Amicus Brief

Shammas v. Focarino

Published: June 20, 2014


U.S. Court of Appeals for the Fourth Circuit

Our Position

The Court should reverse the Eastern District of Virginia’s decision to include attorney’s fees in the amount of the portions of the Patent and Trademark Office’s attorney and paralegal salaries that were dedicated to the litigation as expenses as defined in Lanham Act Section 21(b)(3), which states that, for “any case where there is no adverse party . . . unless the court finds the expenses to be unreasonable, all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not.” The district court’s decision should be reversed because: (1) Section 21(b)(3) lacks “explicit authorization from Congress” to award attorney’s fees, (2) the legislative history of section 21(b)(3) provides no authority for the award of attorney’s fees, and (3) the district court’s approach would create a chilling effect and introduce such a prohibitive expense that it would effectively remove district court review under Section 21(b) as a viable procedure for all but the wealthiest applicants.


The Fourth Circuit affirmed the district court decision holding that an applicant, who appeals a decision by the U.S. Patent and Trademark Office (USPTO) not to register a mark to a district court, must pay all the USPTO’s attorney fees for the appeal.