NYIPLA Urges Supreme Court to Clarify Definition of "Expenses" in Lanham Act

By: Colman B. Ragan, Charles R. Macedo, David P. Goldberg and Christopher Lisiewski

On Thursday, May 16, 2019, the New York Intellectual Property Law Association (“NYIPLA”) filed an amicus brief in support of a petition for a writ of certiorari by Booking.com B.V. urging the Supreme Court to decide whether a trademark applicant must pay the United States Patent and Trademark Office’s (“PTO”) attorneys’ fees as “expenses in United States district court appeals pursuant to 15 U.S.C. § 1071 (b)(3). The NYIPLA takes the position that the Supreme Court should grant certiorari in this case and consolidate it with Peter v. Nantkwest, No. 18-801 under Rules of the Supreme Court 27. 
 
In support, the NYIPLA argued that Booking.com raises the same issue as NantKwest, but challenges the statutory definition of “expenses” for the Trademark Act (15 U.S.C.) instead of the Patent Act (35 U.S.C.).  
 
Second, the NYIPLA also argued that the factual scenario presented in Bookings.com presents a complementary fact pattern, where the United States Government is seeking fees as the unsuccessful party, which may influence the Court’s decision making process.  
 
Finally, the NYIPLA noted Bookings.com will bring in additional experienced counsel to offer additional viewpoints to assist the Court in deciding the important issues raised in NantKwest.
 
Thus, the NYIPLA is urging the Supreme Court to decide the merits of the issue presented in Bookings.com and grant the petition for a writ of certiorari and consolidate it with NantKwest under Rules of the Supreme Court 27. The Supreme Court case is captioned Booking.com B.V. v. United States Patent and Trademark Office, et al., No. 18-309.

Click HERE to read the Amicus Brief. 
 
* Mr. Ragan is President-Elect of NYIPLA, Charles R. Macedo is Co-Chair of the PTAB Committee of the NYIPLA, and David P. Goldberg is the Co-Chair of the Amicus Briefs Committee of the NYIPLA.   Each of them, along with Christopher Lisiewski appeared on behalf of NYIPLA in the submission.