Intellectual Property Law

Allegation of Willful Infringement Enough for Attorney's Fees Award

By Michael Atkins

Plaintiff Chevron U.S.A., Inc. alleged defendant In N Out Minimart on Broadway, Inc., willfully infringed its trademark. In N Out failed to answer, so the Western District ordered it to be in default.

The first time around, the court denied Chevron’s motion for entry of default judgement with an award of fees and costs because Chevron did not set forth the basis for the award. The second time around, Chevron sought fees as an “exceptional” case under the Lanham Act, which the court granted based on Chevron’s allegations and In N Out’s failure to participate in the case.

The court found: “While the term ‘exceptional’ is not defined in the statute, attorneys’ fees are available in infringement cases where the acts of infringement can be characterized as malicious, fraudulent, deliberate, or willful.’ In this case, the complaint explicitly alleged that defendant’s conduct was willful. As the Derek Andrew, Inc. [v. Poof Apparel Corp., 528 F.3d 696 (9th Cir. 2008)] court explained, once default has been entered, the allegations in the complaint, except with respect to the amount of damages, are taken as true. Accordingly, the relevant allegations in the complaint are taken as true, including the allegation that defendant willfully infringed plaintiff’s trademark. That allegation and the entry of default sufficiently establish plaintiff’s entitlement to attorney’s fees under the Lanham Act.”

The case cite is Chevron U.S.A., Inc. v. In N Out Minimart on Broadway, Inc., No. 09-18, 2009 WL 1608458 (W.D. Wash. June 5, 2009) (Lasnik, J.).

Full post as published by Seattle Trademark Lawyer on June 24, 2009 (boomark / email).