Booking.com Remand on USPTO Attorney Fee Issue Portends Closure on Circuit Split

As followers of this blog may recall, in December 2019, the Supreme Court resolved a circuit split as to whether the United States Patent and Trademark Office (USPTO) may recover its “attorneys’ fees” (effectively, the pro rata salaries of its legal personnel) in appeals from the Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) to the U.S. District Court. The Fourth Circuit had held that the USPTO could recover such fees from trademark applicants who appealed, successfully or not, from the TTAB to the Eastern District of Virginia, while the Federal Circuit held the opposite with respect to patent applicants who appealed from the PTAB to the district court for de novo review.

Prior to the Supreme Court’s decision in Peter v. Nantkwest, the Fourth Circuit had followed its precedent and affirmed an award of attorneys’ fees to the USPTO in Booking.com B.V. v. USPTO, notwithstanding that Booking.com had prevailed in the district and appellate courts. The Supreme Court recently ruled that the term “Booking.com” was capable of trademark significance and therefore registrable, affirming the decisions below and, on July 2, remanding the case to the Fourth Circuit on the issue of the fee award.

Now, in view of the Nantkwest decision, which unanimously held that the USPTO is not entitled to recover attorneys’ fees in appeals under Section 145 of the Patent Act, and the Supreme Court’s remand of Booking.com on the fee issue, the Fourth Circuit will have the opportunity to do what it could not when the case was first before it – find that the USPTO is not entitled to recover the fees associated with defending the appeal. This remand should close the chapter on what was an interesting circuit split but ultimately an untenable deviation from the American Rule on attorneys’ fees in intellectual property cases.