Last year, the U.S. Supreme Court relaxed the standard for awarding attorneys’ fees to the prevailing party in patent infringement cases.  Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014).  The Court in Octane decided that the prevailing party need merely show that the case “stands out from the others” rather than the earlier standard that required showing the losing party’s case was “objectively baseless” and lodged in subjective bad faith.

The Lanham Act’s mandate to award attorneys’ fees in “exceptional” cases is identical to the Patent Act’s fee provision.  In fact, the Supreme Court in Octane cited a Lanham Act case while defining “exceptional.”  This has stirred speculation as to whether Octane’s lower bar for awarding fees should apply to trademark infringement cases.  

Since the Octane ruling, several federal courts have applied the Octane ruling in trademark infringement cases, but one Connecticut federal judge refused to apply the Octane standard.  In a recent trademark infringement case, the district court refused to award fees to the prevailing defendant on the basis that the motion for fees was untimely and the case was not sufficiently exceptional.  On appeal, the Sixth Circuit overturned the ruling that the motion for fees was not timely filed, and remanded back to the district court to give full consideration to whether the case is exceptional enough to merit fees to the prevailing party.  The Sixth Circuit noted that the fee-shifting provision in the Patent Act and the Lanham Act are identical and that “statutes using the same language should generally be interpreted consistently.”

Slep-Tone Entertainment Corpor v. Karaoke Kandy Store Inc. et al, Case No. 14-3117 (6th Cir., April 2015).