Welding Servs. v. Forman, 2008 U.S. App. LEXIS 24402 (11th Cir. Ga. Dec. 2, 2008)
NOTICE: SEE FEDERAL RULES OF APPELLATE PROCEDURE RULE 32.1 WHICH GOVERN CITATION TO UNPUBLISHED OPINIONS.
The District Court entered a summary judgment in favor of the defendant/appellee and ordered the plaintiff/appellant to pay attorneys fees. The court of appeals examined whether the district court abused its discretion when awarding attorneys fees to the defendant/appellee. In awarding attorneys fees to the defendant/appellee, the district court cited the following factors (1) the trademark holder waited until three of its former employees acquired the alleged infringer, even though the alleged infringer had used the mark two years prior to the lawsuit commencing; (2) The alleged infringer tried to resolve the dispute without litigation, and responded to the holder’s cease and desist letter by volunteering to change the mark; and (3) Despite offers of settlement, including a pre-discovery offer of judgment, the trademark holder pursued the litigation. The court of appeals found that the district court did not abuse its discretion in awarding attorneys fees to the defendant/appellee. Also, the plaintiff/appellant waived its challenge of the attorneys fees award because the plaintiff/appellee did not challenge the amount at the district court level.
On another issue, the court of appeals did find that the district court erred in one respect. The court of appeals ruled contrary to the district court’s finding that the defendant/appellee had volunteered to change the allegedly offending mark in offer of settlement.
The district court’s judgment was reversed in part, affirmed in part, and remanded.