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SCOTUS Returns Booking.com Trademark Attorney Fee Award

July 10, 2020 | Posted in : Fee Award, Fee Issues on Appeal

A recent Law 360 story by Tiffany Hu, “High Court Sends Booking.com TM Fee Case Back to 4th Circ.” reports that fresh off its U.S. Supreme Court victory, Booking.com won a bid to have the Fourth Circuit reconsider its attorney fees award to the U.S. Patent and Trademark Office after the agency lost their trademark dispute.

The high court granted Booking.com's petition for a writ of certiorari and wiped out the Fourth Circuit's decision that ordered the travel site to pay $76,000 in attorney fees to the USPTO despite beating the agency's rejection of its trademark registration on its name.

In sending the case back, the justices told the Fourth Circuit to reconsider the attorney fees in light of their December ruling in Peter v. Nantkwest, which struck down the USPTO's unusual policy of automatically demanding repayment of its legal bills in a patent case.

"Particularly now that the Supreme Court has, once again, affirmed the correctness of Booking.com's challenge to the PTO decision refusing protection of its name, it bears out the importance of allowing owners of intellectual properties (patents or trademarks) to pursue de novo review of PTO decisions without fear of having to pay attorneys' fees," Booking.com's attorney Jonathan E. Moskin of Foley & Lardner LLP told Law360 in an email Thursday.

Booking.com in August 2017 successfully overturned the USPTO's rejection of its trademark registration on its name, though it was still ordered to pay attorney fees to the agency anyway.

Last February, a split Fourth Circuit panel upheld the decision to award attorney fees, even as it ruled that the mark was eligible for trademark protection. The public would likely understand "booking.com" as a whole to mean the travel site, rather than a generic online hotel reservation service, it ruled.

In its certiorari petition, Booking.com argued that the Fourth Circuit went against the so-called American Rule that each party generally must pay its own fees, and further violated the First Amendment right to petition the government without fear of reprisal.

The fee appeal was put on hold as the high court considered the USPTO's appeal over whether Booking.com can get a trademark.

On June 30, the high court concluded that the addition of ".com" to an otherwise generic term could transform its name into a protectable trademark, siding with Booking.com in its long quest to secure a trademark registration for its name.