A federal court in the Western District of North Carolina recently awarded over $218,000 in attorneys’ fees and more than $13,000 in costs to our clients in a trademark infringement case we defended from start to finish. The Plaintiffs alleged that our clients, a non-profit hospital system and community health organization, infringed a registered trademark through their own branding. After nearly two years of litigation, we defeated a motion for preliminary injunctive relief, excluded the Plaintiffs’ expert testimony, and secured summary judgment, with the court finding that no reasonable jury could conclude infringement had occurred. The court ended up finding that every likelihood-of-confusion factor favored our clients: the Plaintiffs’ mark was weak, the marks were dissimilar, the services were different, and the evidence of intent and actual confusion was negligible.
After summary judgment, we moved for attorneys’ fees under Section 35(a) of the Lanham Act, which allows fee-shifting only in “exceptional cases.” That is a high standard, and courts do not apply it simply because one side lost. The court agreed that that this case was exceptional and that fee shifting was appropriate. We are pleased with the result for our clients, and it reinforces an important lesson for any company considering a trademark enforcement action: the Lanham Act cuts both ways, and filing an infringement suit without a solid foundation on the likelihood-of-confusion factors doesn’t just risk losing. It risks paying the other side’s legal bill.
You can read the whole order here: [ Order ]
