On Tuesday, the Supreme Court unanimously upheld an en banc decision of the CAFC, ruling 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. That statutory provision says that the applicant must pay "[a]ll the expenses of the proceedings." The Court 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).
Of course,, what makes this decision interesting for trademark attorneys is that, for civil actions for review of a final refusal of a trademark application, under Section 1071(b)(1) of the Lanham Act, the Fourth Circuit ruled in Shammas v. Focarino, 114 USPQ2d 1489 (4th Cir. 2015) [TTABlogged here], that - despite statutory language virtually identical to that of Section 145 of the Patent Statute - the USPTO was entitled to recover its attorney's fees. The Supreme Court denied Shammas's petition for certiorari in 2016. [TTABlogged here].
In the BOOKING.COM case now before the Supreme Court (on the issue of genericness). the Fourth Circuit followed (seemingly with reluctance) the Shammas decision in affirming the district court's award of attorney's fees to the USPTO. [TTABlogged here].
It is probably safe to say that the next time a court gets its hands on the issue of USPTO attorney's fees under Section 1071 (b) - at least a court outside the Fourth Circuit - the result may be different.
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