Booking.Com B.V. v. Matal
| Decision Date | 26 October 2017 |
| Docket Number | 1:16-cv-425 (LMB/IDD) |
| Court | U.S. District Court — Eastern District of Virginia |
| Parties | 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. |
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 plaintiff's favor by an order directing the USPTO to register plaintiff's marks in the 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 theCourt. 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.
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)).
The USPTO seeks a modification to the Order issued on August 9, 2017 [Dkt. No. 88], which required the USPTO to "register plaintiff's 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. Quigg, 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 "furtheradministrative 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 ofthe 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) (). 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 ().
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) (). 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 plaintiff's application along with argument on two other applications that had been filed after the plaintiff's 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 agencystill 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...
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