Exceptionally Vague: Attorney Fee Shifting Under the Lanham Act

– Kelsie Willett

Unlike the typical “American System” standard for attorney’s fees, Federal IP law generated has allowed for the award of attorney’s fees only in “exceptional” cases. Judge Posner identified that “a rainbow of standards has been promulgated to define the word ‘exceptional’ in the Lanham Act.” Naturally, the Circuit Courts have interpreted the standard differently, causing confusion and inconsistent results from court to court. In this Note, Kelsie Willett articulates her recommended standard for a determination of “exceptionality,” which requires the presence of malicious, fraudulent, deliberate, or willful conduct, holding plaintiffs and defendants to equal burdens, and considering both pre-litigation conduct and conduct occurring during the litigation. Some believe the language of the Lanham Act pertaining to attorney’s fees is intentionally vague and that an award of fees should be difficult to obtain. Others argue various standards that should be implemented uniformly to ensure confidence in the trademark system. In a landscape where the U.S. government seizes nearly $2 billion every year as a result of trademark enforcement actions, the resolution of this issue could provide much needed stability to the system and provide notice to would-be infringers of their obligation to pay attorney’s fees.

Abstract Written by Ryland J. Jennings, 2018