Case of the Day: Sobek Therapeutics v. SVADS Holdings

The case of the day is Sobek Therapeutics, LLC v. SVADS Holdings SA (M.D. Fla. 2014). The dispute revolved around rights to the NUPRIN mark. NUPRIN had previously been a brand name for ibuprofin, an over-the-counter pain medicine. Sobek sued SVADS seeking a declaratory judgment of noninfringement of the mark. SVADS, a Swiss firm, moved to dismiss for insufficient service of process.

Under the Lanham Act:

If the [trademark] applicant is not domiciled in the United States the applicant may designate, by a document filed in the United States Patent and Trademark Office, 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. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the registrant does not designate by a document filed in the United States Patent and Trademark Office 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, such notices or process may be served on the Director.

15 U.S.C. § 1051(e).

SVADS had designated a US representative for service of process under the statute, and Sobek had served the summons and complaint on him. The judge concluded that the action “affected the mark” and thus that the US representative was authorized to receive service of process. Thus she denied the motion. This is a straightforward application of the Volkswagen principle.

About Ted Folkman

Ted Folkman is a shareholder with Murphy & King, a Boston law firm, where he has a complex business litigation practice. He is the author of International Judicial Assistance (MCLE 2d ed. 2016), a nuts-and-bolts guide to international judicial assistance issues, and of the chapter on service of process in the ABA's forthcoming treatise on International Aspects of US Litigation, and he is the publisher of Letters Blogatory, the Web's first blog devoted to international judicial assistance, which the ABA recognized as one of the best 100 legal blogs in 2012, 2014, and 2015.

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