Yes, attorneys’ fees are available in what are called “exceptional cases” of trademark infringement. The Lanham Act — the federal trademark statute — expressly allows a federal court to award reasonable attorneys’ fees in “exceptional cases” of trademark infringement to the prevailing party. 15 U.S.C. § 1117(a). This is a statutorily-created exception to the normal rule that litigants are required to bear their own attorneys’ fees and litigation expenses even if they are successful in the litigation. Generally, an exception must be contained in a statute or in a contract. The Lanham Act created such an exception.

The Lanham Act does not, however, define the term “exceptional.” Thus, over the years, the federal courts have determined the word “exceptional” allows an award of attorneys’ fees in trademark infringement cases where the acts of infringement can be characterized as malicious, fraudulent, deliberate or willful. Some courts have refined this further by defining “willful” as “knowing” or as “without legal justification.”

The evaluation of whether a case is “exceptional” is a “totality of the circumstances” approach. That is, the courts will look to a large number of potential factors which may be evaluated on a case-by-case basis. Among the factors that federal courts will consider are these:

• The substantive strength of a party’s litigating position in the court and before the Trademark Appeal Board
• Whether the case was litigated in an unreasonable manner
• Clarity of the governing law and judicial precedents on the specific legal points at issue
• The nature of the alleged infringement — that is, was the infringing trademark exactly the same or confusingly similar?
• The specific facts of the case with respect to what was known at the time of alleged trademark infringement
• Other factors such as registration and fame of the infringed trademark

Sometimes, it is easy for a federal court to deem a trademark case to be exceptional. For example, consider the recent case of WM. WRIGLEY JR. COMPANY v. Conde, Case No. 5:21-cv-00777 JWH (US Dist. CD California 2022). That case involved Wrigley’s various trademarks and trade dress for SKITTLES and STARBURST candies. The defendant began producing, marketing and selling cannabis-extract “medicinal candies” called

• “Medicated Skittles” — sold in four flavors: “Original,” “Sour,” “Wild Berry,” and “Seattle Mix”
• “Medicated Cannaburst Gummies” — sold in three flavors: “Original Sours,” “Berry Sours,” and “Tropical”)

As the court described, the “Medicated Skittles” were in a packages that used the SKITTLES trademark in plain text and white block lettering, used the distinctive rainbow designs and images of candy-coated lentils with an “S” imprinted thereon (like a typical SKITTLES) and a design featuring such candy lentils cascading along an upside-down rainbow. The court found that these marks, images and trade dress were “identical to, substantially indistinguishable from, and/or imitations of the SKITTLES® Mark and Trade Dress.” The court also noted that the flavors were identical to flavors offered by Wrigley. The court made similar findings with the respect to the “Cannaburst Gummies.”

From the foregoing, it was not difficult for the court to conclude that the trademark infringement case was an “exceptional” one. The court granted judgment in favor of Wrigley and awarded attorneys fees.

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If you have questions about creating and registering a trademark or need to litigate a trademark infringement case, contact the trademark litigators at Revision Legal.You can contact us through the form on this page or call (855) 473-8474.