Intellectual Property Law

Prevailing Party Denied Lanham Act Fees, But Gets Consumer Protection Act Fees

By Michael Atkins

In the Western District’s WORM FACTORY case, plaintiff Cascade Manufacturing Sales, Inc., n/k/a Nature’s Footprint, Inc., succeeded in its trademark case against competitor Providnet Co Trust. (Previous post here.)

Having done so, it requested an award of fees.

Judge Ronald Leighton denied the award under the Lanham Act, but granted it under Washington’s Consumer Protection Act. In doing so, the court expressed its displeasure at the plaintiff’s motives in pressing its case.

“The Court is convinced that plaintiff sought to use its superior position vis-a-vis the trademark to, cause harm to a competitor. Given this Court’s strongly-held belief that a significant part of this litigation was motivated by plaintiff’s desire to quash competition, no fees will be awarded under the Lanham Act’s ‘exceptional case’ authority.”

The court nonetheless awarded fees under the Consumer Protection Act’s mandatory authority, since it found that defendants marketed their products as ‘patent pending’ and ‘made in the USA’ when they knew those statements were false.

“To deny attorneys’ fees in this context, notwithstanding the fact that defendants engaged in misleading advertising practices and trademark infringement, would allow defendants to engage in these types of tactics for a long period of time with impunity.”

Therefore, the court found that “Plaintiff should be awarded some fees under the Washington Consumer Protection Act. Those fees should, however, reflect the Court’s observation that a significant portion of this litigation was motivated not by a desire to protect a valid trademark, but to force a competitor out of business.”

In the end, the court awarded plaintiff less than it wanted — $20k and costs of almost $3,500.

The case cite is Nature’s Footprint, Inc. v. Providnet Co Trust, 2010 WL 1903183, No. 08-5433 (W.D. Wash. May 11, 2010) (Leighton, J.).

Full post as published by Seattle Trademark Lawyer on May 20, 2010 (boomark / email).