Shammas v. Focarino

When the Patent and Trademark Office's successful motion for summary judgment only cited two cases, twenty-three hours of preparation time was deemed excessive.

Opinion (Ellis, III): Margaret A. Focarino is the Commissioner of Patents at the Patent and Trademark Office (“PTO”). Milo Shammas ("Shammas") previously filed for registration of the proposed mark, PROBIOTIC, which was denied. Shammas filed a complaint seeking review of the Trademark Trial and Appeal Board (“TTAB”) decision. Summary judgment was issued in favor of the PTO. The PTO filed for expenses under 15 U.S.C. § 1071(b)(3) and Rule 37(b)(2)(C), and Shammas opposed the request for attorney’s fees. The court had to determine whether language of 15 U.S.C. § 1071(b)(3) include the PTO’s attorney’s fees, and if the PTO’s request for attorney’s fees pursuant to Rule 37(b)(2)(C), Fed. R. Civ. P. were reasonable. 15 U.S.C. § 1071(b)(3) states that a party must pay “all expenses of the proceeding.” After conducting a statutory analysis, using Black’s Law Dictionary, and a comparison to similar language in other statutes, the Court found that it such language includes attorney’s fees. When deciding the reasonableness of attorney’s fees pursuant to Rule 37(b)(2)(C), the Court cited evidence that the PTO incurred twenty-nine hours of attorney time to prepare and file their motion. The motion for summary judgment only cited two cases. As such, twenty-three hours of that preparation time was deemed EXCESSIVE. The PTO was only entitled to 6 hours of attorney time totaling $2,280.00.