SW Legal studies in Business

Attorney Fees Allowed for Prevailing Party Under Lanham Act When Suit Not Justified
Description Appeals court upheld the award of attorney fees to a defendant who prevailed in a trademark infringement suit brought under the Lanham Act. Because the suit itself was meritless and because the plaintiff engaged in legal acts that drove up the legal expenses of the defendant, the award was proper.

Topic Intellectual Property
Key Words Lanham Act; Prevailing Party; Attorney Fees
C A S E   S U M M A R Y
Facts S Industries sued Centra, a software company, claiming that Centra infringed its "Sentra" trademark in violation of the Lanham Act. The trial judge found that S did not hold a federal registration on Sentra for use on software. The judge held that the suit was unfounded and that the costly procedural maneuvering engaged in by S caused the defendant to incur needless expenses. The judge ordered S to pay Centra's attorney fees. S refused to comply with the judge's order that the two sides confer about the fees. The judge ordered S to pay $136,803 in attorney fees for Centra. S appealed the decision.
Decision Affirmed. "We review a grant of attorney fees to a prevailing defendant under the Lanham Act only for clear error. We will not reverse a determination for clear error unless it strikes as wrong with the force of a 5 week old, unrefrigerated, dead fish." The standard under the Lanham Act, when the defendant prevails, is if the plaintiff's action was oppressive; that is, there were elements of abuse. This determination is committed to the trial court's discretion. The plaintiff's claim and behavior here was oppressive; the suit was meritless and was drug out by failing to respond to motions by the other party, by the failure to act in a timely manner, and other antics. The award of attorney fees stands.
Citation S Industries, Inc. v. Centra 2000, Inc., 249 F.3d 625 (7th Cir., 2001)

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