United States District Court, E.D. Virginia, Alexandria Division
M. BRINKEMA, UNITED STATES DISTRICT JUDGE
case involves plaintiff Booking.com B.V.'s
("Booking" or "plaintiff) appeals of the
United States Patent and Trademark Office's
("USPTO" or "defendants") refusal to
register four marks consisting of or containing the term
BOOKING.COM,  which were affirmed by the Trademark Trial
and Appeal Board ("TTAB") in three separate
opinions. See Mem. Op. at 4-5 [Dkt. No. 87]. The
parties submitted the issues on cross motions for summary
judgment, which were partially granted in plaintiffs favor by
an order directing the USPTO to register plaintiffs marks in
the '998 and '097 Applications, and remanding the
'365 and '366 Applications for further administrative
proceedings consistent with the Memorandum Opinion [Dkt. No.
88]. That decision is at issue in defendants' Motion to
Amend Judgment [Dkt. No. 94] and defendants' Motion for
Expenses Pursuant to 15 U.S.C. § 1071(b)(3) [Dkt. No.
98] which are before the Court. The motions have been fully
briefed. Finding that oral argument will not assist the
decisional process, the motions will be resolved on the
Defendants' Motion to Amend Judgment
Standard of Review
to alter or amend final judgments under Fed.R.Civ.P. 59(e)
are discretionary and "need not be granted unless the
district court finds that there has been an intervening
change of controlling law, that new evidence has become
available, or that there is a need to correct a clear error
or prevent manifest injustice." Robinson v. Wix
Filtration Corp.. 599 F.3d 403, 411 (4th Cir. 2010).
Reconsideration "is an extraordinary remedy that should
be applied sparingly." Mayfield v. Nat'l
Ass'n for Stock Car Auto Racing. Inc., 674 F.3d 369,
378 (4th Cir. 2012). "[M]ere disagreement does not
support a Rule 59(e) motion." United States ex rel.
Becker v. Westinghouse Savannah River Co., 305 F.3d 284,
290 (4th Cir. 2002) (quoting Hutchinson v. Staton.
994 F.2d 1076, 1082 (4th Cir. 1993)).
USPTO seeks a modification to the Order issued on August 9,
2017 [Dkt. No. 88], which required the USPTO to
"register plaintiffs marks in the '998 Application
and '097 Application as to the Class 43 services."
It argues that the Court does not have authority to direct
the USPTO to register a trademark because that duty is
imposed on the Director of the USPTO by statute. See
Def.'s Mot. to Amend at 3 (citing Gould v.
Ouigg, 822 F.2d 1074, 1079 (Fed. Cir. 1987)). Further,
it points out that the USPTO cannot statutorily register a
mark without publishing the application for opposition, under
15 U.S.C. § 1062(a). Id. It requests that that
the Court alter its judgment to remand the '998 and
'097 Applications to the USPTO for "further
administrative proceedings consistent with the findings and
conclusions of the Court's memorandum opinion."
agrees that the Court cannot order the USPTO to register the
mark, but responds that there are no further
"administrative proceedings, " and the only course
of conduct open to the USPTO is to publish the marks for
opposition. Pl's Partial Opp. to Mot. Amend at 2 [Dkt.
No. 97]. Booking argues that because the Court addressed all
issues of fact and law with respect to the two Applications,
there is nothing left for the agency to consider and it must
follow its statutory mandate to publish the marks for
opposition. Id. at 2-3.
has the better argument. Under 15 U.S.C. § 1062(a), once
an examiner determines that a trademark application appears
to be entitled to registration, "the Director
shall cause the mark to be published in the Official
Gazette of the Patent and Trademark Office." 15 U.S.C.
§ 1062(a) (emphasis added). Moreover, the USPTO's
Trademark Manual of Examining Procedure ("TMEP")
§ 1708, provides that "[t]he Director has no
authority to waive or suspend the requirement of a rule that
is also a requirement of the statute." TMEP § 1708.
The clear statutory requirement, based on this Court's
determination that the '998 and '097 Applications are
entitled to protection is to move forward and publish the
marks for opposition.
view as to the appropriate procedure is supported by the
Federal Circuit's decision in In re Wella A.G..
858 F.2d 725 (Fed. Cir. 1988). In that case, the Federal
Circuit reversed the refusal of the TTAB to register a
trademark because the court found that the TTAB had
misinterpreted § 2(d) of the Trademark Act and held that
"the only issue for the [TTAB] to consider on the remand
is whether, considering all the circumstances, there is a
likelihood of confusion between the mark sought to be
registered and the four Wella U.S. marks which under section
2(d) would warrant refusal of registration."
Id. at 726. After the case was remanded, the TTAB
denied registration on a new and separate ground that the
applicant was not the owner of the mark, based on
"additional views" of another judge appended to the
opinion. Id. at 727. The applicant appealed again,
and the court held that in refusing the mark on a new ground
that had not been raised in the prior administrative
proceeding or in the first appeal, the TTAB failed to carry
out the court's instructions. Id. at 728.
case, the Court has gone further than the Federal Circuit did
by determining that both the '998 and '097
Applications are eligible for protection under the Trademark
Act. See Mem. Op. at 50; see also Swatch AG v.
Beehive Wholesale. LLC, 739 F.3d 150, 155 (4th Cir.
2014) (finding that in de novo review of USPTO
decisions, the district court acts as trier of fact). Given
those conclusions, the USPTO may not reconsider the factual
findings or try to determine new grounds to refuse
registration of the marks, but must proceed with the next
statutory step in the registration process by publishing the
two marks for opposition. 15 U.S.C. § 1062(a).
issues involved in the cases defendants cite for the
proposition that the Court's authority is limited to
remanding the Applications to the agency for further action
consistent with the corrected legal standards are
distinguishable. For example, in PPG Industries. Inc. v.
United States, the D.C. Circuit explained that there is
no principal of administrative law that restricts an agency
from reopening proceedings to take new evidence after the
grounds on which it relied are found to be invalid. 52 F.3d
363, 365 (D.C. Cir. 1995). The court held that the agency
should be allowed to take new evidence to determine whether
its jurisdictional decision was valid. Id. at 366.
Here, there is no new evidence for the USPTO to take on the
issue of eligibility for registration of the '998 or
'097 Applications. As agreed by the parties, the Court
resolved all factual disputes in making its ruling on summary
judgment. See Mem. Op. at 6 & n.2 ("[I]n a
civil action under § 1071(b), the district court reviews
the record de novo and acts as the finder of fact").
certain situations, remand for further administrative action
is appropriate, as when the agency in question is vested with
discretion in its chosen course of conduct. See
NLRB v. Food Store Emps. Union, Local 347, 417 U.S.
1, 10-11 (1974) (holding that remand is proper "when a
reviewing court concludes that an agency invested with broad
discretion to fashion remedies has apparently abused that
discretion by omitting a remedy justified in the court's
view by the factual circumstances"). See also FCC v.
Pottsville Broadcasting Co., 309 U.S. 134 (1940), in
which the plaintiff initially appealed the FCC's denial
of its application to construct a broadcasting station.
Id. at 139-40. The D.C. Circuit reversed the
FCC's decision and remanded the matter back to the agency
for further proceedings. Id. at 140. On remand, the
FCC decided to hear argument on plaintiffs application along
with argument on two other applications that had been filed
after the plaintiffs to determine which, "on a
comparative basis in the judgment of the Commission will best
serve [sic] public interest." Id. Although the
plaintiff objected that the FCC's conduct violated the
remand and sought a writ of mandamus ordering the FCC to
consider its application irrespective of the other two
applications, the Supreme Court rejected this argument,
holding that the only questions that had been determined in
the original proceedings were legal questions and that the
FCC was statutorily charged with "the duty of judging
application[s] in the light of 'public convenience,
interest, or necessity." Id. at 145. The Court
held that it was improper for a court to make these decisions
whereas the FCC was duty bound to enforce the legislative
policy committed to its charge. Id. In contrast with
the duty of the FCC in Pottsville Broadcasting, the
only option available to the USPTO based on the findings of
this Court is to publish the marks for opposition because all
factual issues of eligibility have been resolved, and
therefore the "legislative policy" of the USPTO is
to publish the marks. See 15 U.S.C. § 1062(a).
the USPTO has not identified any other proceeding or
administrative procedure that it would need to undertake
before publishing the marks. Its only argument is that the
agency still has discretion to determine the manner and
timing of further proceedings. See Def.'s Reply
at 3. Defendants argue that the agency still retains
discretion to "determine the manner and timing" of
its own proceedings, citing 37 C.F.R. § 2.67, which
allows the USPTO to suspend its actions "for a
reasonable time for good and sufficient cause."
See Def.'s Mot. to Amend at 5. "The fact
that a proceeding is pending before the Patent and Trademark
Office or a court which is relevant to the issue of
registrability of the applicant's mark ... will be
considered prima facie good and sufficient cause." 37
C.F.R. § 2.67. The USPTO claims that it does not act on
orders involving applications or registrations until the time
for an appeal has elapsed, and that this constitutes
sufficient cause for it to delay publication of the marks at
issue. Def.'s Reply [Dkt. No. 101] at 3.
argument is unpersuasive. The regulation only states that
actual pendency of a proceeding before the Patent and
Trademark Office constitutes sufficient cause. Until the
USPTO or the Solicitor General chooses to file an appeal,
there is no pending proceeding. The USPTO points to no
authority which holds that the government's own internal
deliberations constitute "proceedings" within the
meaning of the regulation. Should the USPTO file an appeal to
the Fourth Circuit, there would be a pending proceeding
sufficient to justify delaying any action by the agency.
opposition, Booking argues that the judgment should be
amended to order USPTO to publish all four Applications,
including the '365 and '366 Applications, for
opposition. This ignores the Court's findings with
respect to those two separate Applications. Section 1062(a)
only requires the USPTO to publish marks for opposition after
the examiner has determined that it appears the mark is
"entitled to registration, or would be entitled to
registration upon the acceptance of the statement of
use." Here, the Court did not find that the '365 and
'366 Applications were entitled to registration. Instead,
the Court specifically remanded those Applications to the
USPTO for administrative proceedings "to determine
whether the design and color elements in those two
applications, in combination with the protectable word mark,
are eligible for protection as to the Class 43
services." See Mem. Op. at 50-51 &
n.23. There was no determination that these
Applications should be registered. Because Booking offers no
argument as to why the judgment with respect to the '365
or '366 Applications should be amended, the Court
declines to amend the judgment in this manner.
as the USPTO points out, if Booking's response is
intended as a separate motion to amend the judgment under
Rule 59(e), it is untimely. Rule 59(e) allows for a motion to
amend to be filed no later than 28 days after the entry of
the judgment; under Rule 6, this time may not be extended.
The judgment was entered on August 9, 2017. [Dkt. No. 88].
Booking filed its response on September 13, 2017, which is
over the 28 day time period to file such a motion. For these
reasons, defendants' Motion to Amend Judgment [Dkt. No.
94] will be granted only as to amending the judgment to
direct that the '998 and '097 Applications be
immediately published in the Official Gazette of the Patent
and Trademark Office and denied in all other respects.