Nat'l Assoc. of Profes Baseball Leagues v. Very Minor Leagues, No. 99-6007

Decision Date28 July 2000
Docket Number99-6008,No. 99-6007
Citation223 F.3d 1143
Parties(10th Cir. 2000) NATIONAL ASSOCIATION OF PROFESSIONAL BASEBALL LEAGUES, INC., Plaintiff-Appellee-Cross-Appellant, v. VERY MINOR LEAGUES, INC., Defendant-Appellant-Cross-Appellee
CourtU.S. Court of Appeals — Tenth Circuit

Appeal from the United States District Court for the W.D. Okla. (D.C. No. CIV-97-1213-R) James W. Tilly of Tilly & Associates, Tulsa, Oklahoma, for Defendant-Appellant-Cross-Appellee.

Douglas E. Hart of Frost & Jacobs LLP, Cincinnati, Ohio, for Plaintiff-Appellee-Cross-Appellant.

Before EBEL,HOLLOWAY, and HENRY, Circuit Judges.

BACKGROUND

EBEL, Circuit Judge.

The National Association of Professional Baseball Leagues, Inc. ("Professional Baseball Leagues") owns the trademark "Professional Baseball The Minor Leagues" and its accompanying logo. Very Minor Leagues, Inc. ("Very Minor Leagues") is an Oklahoma corporation that manufactures, markets, and sells baseball caps and t-shirts featuring the names and logos of fictitious baseball teams.1

Very Minor Leagues applied to the United States Patent and Trademark Office ("PTO") for registration of the mark "Very Minor Leagues" on June 30, 1994. Very Minor Leagues' application was published for opposition on April 18, 1995. Professional Baseball Leagues filed a Notice of Opposition to Very Minor Leagues's application on August 21, 1995, after being granted two extensions by the PTO. In its Notice of Opposition, Professional Baseball Leagues contended it owned common law trademarks in "The Minor Leagues" and "Minor League Baseball," and that registration of the trademark requested by Very Minor Leagues would create confusion among consumers, tarnish Professional Baseball Leagues' marks, and dilute Professional Baseball Leagues' trademark and trademark rights.

On September 15, 1995, Professional Baseball Leagues filed an application to register the trademark "Minor League Baseball" in International Classes 16 (Paper Goods) and 200 (Collective Service Mark.) On the same date, Professional Baseball Leagues filed an application to register the trademark "The Minor Leagues" in several classes, including International Class 25 (Clothing). The assigned examining attorney refused Professional Baseball Leagues' applications to register the marks "Minor League Baseball" and "The Minor Leagues" after determining that the marks were likely to be confused with a mark already registered by Barbara J. Durrell for "Minor Leagues Major Dreams." The examining attorney also noted the pendency of Very Minor Leagues' application, and stated that if Very Minor Leagues' request ripened into a trademark, there would likely be confusion with that mark as well.

In late spring or early summer of 1996, The Hearst Corporation, King Features Syndicates Division ("King Features") contacted Very Minor Leagues regarding the possibility of a licensing agreement between Very Minor Leagues and King. During the course of negotiations, Very Minor Leagues revealed the pending trademark dispute with Professional Baseball Leagues. Counsel for Very Minor Leagues informed Professional Baseball Leagues counsel on June 27, 1996, that the trademark opposition proceedings were inhibiting culmination of an agreement between Very Minor Leagues and an international company. On June 28, 1996, Very Minor Leagues filed a motion for summary judgment with the Trademark Trial and Appeal Board ("TTAB"), asking that Professional Baseball Leagues' opposition to Very Minor Leagues' mark be dismissed with prejudice. On July 18, 1996, the TTAB entered an order suspending the opposition proceedings pending the outcome of Very Minor Leagues' summary judgment motion. On July 29, 1996, Professional Baseball Leagues filed a motion seeking an extension for its response to the motion by Very Minor Leagues in order to permit discovery. On November 14, 1996, the TTAB granted Professional Baseball Leagues' requested discovery extension.

While Very Minor Leagues' motion for summary judgment in the opposition proceeding remained pending, Professional Baseball Leagues initiated this litigation in the United States District Court for the Middle District of Florida. In its complaint, Professional Baseball Leagues alleged trademark infringement, false designation of origin, trademark dilution, and unfair competition under federal statutes and common law. On April 1, 1997, the TTAB granted a request by Professional Baseball Leagues to suspend the opposition proceedings pending the outcome of the judicial proceedings. The litigation was then transferred to the Western District of Oklahoma in July 1997.

King Features withdrew its offer to enter into any licensing agreement with Very Minor Leagues. Very Minor Leagues alleges this was because of the dispute with Professional Baseball Leagues. As a result, Very Minor Leagues filed counterclaims in the litigation pending in the Western District of Oklahoma against Professional Baseball Leagues for (1) cancellation of the trademark "Professional Baseball The Minor Leagues," (2) tortious interference with a prospective economic advantage, (3) prima facie tort, and (4) abuse of process.

Professional Baseball Leagues filed a motion for partial summary judgment on Very Minor Leagues' second, third, and fourth counterclaims. The district court granted Professional Baseball Leagues' motion, finding the evidence offered by Very Minor Leagues on each of the three counterclaims insufficient to withstand summary judgment. The case then proceeded to trial. At the close of evidence, Very Minor Leagues dismissed its remaining counterclaim for cancellation of Professional Baseball Leagues' registered trademark "Professional Baseball The Minor Leagues." The jury returned a verdict in favor of Very Minor Leagues on Professional Baseball Leagues' trademark infringement, false designation of origin, unfair competition, and trademark dilution claims. Very Minor Leagues filed a motion for attorney fees as the prevailing party, which the district court denied. According to the district court, recovery of attorney fees under 15 U.S.C. 1117(a) required, for both prevailing plaintiffs and prevailing defendants, a showing that the other party had acted in bad faith, and Very Minor Leagues had failed to make such a showing.

Very Minor Leagues appeals the district court's order denying it attorney fees and the district court order granting partial summary judgment in favor of Professional Baseball Leagues on Very Minor Leagues' counterclaims for tortious interference with prospective economic advantage, prima facie tort, and abuse of process. Professional Baseball Leagues cross appeals the district court's exclusion of evidence of its trademark use after June 22, 1994, the first date of Very Minor Leagues' use of its trademark.

DISCUSSION

The district court had original jurisdiction over the trademark claims pursuant to 28 U.S.C. 1338,2 and supplemental jurisdiction pursuant to 28 U.S.C. 1367. We have jurisdiction under 28 U.S.C. 1291.

I. Attorney Fees for Prevailing Defendants Under Section 35(a) of the Lanham Act
A. Standard of Review

We review a district court's decision on whether to award attorney fees for abuse of discretion, but we review de novo the district court's application of the legal principles underlying that decision. See Neustrom v. Union Pacific R.R., 156 F.3d 1057, 1067 (10th Cir. 1998).

B. Merits

In assessing Very Minor Leagues' claim that the district court should have awarded it attorney fees, we are governed by the relevant provision of the Lanham Act. That provision provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." See 15 U.S.C. 1117(a) (emphasis added). Thus, being the prevailing party is not, by itself, enough to justify an award of attorney fees. Moreover, even in exceptional cases, the award of attorney fees is vested in the discretion of the district court. The statute itself does not define "exceptional cases," but the legislative history to the statute suggests two considerations for prevailing defendants who seek attorney fees. One, an objective consideration, is whether the suit was "unfounded." See S. Rep. No. 93-1400, at 2 (1974), reprinted in 1974 U.S.C.C.A.N. 7132, 7133. The other, a subjective consideration, is whether the suit was brought by the trademark owner "for harassment and the like." Id. The legislative history further advises that an award of attorney fees to a prevailing party is authorized where "justified by equitable considerations." Id. at 1, reprinted in 1974 U.S.C.C.A.N. 7132.3

No one factor is determinative, and an infringement suit could be "exceptional" for a prevailing defendant because of (1) its lack of any foundation, (2) the plaintiff's bad faith in bringing the suit, (3) the unusually vexatious and oppressive manner in which it is prosecuted, or (4) perhaps for other reasons as well. The Lanham Act largely vests in the district court the discretion to determine when a losing plaintiff's claims or conduct in the litigation are so "exceptional" as to warrant the assessment of attorney fees. The focus of the analysis is not only on whether the defendant prevailed, or concomitantly, whether the plaintiff lost. Not every losing suit is without foundation, and not every strategic decision by a plaintiff in bringing suit and in prosecuting it in a manner to enhance the prospects of success is done for the purpose of harassment or another improper purpose.

Although the circuits, in attempting to clarify the "exceptional cases" language in the statute, have developed a variety of criteria for analyzing the propriety of attorney fee awards for prevailing defendants under the Lanham Act, the standards used by many of them ultimately incorporate the same objective and subjective elements that we do. We are disinclined to add additional judicial gloss onto the statutory language. Rather, we think the district...

To continue reading

Request your trial
48 cases
  • Nat. Nonwovens v. Consumer Products Enterprises
    • United States
    • U.S. District Court — District of Massachusetts
    • 31 October 2005
    ...Lipscher v. LRP Publ'ns, 266 F.3d 1305, 1320 (11th Cir.2001) (fraud or bad faith standard); Nat'l Ass'n of Prof'l Baseball Leagues v. Very Minor Leagues, 223 F.3d 1143, 1149 (10th Cir.2000) (rejecting bad faith, and requiring that a suit be "unfounded" or brought for "harassment and the lik......
  • U.S. ex rel. Grynberg v. Praxair, Inc., No. 01-1214.
    • United States
    • U.S. Court of Appeals — Tenth Circuit
    • 15 November 2004
    ...novo the district court's application of the legal principles underlying that decision. Nat'l Ass'n of Prof'l Baseball Leagues, Inc. v. Very Minor Leagues, Inc., 223 F.3d 1143, 1146 (10th Cir.2000). The FCA does not define the terms "clearly frivolous, clearly vexatious, or brought primaril......
  • Pound v. Airosol Company, Inc.
    • United States
    • U.S. Court of Appeals — Tenth Circuit
    • 20 August 2007
    ...novo the district court's application of the legal principles underlying that decision." Nat'l Ass'n of Prof'l Baseball Leagues, Inc. v. Very Minor Leagues, Inc., 223 F.3d 1143, 1146 (10th Cir.2000). For the following reasons, we conclude the district court erred. 1. Some Degree of Success ......
  • Yankee Candle Co. v. Bridgewater Candle Co., LLC
    • United States
    • U.S. District Court — District of Massachusetts
    • 14 May 2001
    ...requiring bad faith or other culpability, others following a less stringent approach. See, e.g., Nat. Ass'n. of Prof'l Baseball v. Very Minor Leagues, 223 F.3d 1143, 1149 (10th Cir.2000) (holding fees justified where suit was "unfounded" or brought for "harassment and the like," rejecting s......
  • Request a trial to view additional results
2 books & journal articles
  • Redefining Attorney-Fee Shifting Under the Lanham Act: Protecting Small Businesses and Deterring Trademark Infringement
    • United States
    • Iowa Law Review No. 98-2, January 2013
    • 1 January 2013
    ...v. Amway Corp., 280 F.3d 519, 527 (5th Cir. 2002)). 62. Compare Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Very Minor Leagues, Inc., 223 F.3d 1143, 1147 (10th Cir. 2000) (considering both subjective and objective factors for a finding of “bad-faith”), with Interstate Net Bank v. NetB@n......
  • Exceptionally Vague: Attorney Fee Shifting Under the Lanham Act
    • United States
    • University of Georgia School of Law Journal of Intellectual Property Law (FC Access) No. 23-1, 2015
    • Invalid date
    ...v. Playmates Toys, 108 F.3d 140, 143 (7th Cir. 1997).109. National Ass'n of Prof'l Baseball Leagues, Inc. v. Very Minor Leagues, Inc., 223 F.3d 1143, 1148 (10th Cir. 2000) (doubting the feasibility of an identical standard for plaintiffs and defendants).110. Id.111. Patsy's Brand, Inc. v. I......

VLEX uses login cookies to provide you with a better browsing experience. If you click on 'Accept' or continue browsing this site we consider that you accept our cookie policy. ACCEPT