9th Cir Continues To Not Apply OCTANE To Trademarks

Ninth Circuit reminds us that it already has decided that it is not bound to apply Octane Fitness’ (134 S. Ct. 1749) definition of “exceptional” in the context of the Lanham Act’s fee-shifting provision. Rather than evaluate ‘exceptional’ under a ‘totality of circumstances’ test, the Ninth Circuit will look to whether there was ‘malicious, fraudulent, deliberate or willful’ infringement.


5th Circuit Extends Octane Fitness Fee Rule to Trademarks

Noting the similarity between the language of Section 285 of the Patent Act, the Fifth Circuit extends Octane Fitness to cover Section 1117(a) of the Lanham Act as to what constittutes an exceptional case for purposes of awarding attorney’s fees. Departing from the standard that ‘exceptional’ means a case that is brought in bad faith, Octane Fitness looks to the ordinary meaning of exceptional, namely uncommmon, rare, not ordinary, unusual, special and not run-pf-the-mill.