Supreme Court Sends BOOKING.COM Attorney's Fees Ruling Back to Fourth Circuit In View of Peter v. Nantkwest

The Supreme Court has vacated the portion of the judgment of the U.S. Court of Appeals for the Fourth Circuit in Booking. com B.V. v. USPTO that upheld the award of attorney's fees to the USPTO under Section 1017(b)(3) of the Trademark Act. [TTABlogged here]. The case has been remanded wih the direction that the Fourth Circuit reconsider its ruling in light of Peter v. Nankwest, in which the Supreme Court ruled that the USPTO is not entitled to recover its attorney's fees in an appeal from an adverse USPTO decision via a civil action under Section 145 of the Patent Statute. [TTABlogged here]. Booking.com B.V. v. USPTO, Case No. 18-1309 (cert. granted July 3, 2020).

Section 145 of the Patent Statute says that the applicant must pay "[a]ll the expenses of the proceedings." The Supreme Court, however, found no reason to depart from the "American Rule" that requires each party to pay its own attorney's fees. Peter v. Nantkwest, Inc., No. 18-801 (S. Ct. December 11, 2019).

In the BOOKING.COM case, the Fourth Circuit followed (seemingly with reluctance) its own decision in Shammas v. Focarino, 784 F.3d 219, 225 (4th Cir. 2015) by affirming the district court's award of attorney's fees to the USPTO. Despite statutory language in Section 1017(b)(3) that is virtually identical to that of Section 145 of the Patent Statute, the court of appeals held that the USPTO was entitled to recover its attorney's fees. The Supreme Court denied Shammas's petition for certiorari in 2016. [TTABlogged here].

There seems to be no reason to believe that the Fourth Circuit will not reverse its position and follow the Supreme Court's lead in Peter v. Nantkwest.

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TTABlogger comment: The district court required Booking.com to pay $76,873.61 of the USPTO's expenses, $51,472.53 of which constituted the prorated salaries of the attorneys and paralegals who worked on the matter.

Text Copyright John L. Welch 2020.