Remanded To Consider Impact Of Octane Fitness’ Reasoning In Patent Area To Trademark Fee-Shifting Statute.
The Sixth Circuit Court of Appeals, in Slep-Tone Entertainment Corp. v. Karoke Kandy Store, Inc., No. 14-3117 (6th Cir. April 6, 2015) (published), dealt with a case where defendants won a trademark infringement case brought by plaintiff, which abandoned damages on the eve of trial and sought only equitable relief—with the jury sending back an interrogatory finding no infringement. The defense then sought recovery of attorney’s fees under a trademark fee-shifting provision, 15 U.S.C. § 1117(a), applicable to “exceptional” cases. Because this one had to be remanded based on an erroneous determination that the fee request was untimely, the Sixth Circuit also directed that the district judge consider whether the case was “exceptional” for trademark fee shifting based on the U.S. Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749, 1756 n. 6 (2014), which announced standards relating to identical language in a patent fee shifting provision. Many commentators had wondered whether Octane Fitness applied to Lanham Act claims, and this case suggests this may be so.