeals in Matal seems to have treated trademark validity and trademark registrability interchangeably, which may have had a compound effect on the final decision. The court did, however, state that the unregistrability on the Principal Register does not prevent a trademark from being used legitimately in commerce. However, the Court of Appeals seems to have also erroneously implied that a determination of unregistrability makes an otherwise valid mark ineligible for protection under the Lanham Act, which, according to the ABA, is incorrect. This means that Simon Tam’s proposed mark THE SLANTS may have been ineligible for registration prior to the ruling in this case, a finding of unregistrability is not determinative of whether or not a mark can be used in commerce

In the event of an infringement or unfair competition claims under the previous law, Tam could have protected his mark through the common law. Furthermore, the Court of Appeals stated that “[w]ithout federal registration, a trademark user cannot stop importation of goods bearing the mark …” While this was not directly relevant to Tam’s situation, it certainly has broad implications for cases to come. Regardless, it is inaccurate. Owners of unregistered trademarks have other federal causes of action at their disposal. Indeed, the ABA gave the example of the possibility of “filing a complaint pursuant to Section 337 of the Tariff Act before the International Trade Commission (“ITC”) to stop the importation of goods bearing the mark that violate those common-law rights.”[2] Moreover, valid yet unregistered marks may also enjoy protection against cybersquatting, according to the Anti-Cybersquatting Consumer Protection Act.[3] In addition, state law causes of action—such as likelihood-of-confusion-based causes of action for infringement, unfair competition, and deceptive trade practices—present other avenues for the owners of unregistered trademarks to enforce their intellectual property rights.

An interesting in support of the USPTO is that any decision the government makes in circumstances such as those giving rise to the dispute in Matal is not necessarily neutral because speech will be inevitably supressed. The brief states that “...a trademark registration is a government-issued document that makes it easier for its owner to suppress the speech of others...” because it is a right to exclude, contrary to the opinion of the Tenth Circuit in . This means that, in trademark law, the government is necessarily interfering with ���dz���DzԱ�’s speech; whether it be the trademark owner’s in the case of a refusal, or competitors’ in the case of a trademark registration. This, according to the professors behind the brief, would “wreak havoc on trademark law”, but can be remedied by a decision in favour of the USPTO. This is because trademark law is content-based rather than viewpoint-based. Prior to this case, anyone could be caught under the disparagement clause, regardless of viewpoint. Disparagement is judged based on the content of the mark. Therefore, the law professors present a valid point when they state that “[u]nder the appropriate analytic framework, the bars of Section 2 reflect acceptable judgments about which symbols should receive legal protection as source identifiers, not penalties imposed on an actor doing business independently of the government.” In essence, the Court of Appeals erred in viewing the Lanham Act’s regulatory scheme as being presumptively unconstitutional because a trademark registration denial is seen as a ban on free speech.

The implications for trademark law are not the only concern with respect to the expansion of free speech when it comes to offensive marks. The of Native American Organizations agrees with the perspective of the law professors above in the sense that “[t]rademarks can function as instruments of speech-suppression precisely because they regulate commercial speech.” In this way, the government plays an important role in the operation of commerce, which facilitates the filtration of disparaging and racist marks. When the government exercised this role with respect to offensive marks prior to Matal, it did not strip the owner of the use of a trademark as a whole, but simply withheld the benefits that registration carries. Therefore, from this perspective, this case confirms the “longstanding use of derogatory Native American imagery”, which also alludes to the attention captured by the Washington Redskins case.

As such, concerns regarding freedom of speech became real in light of Matal, which may be a reason to think that the ruling in this case pushed the boundaries of free speech too far, despite the advantages that it carried for trademark owners. This, in conjunction with the wide range of international uncertainty that Matal has caused, is a factor that makes the decision slightly unsettling and casts doubt as to whether the step taken by the U.S. Supreme Court swung the balance too far in favour of free speech. The full range of these impacts, however, has yet to be seen given the recent issuance of this decision.

Saba Samanian is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

[1] Vicki Huang, “Comparative Analysis of US and Australian Trade Mark Applications for THE SLANTS” (2017), Eur IP Rev at 6[Huang].

[2] Tariff Act, 19 USC § 1337 (2012). See In re Certain Digital Multimeters, & Prods With Multimeter Functionality, Inv No 337-TA-588, USITC Pub 4210, 2010 ITC LEXIS 2867.

[3] Consumer Protection Act, 15 USC § 1125(d).

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The Game So Far

The story begins with ������ Harjo the TTAB decided to cancel six of the Washington team’s trademarks, determining ��that the marks “may disparage Native Americans and may bring them into contempt or disrepute.” However, as noted by attorney and professor , the decision was overturned on appeal in 2003. Fast-forward to 2014 and the play has been run again. On June 18th, the TTAB issued the Blackhorse . Once again, six trademark registrations issued between 1967 and 1990 for the Washington football team’s marks containing ��the term “redskins” were cancelled “because they were disparaging to Native Americans at the respective times they were registered, in violation of Section 2(a) of the Trademark Act of 1946, .”

Section 2(a) of the provides that a trademark can be refused registration if it consists of "matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” The principle point of conflict for the plaintiffs was the racist nature of the term “redskin.”��According to news reports, ��released the following statement: “The team’s name is racist and derogatory. I’ve said it before and I will say it again - if people wouldn’t dare call a Native American a “redskin” because they know it is offensive, how can an NFL football team have this name?”

“And Just Like Last Time, Today’s Ruling Will Have No Effect…”

On the other side of the field Bob Raskopt, the team’s attorney, issued a ��saying: “We’ve seen this story before. And just like last time, today’s ruling will have no effect at all on the team’s ownership of and right to use the Redskins name and logo.” So why does Raskopt seem so confident? Well firstly, the asserts that the evidence provided by the plaintiffs failed to show “that a substantial composite of Native Americans found the term “Redskins” to be disparaging in connection with [the football team’s] services during the relevant time frame.” The issue is that the evidence in question was almost identical to what was submitted in the overturned Harjo case, evidence that was found to be insufficient to uphold the cancellation order. Precedent would thus lead one to believe that the football team is likely to see ��the same victorious end result as Harjo when they appeal.

If, however, Raskopt is unsuccessful on appeal, the team will lose the legal benefits of federal trademark registration. As described by the USPTO’s official���� on the matter, lost benefits would include no longer having legal presumptions of ownership or rights in the marks, and no longer being able to stop the importation of infringing or counterfeit goods. According to ,��since the football team would have far less protections from other businesses exploiting their name (ex. in merchandise or apparel), in theory millions of dollars could be lost.

However, the team will not see money fly out of the bank just yet - they still have exclusive use of the logo and existing contracts for the production of “Redskins” products will not be nullified by the cancellation. Most importantly, the TTAB force the team to change its name or marks. If the team does decide to continue using the “Redskins” moniker, ruling and public opinion aside, the state and common laws of where the team does business may provide trademark protections. An attempt to enforce exclusivity could also be made using Section 43 of the , which allows for civil action against those who use a word, symbol, name etc. in a confusing way that may connect to and subsequently damage another entity. Thus, remedies still exist for the football team if the registrations are lost after the appeal.

But is a Moral Victory Enough?

As it stands the football team does not need to change its name, may still be protected under state and common laws, will not see any immediate economic losses, and could seek exclusivity under Section 43 of the Lanham Act. So, after the whistle is blown, did the plaintiffs win anything more than a thumbs-up from the TTAB?��While a moral victory does not have the same legal repercussions as may be desired by the plaintiffs, it does represent a growing trend in public opinion against derogatory names and symbols in sports that could force even the most ��mind to change. And this public opinion has been voiced fairly loudly. News sources have reported that��fifty U.S. senators ��to NFL commissioner Roger Goodell, asking him to recommend a name change for the team, that newspapers like the San Francisco Chronicle have they will stop printing the name “Redskins” when referring to the football team and that even ��has even weighed in on the issue, saying he would consider changing the team’s name if he knew it offended a large group of people.

It is not yet known how the negative publicity triggered by this case may impact the value of the team’s trademarks, registered or not. Diehard fans may not be swayed to stop buying merchandise, although blogger Jeremy Phillips made a good point in suggesting that the value of a brand lies in the worth given to it by the consumers of the goods and services for which the mark is used. A mark that has been publically denounced as disparaging to Native Americans may not be so valuable to future buyers of the team’s merchandise.

In Conclusion

The play is paused as we wait for the appeal to be heard, but even if the plaintiffs leave the field with the win - nothing but public pressure really has the ability to have the word “redskins” benched for good. It remains to be seen if this will occur, and even though I respect the loyalty many feel towards this historic brand, I know I will be in the stands cheering for a Blackhorse touchdown.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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The Issue at Hand

According to the , in 2008 WREAL registered its FyreTV® and FyreTV.com® trade-marks for its on-demand pornography streaming service. Its service is accessible through the FyreTV® website, set-top box, and a few third-parties. On April 2, 2014, Amazon launched its set-top box named .��It is described as “a tiny box you connect to your HDTV” with video streaming capabilities and other features like child-friendly profiles and voice activated controls. WREAL contends that Amazon’s Fire TV performs “a substantially similar, if not identical, function” to the FyreTV® set-top box. This “function” is identified as access to a library of streaming videos that can be accessed by a consumer at home. WREAL argues that Amazon’s use of the Fire TV name has, and will, continue to cause serious and irreparable harm to WREAL’s established business.

Trade-mark Infringement and the U.S. Law

Under 15 USC § 1114 of the ,��trade-mark infringement occurs when “any reproduction, counterfeit, copy, or colorable imitation of a registered mark” is used in the sale, distribution or advertising of a good or service, or in connection with a use that is likely to “cause confusion, or cause mistake, or to deceive.” To determine if a registered mark has been infringed, American courts look to the “likelihood of confusion” test. The test considers eight factors, recognized as the “Polaroid Factors” as established in .

Will FyreTV Sizzle or Succeed?

��According to WREAL’s , it seems as if the company’s primary points of contention with Amazon are the similarities between “FyreTV” and “Fire TV”, and the documented confusion amongst consumers regarding the two names – similarity and confusion being two important “.” Such factors are aggravated by the wide reach of Amazon’s marketing capabilities compared to the smaller market-influence of WREAL. As such, confusion has allegedly led many consumers to assume that “Fire TV” belongs to Amazon, leading to the possibility of WREAL’s products being viewed as lesser-valued imitations.

FyreTV® and Fire TV are very similar language-wise. Despite the spelling difference, both are pronounced in the same way. ��The possibility for confusion is perpetuated by the fact that FyreTV® owns “FireTV.com.” As a result, if FireTV.com is typed into an Internet browser (Warning: DO NOT try this at work), it redirects to FyreTV.com®. WREAL included in its complaint various examples of consumers identifying the FireTV.com redirect and being confused as to whether WREAL and Amazon had merged. CNBC also ran an article on the day of Amazon’s Fire TV launch entitled “.” With so much immediate discussion by media and consumers alike, it is arguably difficult for Amazon to deny that confusion was created by the launch of its set-top box with the Fire TV name.

WREAL further contends that Amazon knew that FyreTV® was a registered mark. WREAL submits that had Amazon followed its past practice of registering domain names for major products, as it did for the Kindle, it would have likely attempted to register FireTV.com. Consequently, Amazon would have visited the domain name and seen the redirect. They would also have searched the name on the (TESS), finding that when “FireTV” is searched FyreTV® and FyreTV.com® appear – a result I was able to duplicate myself.

How May Amazon Respond?

Amazon may reply that there is a significant difference between the two products, as FyreTV® strictly streams adult entertainment. However, WREAL does state in its complaint that they have no intention of limiting the FyreTV® brand to adult content. Furthermore, CNBC that when Fire TV was launched WREAL did not mention its device on its website, and that silence from the corporation had many believing that WREAL had folded. We can possibly speculate that "FyreTV” was not considered to be an active brand, or specifically an available-for-purchase video streaming device, and thus not a problem in Amazon’s eyes.

Conclusion

So who will emerge from the flames victorious? In my opinion, the evidence does seem stacked against Amazon. The clear confusion demonstrated by various consumers and media as soon as Fire TV was launched, along with the apparent lack of due diligence by Amazon in searching "Fire TV" both on the Internet and TESS, leads to my conclusion that Amazon has not responded to the complaint because it is trying to figure out how to put out this fire. We must ask, however, how Amazon’s size and power may influence the outcome of this case. Will Amazon push for a settlement, which the admittedly smaller and less-influential WREAL will be drawn to? What does that mean for cases between larger companies infringing on the registered marks of smaller organizations? Can the value of a smaller group’s mark really be protected; can they really win the battle? Or, does the publicity that cases like this bring benefit��smaller companies��as a way to ensure that grand corporations like Amazon follow the rules? Maybe these questions will be answered as this case progresses, but either way I know I’ll be tuned into this channel to see which “fire” is put out.

Jaimie Franks is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.

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At in Vancouver BC, Michael Hallatt resells marked-up and unmodified Trader Joe’s products purchased at retail price in Washington State Trader Joe’s locations. Currently, Trader Joe’s only operates in the United States and hold several registered trade-marks on . The mark is used to identify both the company itself, and its branded goods. Trader Joe’s also currently has two ��for retail grocery services in Canada.

In the��, Trader Joe’s alleged that Hallatt prominently displayed their mark in an attempt to pass as an authorized dealer of their products. Interestingly, in the wake of the trade-mark infringement claim made by Trader Joe’s, Hallat’s store now goes by _IRATE JOE’S with the tagline “Unauthorized, Unaffiliated and Unafraid”. On October 2^nd, a Seattle Washington court����the claim for lack of subject-matter jurisdiction, but allowed Trader Joe's to amend the claim under state laws.

Under Rule of the United States��Federal Rules of Civil Procedure,��a court can ��only if it is immaterial and appears to be made solely for the purpose of obtaining jurisdiction, or the claim is wholly immaterial or frivolous. In making this determination, the court unless the party mounting a jurisdictional challenge asserts facial or factual attacks on the claims. The court held that Hallatt failed to make a factual or facial attack but that nevertheless there was no basis for extra-territorial application of the ��in this case.

The Lanham Act confers broad power on the court to exert jurisdiction. To make this determination, courts must apply the .�� First, courts ask whether the actions complained of effect American foreign commerce. Second, whether this effect presents a cognizable injury under the Lanham Act. Third, the court must conduct a seven-factor analysis as to whether assertion of extra territorial authority is justifiable. To satisfy the first two parts of the test, a plaintiff must show only that there has been “some” effect on foreign commerce when construing all facts in their most favourable interpretation. In this case, all the alleged trade-mark infringement took place in Canada and there was no proof of economic harm in the United States.

Trader Joe’s failed to show an effect on American commerce that would warrant the application of the Lanham Act. ��The degree of conflict with foreign law or policy weighed against establishing jurisdiction because Trader Joe’s has two trade-mark applications in Canada and the infringement is wholly foreign. Hallatt’s permanent resident alien status and his frequent purchase trips to the US would likely be sufficient for establishing jurisdiction through the nationality factor. Third, Hallatt’s presence is not strong enough in the US to apply jurisdiction. Fourth, as wholly foreign acts, there was not a significant effect in the United States. (Even if there was some diversion of business or impact on the reputation of Trader Joe's, this factor still weighed against applying jurisdiction.) Fifth, Pirate Joe’s�� clearly purchased Trader Joe’s products at retail value to resell and it was unclear whether this was intended to harm Trader Joe's since it did not actually lose sales. As a result, it was was not necessarily foreseeable under the sixth factor that the actions would cause harm. Finally, the actions were clearly more significant in Canada than in the United States, since that is where the products were sold after being lawfully purchased in the US.��The court found that on the whole the seven factors supported not extending jurisdiction.

Until Trader Joe’s actually enters into the Canadian market they may have a difficult time preventing Hallat from selling their products at Pirate Joe's. To be successful in a claim in a Canadian court, Trader Joe’s would have to show actual use of the mark in Canada. Trader Joe's may have an argument that if their mark is displayed on a website accessed by Canadians it should be considered “used”��, though this has been a controversial point of law in recent times. (It is important to note that a mark displayed on a website is not�� “used” in Canada unless Canadians can����associated with the mark.) Currently, Trader Joe’s does not allow Canadians to purchase goods through their site and therefore may not pass the threshold for use in Canada. As time goes on, even with trade-mark applications, if the mark is not used ��in Canada the registration could be expunged. Moreover, with Pirate Joe's tagline "Unauthorized, Unaffiliated and Unafraid", I think it would be difficult to indicate consumer confusion in the face of such clear indications about the lack of association with Trader Joe's.

Despite the favourable ruling, Hallatt may still have difficulty stocking his shelves. Several Trader Joe's locations now , and Hallatt has already had to resort to sending others in to shop for him. ��That said, for the time being, fans of Pirate Joe’s can continue to sing “Yo ho ho and a bottle of all-natural apple juice!”

Allison McLean is an IPilogue Editor and a JD Candidate at Osgoode Hall Law School.��

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