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Booking.com B.V. v. Matal

United States District Court, E.D. Virginia, Alexandria Division

October 26, 2017

BOOKING.COM B.V., Plaintiff,
v.
JOSEPH MATAL, Performing the Function and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, et al, Defendants.

          MEMORANDUM OPINION

          LEONIE M. BRINKEMA, UNITED STATES DISTRICT JUDGE

         This 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, [1] 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 materials submitted.

         I. DISCUSSION

         A. Defendants' Motion to Amend Judgment

         1) Standard of Review

         Motions 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)).

         2) Analysis

         The 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." Id.

         Booking 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.

         Booking 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.

         This 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.

         In this 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).

         The 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").

         In 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).

         Indeed, 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.

         This 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.

         In its 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.[2] 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.

         Further, 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.

         B. Motion ...


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