Amicus Brief

Shammas v. Hirshfeld

Published: November 30, 2015


U.S. Supreme Court

Our Position

The Court should grant the petition for a writ of certiorari to reverse the Fourth Circuit majority’s interpretation of the American Rule and Section 21(b)(3) to require applicants to pay the Patent and Trademark Office’s attorneys’ fees in district court proceedings. Lanham Act Section 21(b)(3) 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.