Linking Patent and Trademark Attorney Fees

[UPDATE – Fixed an error – I had previously suggested that the mark at issue was a product design mark, it is not]

Romag Fasteners v. Fossil is a rare infringement case that involves allegations of both patent and trademark infringement.  The important aspect of the Federal Circuit’s decision here harmonizes the attorney fee requirements for trademark and patent cases.

A jury sided with Romag – finding that Fossil’s magnetic snaps infringed both the asserted patent and trademark (product design). (U.S. Patent No. 5,722,126 and U.S. Trademark Reg. No. 2,095,367).

The jury returned a verdict for Romag, finding that Fossil had engaged in patent and trademark infringement. The district court granted fees related to the patent portion of the case but denied fees on the trademark side.  On appeal, the Federal Circuit has vacated that judgment.

Lanham Act and Patent Act provide identical language for awardinging reasonable attorney fees to the prevailing party in exceptional cases: “The court in exceptional cases may award reasonable attorney fees to the prevailing party.”  35 U.S.C. 285; 15 U.S.C. 1117(a).  Based upon the identical language of the statutes, the appellate court here ruled that the Supreme Court’s Octane Fitness approach to fees in patent cases also applies in Trademark cases.  The Second Circuit had previously (pre-Octane Fitness) required “evidence of fraud or bad faith.” Under Octane Fitness, that requirement is unduly strict and improper.  All of the other Circuit courts who have considered the issue agree with the Federal Circuit that Octane Fitness applies to TM cases under Section 1117(a). Because the court applied the incorrect standard, this TM portion of the case was remanded to determine whether fees are appropriate.

On the patent side, the appellate panel also found “several errors” by the district court – and thus vacated that grant of fees.  These errors include (1) a misstatement as to the timing of the defendant’s withdrawal of its defenses and that those defenses were pursued  in order to “prolong litigation;” (2) no conclusion as to the actual merit of the withdrawn defenses; (3) misstatements regarding prior court ruling on the inadequacy of the rejected indefiniteness defense as “woefully inadequate; and (4) failure to consider the totality of the circumstances, including the plaintiff’s bad-faith of waiting until just before Black Friday to file its case and request a TRO.  Coming together, these issues require vacatur of the fee award on the patent side.

On remand, the district court will be asked to again reconsider an award of fees to the successful plaintiff Romag.

The Majority opinion was penned by Judge Dyk and joined by Judge Hughes.  Judge Newman dissented-in-part. “I do not discern where, or how, the district court abused its discretion, for the district court reasonably observed that this case ‘stood out from the others,’ in the words of Octane Fitness, concluding that Fossil ‘aggressively pursue[d] invalidity counterclaims in an attempt to prolong litigation and exponentially increase the cost and risk of pursuing a lawsuit.'” Newman in dissent.

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For me, an interesting aspect of the case here involves the correct level of granularity for the “prevailing party” finding.  The court here divides of the portions of lawsuit between the various doctrines — patent; trademark; CT state unfair competition; etc.  For each, the court determined the ‘prevailing party’ and apportioned fees accordingly – even though the losing party had won on some smaller issues.  At this point, I do not believe that the Federal Circuit has strictly adopted this approach – rightly so because there is almost always overlap.  Here, for instance, the TM discovery was almost certainly overlapping with the patent discovery.

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I have not examined the full history here, but the Trademark appears to cover the product design, which is also to the subject of the patent.  TrafFix? The mark covers ROMAG.

33 thoughts on “Linking Patent and Trademark Attorney Fees

  1. 3


    As a fairly regular reader (and echoing the thoughts of many colleagues), THE COMMENTS OF MM NEED TO BE STOPPED.

    This blog is becoming unreadable. The comments should be a valuable place to trade PATENT-RELATED ideas.

    See, for example, comment 3 below.

    1. 3.1


      This draws a sharp distinction to what IS being blocked.

      Note on two separate threads this morning I posted pieces of dialogue that are being editorially controlled.

      Compare the actual content of my attempts at sharing actual PATENT-RELATED dialogue with what (until you called it out) was being editorially permitted.

      Then realize that not only does this happen all the time, but has been happening – in one form or another – for several years now.

      We even has a thread dedicated to “ecosystem,” and on that thread it was revealed that Malcolm’s same style of posting has been going on for what is now 11 years – WELL before I started providing rebuttals to the blight.

      This comment itself may not survive the light of day (as it does not conform with a desired narrative on this blog), but make no mistake – the perceptions that I point out – that are reflected in YOUR comment – not only survive, but are amplified with the editorial choices.

    2. 3.2

      The comments should be a valuable place to trade PATENT-RELATED ideas.

      I’m not going to play the game and pretend that everything is “normal” here in the United States where one of the major political parties has become terminally infested by emboldened neo-N@ zis and white suprem @cists.

      Many patent attorneys belong to that political party. They voted from Hair Tw ittler, and their proud of it.

      Yes, this is a problem for the profession in general because (and this has been clear for some time) the kinds of “deep thinkers” who tend to trade in white p0 wer rhetoric also tend to quickly latch onto to other psy ch 0tic delusions. And the next thing you know they’re howling that patent attorneys (among others) who support a fully-fanged section 101 are “treasonous.” On top of that, there’s this endlessly whining contingent of entitled “anti-PC” (but very sensitive!) glibertarian patent peddlers who fit in perfectly right alongside the br 0wnshirts. It’s disgusting. And especially right now sitting on your hands and not calling people out on their effed up r@ cist mis 0gynist b.s. is also disgusting and wrong. It doesn’t matter where you are.

      1. 3.2.1

        No one is asking you to play any game or pretend anything.

        What you seem not to grasp though is that this is a forum for patent law.

        It really is not that difficult of a concept to grasp.


          I’ve been listening to you whine here about commies and ivory towerists for years you hypocritical paranoid crybaby ch ump. Good grief. You can’t escape what’s happened and what’s happening you r@ cist enabling piece of shirt.


            What you did when label “whining” is STILL directly related to patent law.

            Again – this is just not that difficult to grasp.

            You have to be trying REALLY hard to be so off.

            And my patent views have ZERO to do with ANY sense of enabling.


              “anon’ [commies and ivory towerism] is …directly related to patent law

              But somehow talking about actual real life rich entitled white glibertarian crybabies who moan and cry non-stop about their precious patent rights is …. not directly related to patent law? Or the fact that these loudmouths are almost always sp ew in g Republikkkan and glibertarian talking points?

              Like I said, “anon”: you’re either part of the solution or you’re part of the problem. Go ahead and argue that complaining about a mis 0gynist r@ cist white supremacist pandering Presidant is “part of the problem” if you like. I’d love to hear the argument. I mean, maybe you’re right: we should all be just like you and cross our eyes until “both sides look the same.” Isn’t that how you achieve serenity and satisfaction in the mailroom, oh unbiased and totally objective great one?


                somehow talking about actual real life rich entitled white glibertarian crybabies who moan and cry non-stop

                Your posts are decidedly NOT about the gossamer thread to patent law that you seek now to weave.

                They clearly are pure political rants.

                You’ve been expunged twice in a few days, and yet your EGO keeps on prompting you to push those SAME buttons on nearly every thread.

                You are the Trump of these boards, and it is stultifying.

                Great job Prof.

                1. Make that (albeit an entirely inconsistent) third time as yet another thread is purged (at least somewhat) of Malcolm’s pure political rants.

                  Of course, these one-offs will just not matter to someone whose ego overrides any sense that this is a patent law (oops, so sorry, an intellectual property law) blog.

                  11 years of the sAme one’s blight…

                  You would think that some pizza over the weekend at the local coffee shop could have taken care of this by now…

      2. 3.2.2

        And Prof. Crouch, aside from the fact that it is I pointing this out, do you really need for someone to point out that Malcolm’s “manifesto” at 3.2 is merely a thinly veiled rant of the type that you have now eradicated twice within a few days?

        The ONLY tie attempted by Malcolm is “Many patent attorneys belong to that political party.

        EVERYTHING else is the same old Malcolm screed.

        His “mission” (a self-appointed one, similar to how he feels about patent eligible subject matter) is STILL “directed to” pure politics.

        Maybe surrog should “howl” or “whine” about the editorial controls choosing to “sit[] on their hands,” because “calling people out” has everything to do with patent law…

  2. 2

    ” Trademark appears to cover the product design, which is also to the subject of the patent. TrafFix? ”

    The 4Cir in McAirlaids v Kimberly-Clark said McAirlaid’s mark and patent could coexist as long as the utility claims don’t specifically cover the trade dress/mark. I don’t think that’s outside of the guidance of TrafFix, which mainly gave a rebuttable presumption to show the mark/dress protection sought wasn’t the function of the thing.

    Not to mention I think I recall that K-C itself eventually registered a mark on one of their medical fabric’s bond pattern designs that had previously been covered by patent (utility or design or both, I am not sure).

    1. 2.1

      Mellow Marsher,

      Either Dennis is or I am confused. U.S. Trademark Reg. No. 2,095,367 is for the word mark, ROMAG.

      1. 2.1.1

        Thank you! I don’t know what I was thinking here. I have updated the post to reflect the fact that this is a word-mark rather than covering product design.

  3. 1

    Protest tomorrow bros, not sure what about.

    “Tomorrow, August 11, we expect a peaceful rally to occur on our Alexandria Campus. A group from US Inventor plans to voice its concerns about certain policies related to the Patent Trial and Appeal Board (PTAB).

    The Office of Security is aware of the rally and will implement additional security measures to ensure the safety of our employees. “

      1. 1.2.3

        I signed their petition, but I didn’t have the heart to tell them that I was perhaps one of the leading “thought leaders” that came up with the abstract idea test modeled from Benson’s preemption that was partly what the petition was against.


    1. 1.3

      Turnout (10-15ish?) seems unimpressive.

      Sufficiently small protests send the opposite message intended.

      1. 1.3.3

        Idk what the peak turnout was. And you’re right about the message somewhat. However, I don’t know how large this group actually is or their organizational ability.

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