Win or Lose, Prepare to Pay the Government’s Attorney’s Fees

Federal judge requires parties challenging decisions of the Trademark Trial and Appeal Board to pay the government’s attorney’s fees

In a matter of first impression, a Virginia District Court recently ruled that the plaintiff in Shammas v. Focarino, who had unsuccessfully appealed a rejection of his trademark application, must pay the government approximately $35,000, because the government’s attorney’s fees and other expenses are included in “all the expenses of the proceeding,” which must be borne by the plaintiff under the applicable statute. The Shammas ruling should cause unsuccessful trademark applicants to pause before appealing to the district court and consider whether the opportunity to introduce new evidence is worth paying for “all the expenses of the proceeding.”

Background -

In 2012, Milo Shammas filed a complaint in the Northern District of Virginia, requesting review under 15 U.S.C. § 1071(b)(1) of a decision by the Trademark Trial and Appeal Board (TTAB). The TTAB had denied Shammas’ application for the PROBIOTIC mark because the term was generic with respect to fertilizers and/or was descriptive and lacked secondary meaning. Upon the district court’s grant of summary judgment against Shammas, the government filed a motion for fees and expenses.

Under 15 U.S.C. § 1071(b)(3), the plaintiff must pay “all the expenses of the proceeding.” Whether this required payment of the government’s attorney’s fees was a significant issue because, while the government claimed less than $400 in photocopying expenses, it claimed a total of more than $35,000 in attorney and paralegal fees.

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