United States District Court, E.D. Virginia, Alexandria Division
T. S. ELLIS, III JUDGE
At issue post-judgment and post-appeal in this Lanham Act § 21(b) action is plaintiffs motion under Rule 60(b), Fed. R. Civ. P., to vacate an Order directing plaintiff to pay to defendant certain expenses of the proceeding. The matter was fully briefed, plaintiff waived oral argument, and it is clear that oral argument would not aid the decisional process. Accordingly, the matter is ripe for disposition.
For the reasons that follow, the motion to vacate must be denied.
Plaintiff Milo Shammas submitted a trademark application to the United States Patent and Trademark Office ("PTO"). This application failed; the PTO's Trademark Trial and Appeal Board ("TTAB") denied registration of the mark.
Plaintiff then sought judicial review of the TTAB's decision in district court pursuant to § 21(b). He failed; summary judgment was entered for the PTO on the ground that plaintiffs mark was generic. See Shammas v. Rea, 978 F.Supp.2d 599 (E.D. Va. 2013).
After summary judgment, the PTO sought an award of expenses pursuant to § 21(b)(3). That provision directs that "all the expenses of the proceeding shall be paid by the party bringing the case, whether the final decision is in favor of such party or not." 15 U.S.C § 1071(b)(3). As such, the expenses sought included attorney's fees. Plaintiff opposed the PTO's motion. He failed; by Order dated January 2, 2014 ("Fees Order"), plaintiff was directed to pay to the PTO total expenses of $36, 320.49. Of that amount, $32, 836.27 was for attorney salaries. See Shammas v. Focarino, 990 F.Supp.2d 587 (E.D. Va. 2014).
Plaintiff filed a timely appeal of the Fees Order. The appeal failed; the Fourth Circuit rejected plaintiffs argument that the American Rule applied to § 21(b)(3) to bar an award of attorney's fees, and the Fees Order was affirmed. See Shammas v. Focarino, 784 F.3d 219 (4th Cir.2015).
Plaintiff then petitioned for rehearing or rehearing en banc. One week after plaintiff filed his petition, the Supreme Court held in Baker Botts LLP v. ASARCO LLC, 135 S.Ct. 2158 (2015), that § 330(a)(1) of the Bankruptcy Code does not permit a bankruptcy court to award attorney's fees for work performed in defending a fee application in court. Plaintiff argued that the reasoning of Baker Botts implicitly overruled the Fourth Circuit's decision in Shammas. He failed; the Fourth Circuit denied the petition for rehearing, and the mandate issued.
Plaintiff thereafter petitioned the Supreme Court for a writ of certiorari. Again, plaintiff argued that the Fourth Circuit's judgment should be vacated in light of Baker Botts. And again, plaintiff failed; the Supreme Court denied the petition. See Shammas v. Hirshfeld, 136 S.Ct. 1376 (Mem.) (2016).
Plaintiff now seeks to vacate the Fees Order pursuant to Rule 60(b). Specifically, plaintiff once again argues that Baker Botts commands an outcome contrary to that reached by the Fourth Circuit in Shammas. Relatedly, plaintiff suggests that in light of Baker Botts, he will be the only person ever required to pay attorney's fees under § 21(b)(3), which he frames as any extraordinary injustice.
The litany of failures continues.
Plaintiff's Rule 60(b) motion fails for at least three reasons. First, Rule 60(b) is not an appropriate vehicle for the relief plaintiff seeks. Second, to award plaintiff the relief he seeks would be to contravene the mandate of the Fourth Circuit. Third, plaintiffs ...