Intellectual Property: Federal Circuit Agrees That Octane Fitness Standards Apply To Determining “Exceptional” Fee Awards Under Lanham Act

Federal Circuit Is Aligned With Third, Fourth, Fifth, Sixth, and Ninth Circuits On This Issue.

            In our October 24, 2016 post, we discussed the Ninth Circuit’s decision in SunEarth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179 (9^th Cir. Oct. 24, 2016) (per curiam), which held that attorney’s fees awards under Lanham Act’s “exceptional” language are guided by the same factors articulated in SCOTUS’ patent Octane Fitness/Highmark duology—the meaning Patent Act standards in this area are applicable to a Lanham Act fee award.   The Third, Fourth, Fifth, and Sixth Circuits also have so held.

            We can now report that the Federal Circuit agrees with these other circuits on this issue.  See Romag Fasteners, Inc. v. Fossil, Inc., 866 F.3d 1330 (Fed. Cir. 2017) (Judge Dyk for the court).  Judge Newman concurred as to the standard to apply, and dissented as to whether the trial court abused its discretion in awarding attorney's fees.