Quaker State Oil Refining Corp. v. Kooltone, Inc., 628

Decision Date10 April 1981
Docket NumberD,No. 628,628
Citation649 F.2d 94
PartiesQUAKER STATE OIL REFINING CORPORATION, Plaintiff-Appellee, v. KOOLTONE, INC., Therm-X Industries Inc., and Therm-X Chemical and Oil Corp., Defendants-Appellants. ocket 80-7797.
CourtU.S. Court of Appeals — Second Circuit

Robert G. Del Gadio, Garden City, N. Y., for defendants-appellants.

Harold Haidt, New York City (Brooks, Haidt, Haffner & Delahunty, New York City, Charles G. Mueller, Edward G. Fenwick, Jr., B. Parker Livingston, Jr., Mason, Fenwick & Lawrence, Washington, D. C., Gerald W. Callahan, Oil City, Pa., of counsel), for plaintiff-appellee.

Before FEINBERG, Chief Judge, Van GRAAFEILAND, Circuit Judge and MALETZ, Judge, United States Court of International Trade. **


Kooltone, Inc., Therm-X Industries, Inc., and Therm-X Chemical and Oil Corp. appeal from a judgment of the United States District Court for the Eastern District of New York after a jury trial before George C. Pratt, J. Quaker State Oil Refining Corporation sued appellants for, inter alia, trademark infringement, unfair competition by means of simulation of trade dress, false description of the nature and quality of their merchandise, and dilution of trademark value. The gravamen of the complaint was that appellants had imitated characteristics of the cans in which Quaker State sold its brand of motor oil, misleading potential Quaker State customers and injuring Quaker State's business and reputation. Appellants filed a counter-claim against Quaker State alleging violation of the antitrust laws, unfair competition and malicious prosecution, but these were dismissed either before trial or before the case was submitted to the jury. The jury then made detailed findings, in a special verdict, under which Quaker State was awarded $30,000 in appellants' profits to be returned, $2 in compensatory damages, and $55,000 in punitive damages. Quaker State later moved for attorney's fees, which Judge Pratt granted in the sum of $50,000.

Although appellants press numerous arguments in their brief, their appeal is completely without merit. Appellants argue that Quaker State's claims for damages should have been dismissed for want of sufficient proof. Appellants claim that since no estimate of their profits was ever adduced at trial, Quaker State failed to establish any basis for the $30,000 jury award on this point. However, the statute governing damages awards in trademark infringement cases specifically states that "In assessing profits the plaintiff shall be required to prove defendant's sales only; defendant must prove all elements of cost or deduction claimed." 15 U.S.C. § 1117. From the testimony of appellants' own corporate officer, Roth, the jury could have found that appellants enjoyed sales of at least $833,000 during the infringement period; appellants proved no "elements of cost or deduction." Under the circumstances, the award of $30,000 was not improper.

Appellants further argue that Judge Pratt erred in awarding attorney's fees to Quaker State, contending that this was not an "exceptional case ( )" justifying such an award under 15 U.S.C. § 1117. Appellants concede, as they must, that their infringement was found to be "deliberate and willful" by the jury, but they assert that this finding is per se insufficient to warrant award of attorney's fees....

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23 cases
  • Joy Mfg. Co. v. CGM Valve & Gauge Co., Inc.
    • United States
    • U.S. District Court — Southern District of Texas
    • 15 Noviembre 1989
    ...attorneys' fees. See Playboy Enterprises v. Baccarat Clothing Co., 692 F.2d 1272, 1276 (9th Cir.1982); Quaker State Oil Refining Corp. v. Kooltone, Inc., 649 F.2d 94, 95 (2d Cir.1981); Playboy Enterprises v. P.K. Sorren Export Co., 546 F.Supp. 987 (S.D. 10. Treble damages and attorneys' fee......
  • Polo Fashions, Inc. v. Rabanne
    • United States
    • U.S. District Court — Southern District of Florida
    • 9 Septiembre 1986
    ...defendant's gross sales of infringing goods. The burden is then on defendant to demonstrate any costs. Quaker State Oil Refining Corp. v. Kooltone, Inc., 649 F.2d 94, 95 (2d Cir.1981); Playboy Enterprises, Inc. v. P.K. Sorren Export Co., supra p. 997. 13. It is reasonable to infer that an a......
  • FENDI ADELE v. Burlington Coat Factory Warehouse
    • United States
    • U.S. District Court — Southern District of New York
    • 23 Marzo 2010
    ...1117(a). The district courts are given considerable discretion in awarding reasonable attorney's fees. Quaker State Oil Refining Corp. v. Kooltone, Inc., 649 F.2d 94, 95 (2d Cir. 1981). Willful infringement generally renders a case "exceptional." Id.; Motorola, 2009 WL 962809, at *10. Attor......
  • MOBIUS MANAGEMENT. SYS. v. Fourth Dimension Software, 94 Civ. 0749 (LAP).
    • United States
    • U.S. District Court — Southern District of New York
    • 30 Noviembre 1994
    ...bad faith violations of the Lanham Act is sufficient to warrant the finding of an exceptional case. See Quaker State Oil Refining Corp. v. Kooltone, Inc., 649 F.2d 94, 95 (2d Cir.1981). Indeed, a district court that fails to at least consider an award of attorney fees after a finding of bad......
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