There are multiple avenues for an applicant to appeal a Trademark Trial and Appeal decision, but the Fourth Circuit held that applicants who choose to appeal to a District Court must pay the United States Patent and Trademark Office’s attorney’s fees and related expenses. On April 23, 2015, the United States Court of Appeals for the Fourth Circuit upheld 2-1 a decision requiring a trademark applicant to pay over $36,000 in attorney’s fees to the United States Patent and Trademark Office, which would have been required regardless of whether the applicant won or lost. Shammas v. Focarino, 784 F.3d 219, 221 (4th Cir. 2015).
Trademark Applicant Shammas’ Application Was Denied
Trademark Applicant Shammas filed for a trademark application for PROBIOTIC in connection with fertilizer products. A trademark examining attorney for the United States Patent and Trademark Office denied Shammas’ application on the grounds that the term was generic and descriptive. The Trademark Trial and Appeal Board affirmed. Shammas appealed the refusal to the federal district court for the Eastern District of Virginia.
The district court granted the USPTO’s motion for summary judgement, holding that “Shammas had failed to cast doubt on the finding that ‘PROBIOTIC’ was a generic term.” The USPTO also filed a motion for reimbursement of $36,320.49 in expenses that it had incurred in the proceeding, including the prorated salaries of two attorneys, in the amount of $32,836.27, one paralegal, in the amount of $3,090.32, and $393.90 for photocopying expenses.
The basis of this reimbursement is Section 1071(b)(3) of that Lanham Act, which states that: “