Booking B.V. v. The United States Patent and Trademark Office, 4th Cir., No. 17-2459, amicus brief filed 3/19/2018.
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The Patent and Trademark Office has incorrectly interpreted the Lanham Act as requiring an award of attorneys' fees, win or lose, to the agency in district court proceedings reviewing decisions of the Trademark Trial and Appeal Board.
On its face, the statutory phrase “all expenses of the proceeding” found in Section 21(b)(3), 15 U.S.C. 1071(b)(3), does not include attorneys’ fees, which are addressed in Section 35 of the Lanham Act, 15 U.S.C. § 1117. Section 21(b)(3) neither defines “expenses” nor otherwise indicates that the word includes reimbursement of PTO fixed costs. The Supreme Court has held that interpretations of the law that depart from common law must be supported by clear and explicit language that Congress intended to do so, and there is no such support for the PTO interpretation of this language.