Intellectual Property: District Judge Properly Denied Fees To Prevailing Party In Trademark Infringement Action

Trademark Did Not Arise Under The Contract Or Involve Exceptional Circumstances Under The Lanham Act.

               Plaintiff lost a trademark infringement suit against a defendant alleging use of a different mark than defendant’s trademark use.  There was a contractual fees clause under a partnership agreement involving uses of marks different than the one involved in the infringement action.  Defendant moved for contractual and Lanham Act fees for prevailing, claiming under the Lanham Act that the case was exceptional in nature.  The district judge denied the defense motion for fees.

               The Ninth Circuit affirmed in BillFloat Inc. v. Collins Cash Inc., Case No. 23-15405 et al. (9^th Cir. July 1, 2024) (published).  The partnership agreement only concerned use of a different mark; and, in any event, a trademark infringement claim was found to be totally independent of the parties’ partnership agreement because it arose four years earlier before the partnership agreement was signed.   With respect to the Lanham Act fee claim, the appellate court agreed that the claim was not meritless based on dismissal of a single contract claim and based upon the facts that the prelitigation activities by plaintiff were not egregious enough to warrant an award of fees (just normal exercises which may have not been productive).