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Tenth Circuit Sets Patent Standard for Trademark Attorney Fee Awards

June 13, 2021 | Posted in : Exceptional Case, Fee Award, Fee Issues on Appeal, Practice Area: IP Litigation

A recent Reuters story by Blake Brittain, “10th Circuit Adopts Patent Law Standard for Trademark Attorneys’ Fees,” reports that the 10th U.S. Circuit Court of Appeals ruled Tuesday that the U.S. Supreme Court’s attorneys’ fees standard for “exceptional” patent cases also applies to trademark cases, joining every other U.S. circuit court in applying the standard to Lanham Act disputes.

The Supreme Court's 2014 decision in Octane Fitness made it easier for litigants to recover attorneys' fees under the Patent Act's fee-shifting provision, and it applies to trademark law because of the Lanham Act's identical provision, U.S. Circuit Judge Carlos Lucero wrote for a three-judge panel.

Plaintiff Derma Pen LLC and its attorney Michael Zimmerman of Zimmerman Booher didn't immediately respond to a request for comment. Jefferson Gross of Gross & Rooney, who represented defendants Joel and Sasha Marshall, also didn't immediately respond to a request for comment.

Derma Pen makes microneedles for skin treatments, and won a permanent injunction in Utah federal court in 2017 against Stene Marshall, who had been misusing the "Dermapen" name to sell his own products, to stop him from infringing its trademark.

Derma Pen later moved to hold Marshall's brother and sister-in-law Joel and Sasha Marshall in contempt for acting in concert with him to violate the injunction. They fended off Derma Pen's motion and won more than $190,000 in attorney fees in 2019 after U.S. District Judge David Nuffer in St. George, Utah found the case exceptional under Octane Fitness, which said that an exceptional case is "simply one that stands out from others" in the strength of a party's litigating position or unreasonable manner of litigation.

Nuffer noted in his decision on Derma Pen's claims against Joel and Sasha Marshall that Derma Pen provided no evidence of damages, had abandoned its trademark, and failed to comply with discovery orders, among other things.

Lucero, joined by Circuit Judges Harris Hartz and Allison Eid, decided to add to the "chorus of circuits" that have applied Octane Fitness to trademark cases, citing the relevant laws' identical language, indications in the Octane Fitness ruling that the two provisions should be interpreted the same, and Congress' reference to the Patent Act in enacting the Lanham Act provision.