The U.S. District Court for the Eastern District of Virginia has granted the USPTO’s motion for an award of its “expenses” in the BOOKING.COM case, pursuant to Section 1071(b)(3) of the Trademark Act. In August 2017, the court reversed the TTAB’s ruling that the term BOOKING.COM is generic for travel agency and hotel reservation services (TTABlogged here). The USPTO then sought its expenses, including costs, attorney fees, and expert witness fees, and the court granted the full amount requested. Booking.com B.V. v. Matal, Civil Action No. 1:16-cv-425-LMB-IDD (October 26, 2017).
Section 1071(b)(3) provides that, in a civil action for review of an ex parte decision of the USPTO, “all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not.” In Shammas v. Focarino, 114 USPQ2d 1489 (4th Cir. 2015), cert. denied (March 7, 2016) (TTABlogged here), the Fourth Circuit ruled that “expenses” includes the USPTO’s attorney fees.
Booking.com contended that the Fourth Circuit’s analysis in Shammas was “overruled” by the Supreme Court’s decision in Baker Botts L.L.C. v. ASARCO LLC, 135 S.Ct. 2158 (2015), interpreting a provision of the Bankruptcy Code. The district court, however, found Baker Botts not directly on point, and noted that the Baker Botts decision had been presented to the Fourth Circuit in a request for rehearing of the Shammas decision, and to the E.D. Va. in a motion to vacate, both without success. In any event, the district court ruled deemed itself bound to follow the Fourth Circuit’s decision in Shammas.
The district court noted that the CAFC, in NantkWest v. Matal, 860 F.3d 1352 (Fed. Cir. 2017), reviewed the identical “expense” language of Section 145 of the Patent Statute, and ruled that “expenses” included the USPTO’s attorney fees. However, it recognized that Nantkwest has been vacated by the CAFC. pending en banc review. NantkWest v. Matal, 869 F.3d 1327 (Fed. Cir. 2017)