Attorney Fee Recovery in Trademark Cases

The federal statutes governing trademark infringement cases contain provisions at 17 U.S.C. § 1117 that provide for the recovery of attorney fees under various circumstances. Under the first such provision, § 1117(a), defendants who violate section 1125(a), or willfully violate section 1125(c) may be charged with the plaintiff’s attorney’s fees “in exceptional cases.”

A 1125 (c) violation is, among other things, the use in commerce of names, symbols, devices, misleading descriptions or misleading representations that are likely to cause confusion as to the ownership, affiliations, origins, properties, and identities of goods or services. A 1125(c) violation occurs when the value of a well established trademark is damaged (the term of art is “diluted”) by someone else’s use of an impermissibly similar mark. The above descriptions are over simplifications, and the question of whether a trademark has been infringed can be a close one. However, cases where attorney fees are allowed under § 1117(a) are not the close ones. They are cases where strings of adjectives such as “deliberate, fraudulent, unconscionable, malicious and wanton” apply to defendant’s actions. Situations where the court has already issued an injunction against a defendant to stop infringing behavior, and the defendant persisted in the infringement, are also good candidates for attorney fee awards. Prevailing defendants can be awarded fees in cases where plaintiff’s claims were frivolous.

Section § 1117(b) sets forth circumstances where an assessment of damages under 1117(a) should automatically, unless there are extenuating circumstances, include treble damages and attorney fees. Those are circumstances where the defendant intentionally uses a counterfeit trademark or provides goods or services that enable the use of a counterfeit trademark with the intent that the goods and services be used that way.

Where attorney fees are recoverable under this statute, the court will review submitted fees for reasonableness. The court might consider the ability of the party to pay when determining the amount of attorney fees to award.

The information contained in this blog is not legal advice and should not be relied on as such. For legal advice or for answers to specific questions, please contact the blog's author.