Shammas v. Focarino

Plaintiff, a dissatisfied applicant in an ex parte trademark proceeding, sought review of an adverse ruling on his trademark application by commencing a de novo action in a federal district court. Under the Lanham Act, if an applicant elects to proceed in district court and no adverse party opposed his application before the Patent and Trademark Office (PTO), the applicant must name the Director of the PTO as a defendant and pay all the expenses of the proceeding, whether or not she succeeds in the action. At the end of the proceeding in this case, the Director of the PTO sought the expenses of the proceeding from Plaintiff, including the PTO’s attorneys fees. The Fourth Circuit affirmed, holding that the imposition of all expenses on a plaintiff in an ex parte proceeding does not constitute “fee-shifting” that implicates the “American Rule” but, rather, constitutes an unconditional compensatory charge imposed on a dissatisfied applicant in an ex parte trademark proceeding who elects to engage the PTO in a district court proceeding. View "Shammas v. Focarino" on Justia Law