In 2014, the United States Supreme Court loosened the exceptional case standard in patent infringement cases. Because the Patent Act and Trademark Act are similar, often times a decision involving one of these Acts will influence the jurisprudence of the other Act. The loosening of the exceptional case standard is one of those decisions.
It did not take long for the Supreme Court’s decision in Octane Fitness v. Icon Health to start to influence trademark infringement cases. The Court of Appeals for the Sixth Judicial Circuit was the first to apply the loosened exceptional case standard to trademark infringement cases. Since then, the Third, Fourth, Fifth, Ninth, and most recently the Second Circuits along with a smattering of District Courts in the other Judicial Circuits have all held that the Supreme Court’s Octane Fitness decision applies to trademark infringement cases.
The most recent application of the Octane Fitness decision came from the Second Circuit Court of Appeals. 4 Pillar Dynasty LLC and Reflex Performance Resources Inc. (collectively the “Plaintiffs”) sued New York & Company, Inc. and New York & Company Stores, Inc. (collectively the “Defendants”) for trademark infringement. The District Court for the Southern District of New York initially awarded the Plaintiff treble damages in the amount of about $5.6M. However, after post-trial motions, the Court reconsidered its trebling decision and changed the award to the stipulated amount of the Defendants profits, which was $1.8M. The Court did award Plaintiffs its attorneys’ fees.
The Second Circuit Court of Appeals reversed the District Court’s decision not to treble the monetary damage award because the Court failed to applied the loosened exceptional case standard from Octane Fitness. The Octane Fitness standard requires a court to consider the totality of the circumstances in deciding whether a case is exceptional.
The totality of the circumstances standard considers not only the respective merits of the parties cases but also the parties conduct during and even leading up to the commencement of the case. While it is still unlikely that failing to conduct a trademark search will alone warrant a finding that a case is exceptional, it certainly will be a consideration.