Fourth Circuit Holds that Trademark Applicant Who Files De Novo District Court Action Challenging Denial of Registration Must Pay PTO's Legal Fees Even if Applicant Succeeds

摘要

Given that the PTO is located in Virginia and that the court denied rehearing en banc, the Fourth Circuit's ruling is likely to govern many de novo actions filed by losing trademark (or patent) applicants. In deciding whether to seek de novo review in district court or to appeal directly to the Federal Circuit, an unsuccessful applicant will have to balance the cost of an attorneys' fee award against the benefit of expanding the record with discovery and additional factual submissions and de novo review. To keep its options open, an applicant should consider making a more fulsome record in the TTAB instead of waiting for a district court action where it would be liable for a fee award. Finally, it should be noted that the statute does not apply to a de novo action challenging a TTAB ruling in an opposition proceeding (where the PTO is only a party if it intervenes).