Partner Dyan Finguerra-DuCharme Contributes to Amicus Brief To U.S. Supreme Court In Support of Only “Expenses” not “Attorney Fees” Being Awarded Under Lanham Act §21(b)
The New York Intellectual Property Law Association (NYIPLA) has filed an amicus brief with the U.S. Supreme Court in support of a petition for a writ of certiorari in Shammas v. Hirshfeld, No. 15-563. Partner Dyan Finguerra-DuCharme, a member of Pryor Cashman’s Intellectual Property and Litigation Groups and co-chair of the NYIPLA Trademark Law & Practice Committee, was an author on the brief.
The case concerns a district court’s holding, affirmed by the Fourth Circuit, that a trademark applicant seeking federal district court review of a Trademark Trial and Appeal Board in ex parte proceedings is required to pay the legal fees of the U.S. Patent and Trademark Office (“USPTO”). The NYIPLA seeks clarification as to whether an aggrieved party seeking de novo review of an adverse USPTO decision in an ex parte trademark case in federal district court must pay, as part of “all the expenses of the proceeding,” the PTO’s attorneys’ fees, win or lose.
The NYIPLA argued that the PTO has made the unprecedented and unjustifiable argument that “all the expenses” includes its attorney fees in contravention of the “American Rule.” The NYIPLA further argued that that forcing trademark applicants to pay the USPTO’s attorneys’ fees would have a chilling effect on the use of this avenue of judicial review especially for applicants of limited means.
To read the amicus brief in full, please click here.
