Trademark Attorney Review of Great Lakes Transportation v. Yellow Cab of Florida
In a case for trademark infringement, attorneys’ fees and costs can be awarded for exceptional trademark cases. However, it is important to recognize the difference between a trademark infringement case versus a contract dispute between two former partners for the use of a trademarked name. This is why it is vital to hire an experienced trademark attorney that understands the nuances of trademark law. Too many attorneys claim to practice trademark law when in fact these attorneys have no real experience in trademark law. In this case, the dispute over whether trademark law applies cost the plaintiff a significant amount of attorneys fees. In fact, the case overall generated 351 separate docket entries which likely required a substantial amount of attorney’s fees.
The dispute arose over the use of METRO CARS and METRO CARSFL where there was allegedly a written agreement that provided a license for the trademarks. The agreement provided that termination of the agreement required discontinued use of the METRO CARSFL. It appears that the trademark argument was that because discontinuation should have occurred, the case shifts to trademark infringement. However, a seasoned trademark attorney would likely recognize that this is a breach of contract. This also highlights the importance of a carefully drafted contract that specifies what happens at the termination of the agreement. It is important to note that the Defendant proffered evidence supporting the argument that a license agreement never existed.
The Lanham Act allows the court to award attorney’s fees to the prevailing party in exceptional cases. However, “exceptional” is not otherwise defined by the Act. In some cases, the courts have held that a case is not exceptional when the trademark infringement was not malicious, willful, fraudulent, or deliberate.
In other cases where the trademark infringer is held to know or should have known that he or she is infringing on a registered trademark, a jury could find willful conduct. And, willful conduct opens the flood gates to attorney’s fees. Willful ignorance of a registered trademark is not an excuse to infringe.
Because a finding of intentional, deliberate, or even willfully ignorant conduct will permit a finding of attorney’s fees and treble damages, it is important to consult a trademark attorney before using any name, symbol, or slogan in commerce.
In this case, the court ultimately found that the plaintiff had a colorable argument to allege trademark infringement. For this reason, the court refused to award attorney fees. However, the court made a particular point to scold the Defendant’s attorney for generating 118 docket entries. The court noted that the question is not whether the amount of time spent by the attorneys were exceptional, but whether the trademark case itself is exceptional. Where, as in this case, there isn’t a trademark cause of action, the case cannot be considered exception under the Lanham Act.
If you have any questions, contact a trademark attorney with Tucker IP today. With an office conveniently located in Fort Lauderdale, Tucker IP services clients throughout South Florida, including West Palm Beach, Broward, Fort Lauderdale, Miami-Dade, and Orlando. Call the Firm toll-free at 1-844-4-TUCKER or or send us an email through the Firm’s website. A firm attorney will contact you for a free consultation.
* The general information provided does not constitute legal advice and should not be used as a substitute for obtaining legal advice from an attorney. Legal cases are in fact that of persons named in the lawsuit and the mention of an attorney herein generally represent that of the client itself.