By Bryan K. Wheelock, Principal
A court in an “exceptional” trademark case brought under the Lanham Act has the discretion to award attorneys’ fees to the prevailing party. However, the Lanham Act does not define “exceptional case.” Over time, each circuit developed its own standard for determining whether a trademark case is exceptional and thus appropriate for fee shifting. In 2014, the U.S. Supreme Court in Octane Fitness, LLC. v. Icon Health & Fitness determined the meaning of “exceptional case” for purposes of a parallel attorneys’ fees provision in the Patent Act.3 This decision left many asking: does this new standard for determining whether a patent infringement case is exceptional under the Patent Act control, or at least affect, the determination of whether a trademark infringement case is “exceptional” under the Lanham Act?
This article outlines the Octane Fitness case and its rationale (Part II); evaluates whether Octane Fitness’s definition of “exceptional case” should apply to the Lanham Act (Part III); reviews whether Octane Fitness’s definition of “exceptional case” is currently being applied by the courts under the Lanham Act (Part IV); and examines whether Octane Fitness has affected fee shifting in trademark cases (Part V).