Plaintiff Must Pay USPTO Attorney's fees in District Court Review of TTAB Decision: E.D. Va. | Practical Law

Plaintiff Must Pay USPTO Attorney's fees in District Court Review of TTAB Decision: E.D. Va. | Practical Law

In Shammas v. Focarino, the US District Court for the Eastern District of Virginia held that 15 U.S.C. § 1071(b)(3) allowed the USPTO to recover all reasonable expenses, including attorney's fees, associated with the court's review of a TTAB decision refusing to register the plaintiff's proposed mark.

Plaintiff Must Pay USPTO Attorney's fees in District Court Review of TTAB Decision: E.D. Va.

by Practical Law Intellectual Property & Technology
Published on 09 Jan 2014 • USA (National/Federal)
In Shammas v. Focarino, the US District Court for the Eastern District of Virginia held that 15 U.S.C. § 1071(b)(3) allowed the USPTO to recover all reasonable expenses, including attorney's fees, associated with the court's review of a TTAB decision refusing to register the plaintiff's proposed mark.
In Shammas v. Focarino, the US District Court for the Eastern District of Virginia issued an opinion finding that Shammas, the party challenging a Trademark Trial and Appeal Board (TTAB) decision under 15 U.S.C. § 1071(b)(3), must pay all of the USPTO's reasonable expenses associated with the court's review of the TTAB decision, including the USPTO's attorney's fees (No. 12-cv-01462, (E.D. Va. Jan. 3, 2014)). The district court noted that it was appropriate for the USPTO to calculate the attorney's fees based on the actual salaries of the attorneys and paralegals who worked on the case rather than to use the lodestar approach.
After the TTAB denied Shammas' application to register his desired mark, Shammas filed a complaint in the district court seeking review of the TTAB decision under 15 U.S.C. § 1071(b)(1). The district court granted the USPTO's motion for summary judgment on the ground that substantial evidence supported the TTAB's determination that Shammas' mark was generic or alternatively, descriptive but lacking secondary meaning. Following the grant of summary judgment, the USPTO filed a motion seeking fees and expenses, including:
Shammas did not challenge the USPTO's request for reasonable attorney's fees under FRCP 37(b)(2)(C), but he objected to the request for attorney's fees under 15 U.S.C. § 1071(b)(3).
Although the district court considered this a matter of first impression, it identified the issue as a straightforward statutory interpretation of the meaning of "all expenses of the proceeding" under section 1071(b)(3). The court concluded that "all expenses" included attorney's fees based on:
  • Dictionary definitions of "expenses" that would include attorney's fees.
  • Other statutes that explicitly include attorney's fees as a subset of "expenses".
  • Other court decisions that found attorney's fees to be a subset of "expenses".
The court also approved the USPTO's calculation of attorney's fees using the actual hourly rate of the attorneys and paralegals who worked on the case rather than a lodestar amount because the USPTO was seeking only reimbursement of the amount it actually incurred in litigating the case.
With regard to the $11,436.15 request for reasonable attorney's fees under FRCP 37(b)(2)(C), the court:
  • Did not object to the use of prevailing market rates rather than actual hourly rates in calculating the fees.
  • Distinguished the use of actual hourly rates when seeking actual expenses from the use of prevailing market rates when seeking reasonable attorney's fees.
  • Rejected the USPTO's request for $11,436.15 as unreasonable because it was clearly excessive and unreasonable for two USPTO attorneys to spend 29 hours on a routine motion with no novel legal issue.
  • Reduced the reasonable attorney's fees to $2,280.00.