Foley Team Cites Ruling to Bolster Client’s Appeal

A team of Foley attorneys including partner Jonathan Moskin, senior counsels Brian Kapatkin and Katherine Califa and associate Eoin Connolly are appealing to the Fourth Circuit a district court award of $76,000 in attorneys’ fees to the U.S. Patent and Trademark Office stemming from a trademark dispute with the travel site Booking.com that the agency lost.

Both the Fourth Circuit and the Federal Circuit had previously issued panel rulings upholding the USPTO’s demand for attorneys’ fees after certain types of appeals, regardless of who wins the case. But on July 27, the full Federal Circuit reversed that court’s 2017 decision, ruling that the agency’s fee policy violates the so-called American Rule, which holds that the parties generally must pay their own legal fees.

The Foley team, in a July 31 filing, cited the Federal Circuit’s ruling in Booking.com’s appeal before the Fourth Circuit, according to Law360. While acknowledging that the Fourth Circuit is not bound by any Federal Circuit decision, it said the Fourth Circuit’s 2015 ruling in favor of the USPTO “cannot be squared” with U.S. Supreme Court precedent.

“The Federal Circuit in [its July 27 ruling] specifically analyzed the applicable precedent in this jurisdiction…in reaching its contrary conclusion,” the attorneys wrote. “Thus [the ruling] left no doubt as to the bases for the different outcomes.”