Written by Mark Terry

Can you get attorneys fees in a Trademark Infringement suit under the Lanham Act? In short, the answer is yes, but only in exceptional cases. This is an issue that often comes up in lawsuits of all types, especially intellectual property cases. As a Florida Intellectual Property Attorney, damages are a topical subject I’m often asked about.

As the prevailing party under the Lanham Act, a party is entitled to an award of attorney’s fees in “exceptional cases.” 15 U.S.C. § 1117. Intentional, deliberate or willful conduct is usually sufficient to make out an “exceptional case.” See, e.g., Playboy Enterprises, Inc. v. P.K. Sorren Export Co., 546 F.Supp. 987, 999 (S.D.Fla.1982) (attorneys’ fees awarded where infringement was deliberate); Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F.Supp. 990, 999 (W.D.Mo.1986) (deliberate and intentional infringement makes the case “exceptional”).

As an example of an exceptional case, in Nutrivida, Inc. v. Inmuno Vital, Inc., 46 F.Supp.2d 1310 (S.D. Fla., 1998), the Defendant continued to utilize the trademark at issue long after receiving a cease and desist letter. The Court found that under the foregoing authorities, such deliberate, knowing and intentional infringement warranted a determination that the case was “exceptional” for purposes of determining the trademark holder’s entitlement to an attorneys’ fee award under the Lanham Act.

The lesson here is that your case must be exceptional to get attorney’s fee and there must be a showing of deliberate intent to make the case exceptional. This is difficult to prove in cases involving likelihood of confusion where the Defendants did not know beforehand that their mark was similar to the Plaintiff’s mark. But in counterfeiting cases, or cases where the Defendant was contacted beforehand and he continued infringing, intent is easier to prove. In those cases, attorney’s fees are in play.

How to determine attorney’s fees is another matter altogether. The Court normally applies the “lodestar” approach set forth in Hensley v. Eckerhart, 461 U.S. 424, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983) and Norman v. The Housing Authority of the City of Montgomery, 836 F.2d 1292 (11th Cir.1988). To arrive at the lodestar amount, the Court is required to multiply the number of hours reasonably expended on the litigation by a reasonable hourly rate for the services of the prevailing party’s attorney. Norman, 836 F.2d at 1299. Once the Court arrives at the lodestar figure, it may be adjusted according to whether the results were excellent, whether the fee was fixed or contingent, and other factors. In intellectual property cases, other courts have held that “a party should be entitled to retain the most competent counsel available” because the issues are difficult and require great skill and experience on the part of the attorneys. Howes v. Medical Components, Inc., 761 F.Supp. 1193, 1196, 1199 (E.D.Pa.1990).