PUBLISH 

UNITED STATES COURT OF APPEALS 

FOR THE TENTH CIRCUIT 

_________________________________ 

XLEAR, INC., a Utah corporation, 

 Plaintiff - Appellant, 

v. 

FOCUS NUTRITION, LLC, a Utah limited 

liability company, 

 Defendant - Appellee. 

No. 17-4126 

_________________________________ 

Appeal from the United States District Court 

for the District of Utah 

(D.C. No. 2:16-CV-00643-DB)

_________________________________ 

Timothy B. Smith (Kenneth A. Okazaki and Taryn N. Evans with him on the briefs), 

Jones Waldo Holbrook & McDonough, P.C., Salt Lake City, Utah, for Plaintiff - 

Appellant. 

Matthew A. Steward (Shannon K. Zollinger with him on the brief), Clyde Snow & 

Sessions, P.C., Salt Lake City, Utah, for Defendant - Appellee. 

_________________________________ 

Before MATHESON, McHUGH, and EID, Circuit Judges. 

_________________________________ 

McHUGH, Circuit Judge. 

_________________________________ 

 Xlear, Inc. and Focus Nutrition, LLC are both in the business of selling 

sweeteners that use the sugar alcohol xylitol. Xlear filed a complaint raising a trade 

FILED 

United States Court of Appeals 

Tenth Circuit 

June 26, 2018

Elisabeth A. Shumaker 

Clerk of Court
2 

dress infringement claim under the Lanham Act, a claim under the Utah Truth in 

Advertising Act (UTIAA), and a claim under the common law for unfair competition. 

The claims all alleged that Focus Nutrition copied the packaging Xlear used for one 

of its sweetener products. Focus Nutrition moved to dismiss Xlear’s Lanham Act 

claim. At a hearing on Focus Nutrition’s motion to dismiss, the district court judge 

made several comments questioning the validity of Xlear’s Lanham Act claim but, 

ultimately, denied the motion. Following the hearing, the parties, pursuant to Federal 

Rule of Civil Procedure 41(a)(1)(A)(ii), stipulated to the dismissal of all claims with 

prejudice. Under the stipulation, the parties reserved the right to seek attorneys’ fees 

and Focus Nutrition exercised its right by filing a motion under Federal Rule of Civil 

Procedure 54 to recover its fees under the Lanham Act and the UTIAA. The district 

court concluded that Focus Nutrition was a prevailing party under both the Lanham 

Act and the UTIAA, and that Focus Nutrition was entitled to all of its requested fees. 

 On appeal, Xlear raises five challenges to the district court’s order. We reverse 

the district court’s award of attorneys’ fees under the Lanham Act because Focus 

Nutrition is not a prevailing party under federal law. As to the UTIAA, we vacate the 

district court’s award of attorneys’ fees and remand for further proceedings to permit 

the district court to analyze the factors governing prevailing party status under Utah 

law and, if the court concludes Focus Nutrition is a prevailing party under the 

UTIAA, to determine what portion of the requested fees Focus Nutrition incurred in 

defense of the UTIAA claim and the reasonableness of the requested fees. 
3 

I. BACKGROUND 

Xlear and Focus Nutrition both sell sweeteners containing the sugar alcohol 

xylitol. According to Xlear’s complaint, several former employees of Xlear work for 

Focus Nutrition. Xlear further alleged that when Focus Nutrition struggled to sell its 

sweetener in a blue box, Focus Nutrition changed its packaging to resemble the 

packaging used by Xlear. The three-count complaint filed by Xlear alleged (1) trade 

dress infringement under the Lanham Act, 15 U.S.C. § 1125(a); (2) a violation of the 

UTIAA, Utah Code Ann. § 13–11a–3; and (3) common law unfair competition. Focus 

Nutrition filed an answer to the complaint, defending the action on the grounds that 

Xlear’s packaging and trade dress were not distinctive and that Focus Nutrition’s 

packaging was not likely to confuse consumers. Focus Nutrition also raised a 

counterclaim, in which it sought a “declaratory judgment of non-infringement and 

unenforceability” relative to whether Xlear’s packaging constituted a protectable 

trade dress. App’x at 45–46. 

Focus Nutrition moved, under Federal Rule of Civil Procedure 12(c), to 

dismiss Xlear’s Lanham Act claim on the pleadings. Focus Nutrition’s Rule 12(c) 

motion, however, did not seek dismissal of Xlear’s UTIAA claim or Xlear’s common 

law unfair competition claim. The district court convened a hearing on the Rule 12(c) 

motion. By the hearing date, Xlear had not conducted any discovery or submitted any 

initial disclosures required by Federal Rule of Civil Procedure 26(a)(1). At the 

hearing, Focus Nutrition presented the district court with the packaging used by 

several of Focus Nutrition’s and Xlear’s competitors. Viewing the display, the 
4 

district court judge expressed skepticism about the validity of Xlear’s allegations and 

Xlear’s ability to produce evidence in support of its Lanham Act claim. Relevant to 

Focus Nutrition’s argument for recovering its attorneys’ fees, the district court judge 

made three statements: 

 “I have had dozens of trade dress cases through the years . . . it just 

seems as weak a case as I can imagine from a company that is 

upset that some former employees went out and did exactly what it 

seems like a lot of other companies are doing with this same 

Xylitol product and artificial sweeteners.” Id. at 107. 

 “[I]t wouldn’t be hard for me today to say that no reasonable jury 

is going to find trade dress infringement based on the allegations 

. . . and a lack of facts on your side, and that is why I asked what 

you’re planning to do in discovery.” Id. at 109. 

 “It is a little hard to believe that there are facts to support [the 

allegation that customers associate specific packaging with Xlear’s 

products] when we just look at this display [of all the sweetener 

companies’ packaging] here on the table.” Id. at 110. 

Ultimately, however, the Rule 12(c) nature of the proceeding compelled the district 

court to focus on the pleadings and deny the motion. 

 Following the hearing, the parties engaged in settlement discussions, which 

culminated in a stipulation of dismissal pursuant to Federal Rule of Civil Procedure 

41(a)(1)(A)(ii).1

 Under the stipulation of dismissal, all three of Xlear’s claims, as 

well as Focus Nutrition’s counterclaim, were dismissed with prejudice but the parties 

reserved the right to seek attorneys’ fees. In accord with the stipulation of dismissal, 

the Clerk of Court terminated the case. 

 1

 The parties filed the stipulation after the deadline for conducting fact 

discovery. Although Xlear represented at the hearing on Focus Nutrition’s Rule 12(c) 

motion that it would engage in discovery by conducting depositions, it never did so. 
5 

 Within fourteen days of the entry of the stipulation of dismissal, Focus 

Nutrition filed a Federal Rule of Civil Procedure 54 motion seeking $26,674 in 

attorneys’ fees. In its Rule 54 motion, Focus Nutrition argued that it was entitled to 

recover its attorneys’ fees under both the Lanham Act and the UTIAA. Focus 

Nutrition supported the reasonableness of the requested attorneys’ fees through an 

affidavit from lead counsel and a one-page billing record. The affidavit summarized 

the parties’ conduct during the litigation, provided information about Focus 

Nutrition’s attorneys’ hourly rates and experience, and identified six broad tasks 

performed by counsel during the litigation. The billing record provided a month-bymonth accounting of the requested attorneys’ fees but did not indicate how much 

time counsel spent on a given task and did not separate the requested fees by claim—

i.e., how much was attributable to the defense of the Lanham Act claim, the defense 

of the UTIAA claim, the defense of the common law unfair competition claim, or the 

pursuit of the counterclaim. In response to the Rule 54 motion, Xlear argued, in part, 

that Focus Nutrition was not a prevailing party under either the Lanham Act or the 

UTIAA and that Focus Nutrition failed to submit sufficient evidence to permit the 

district court to assess the reasonableness of the requested fees. In reply, Focus 

Nutrition did not provide any additional evidence in support of the requested fees; 

instead, it argued that the affidavit and one-page billing record were sufficient to 

permit the court to assess the reasonableness of the requested fees. 

 The district court commenced its analysis of Focus Nutrition’s Rule 54 motion 

by finding that Xlear (1) filed a cursory complaint; (2) failed to provide initial 
6 

disclosures as required by Federal Rule of Civil Procedure 26; (3) did not “conduct, 

respond to, or participate in any discovery to support its claims”; and (4) stipulated to 

the dismissal with prejudice after the fact discovery deadline and on the eve of Focus 

Nutrition filing a motion for summary judgment. Id. at 149–50. Relevant to our 

resolution of this appeal, the district court concluded that Focus Nutrition was a 

prevailing party under both the Lanham Act and the UTIAA. Without discussing 

Xlear’s argument about the sufficiency of the evidence submitted by Focus Nutrition 

in support of the requested fees and without stating any findings relative to the 

reasonableness of the requested fees, the district court awarded Focus Nutrition all of 

its requested fees. 

 Xlear appeals the district court’s award of attorneys’ fees. On appeal, Xlear’s 

arguments include: (1) a stipulation of dismissal pursuant to Rule 41(a)(1)(A)(ii) 

does not produce a judgment for purposes of a Rule 54 motion; (2) Focus Nutrition 

was not a prevailing party for purposes of the Lanham Act; (3) the district court did 

not consider the factors governing the prevailing party analysis under Utah law for 

purposes of awarding fees under the UTIAA; (4) even if Focus Nutrition was a 

prevailing party under the UTIAA, Focus Nutrition would be entitled to recover only 

fees related to the UTIAA claim and not the Lanham Act claim, the common law 

unfair competition claim, or the counterclaim; and (5) Focus Nutrition did not submit 

sufficient evidence to permit the district court to determine the reasonableness of the 

requested fees. In response, Focus Nutrition defends the merits of the district court’s 

award of attorneys’ fees and argues that Xlear did not preserve its argument that a 
7 

Rule 41(a)(1)(A)(ii) stipulation of dismissal does not produce a judgment for 

purposes of a Rule 54 motion. After stating the standard of review, we address each 

of the above identified arguments. 

II. STANDARD OF REVIEW 

 Generally speaking, “[w]e review the decision to award attorney fees, and the 

amount awarded, for abuse of discretion.” United Phosphorus, Ltd. v. Midland 

Fumigant, Inc., 205 F.3d 1219, 1232 (10th Cir. 2000). “An abuse of discretion has 

been characterized as an arbitrary, capricious, whimsical, or manifestly unreasonable 

judgment.” Mid-Continent Cas. Co. v. Vill. at Deer Creek Homeowners Ass’n, Inc., 

685 F.3d 977, 981 (10th Cir. 2012) (internal quotation marks omitted). A district 

court abuses its discretion if it commits legal error, relies on clearly erroneous factual 

findings, or issues a ruling without any rational evidentiary basis. Dullmaier v. 

Xanterra Parks & Resorts, 883 F.3d 1278, 1295 (10th Cir. 2018). Further, although a 

district court possesses broad discretion to award attorneys’ fees, “[i]t remains 

important . . . for the district court to provide a concise but clear explanation of its 

reasons for the fee award.” Mares v. Credit Bureau of Raton, 801 F.2d 1197, 1201 

(10th Cir. 1986) (quoting Hensley v. Eckerhart, 461 U.S. 424, 437 (1983)). “Such 

explanations must give us an adequate basis for review. And, in reaching their 

determinations district courts must follow the guidelines established by the Supreme 

Court and this court.” Id. (internal quotation marks and citation omitted). 

 Although the overarching standard of review is for an abuse of discretion, 

“[w]e review the statutory interpretation or legal analysis that formed the basis of the 
8 

award de novo.” Malloy v. Monahan, 73 F.3d 1012, 1017 (10th Cir. 1996). Whether a 

litigant is a “prevailing party” is a legal question we review de novo. Lorillard 

Tobacco Co. v. Engida, 611 F.3d 1209, 1214 (10th Cir. 2010). Finally, although this 

appeal involves the review of an award of attorneys’ fees under state law, the 

standard of review under which we review an award of fees is a procedural matter 

controlled by federal precedent. See id. at 1213 (“In reviewing state law awards of 

attorney’s fees, . . . it has been our consistent practice to look to our own precedent 

on this purely procedural issue—viz., the applicable standard of review.”). 

III. DISCUSSION 

A. Does a Fed. R. Civ. P. 41(a)(1)(A)(ii) Stipulation of Dismissal Produce a 

Judgment for Purposes of a Fed. R. Civ. P. 54 Motion? 

A motion for attorneys’ fees pursuant to Federal Rule of Civil Procedure 54 

must: 

(i) be filed no later than 14 days after the entry of judgment; 

(ii) specify the judgment and the statute, rule, or other grounds 

entitling the movant to the award; 

(iii) state the amount sought or provide a fair estimate of it; and 

(iv) disclose, if the court so orders, the terms of any agreement about 

fees for the services for which the claim is made. 

Fed. R. Civ. P. 54(d)(2)(B) (emphasis added). Based on the use of the word 

“judgment” in subclauses (i) and (ii), entry of a judgment is a prerequisite for a Rule 

54 motion for attorneys’ fees. Put another way, if there was no judgment, then a Rule 
9 

54 motion was not a proper mechanism by which Focus Nutrition could seek 

attorneys’ fees.2

 

On appeal, Xlear contends that a Rule 41(a)(1)(A)(ii) stipulation of dismissal 

does not produce a judgment. In support of this contention, Xlear advances two 

distinct arguments: (1) we should extend the Supreme Court’s recent holding in 

Microsoft Corp. v. Baker, 137 S. Ct. 1702 (2017), to conclude that where a voluntary 

stipulation of dismissal does not produce a final judgment for purposes of appellate 

jurisdiction, it also does not produce a judgment for purposes of a motion under 

Federal Rule of Civil Procedure 54; and (2) a stipulation of dismissal under Rule 

41(a)(1)(A)(ii) is self-executing such that the district court never enters a physical 

judgment. In response, Focus Nutrition argues that Xlear failed to preserve this issue 

by not raising it in the district court but that, if we reach the issue, we should not 

extend Microsoft because it addressed a narrow issue specific to class action 

litigation. In reply, Xlear acknowledges it did not raise this issue below but contends 

that an exception to the preservation requirement exists because the Supreme Court 

decided Microsoft after Xlear filed its response to Focus Nutrition’s Rule 54 motion. 

We start our analysis by considering Focus Nutrition’s preservation argument. 

 2

 This is not to say that the lack of a judgment would have nullified Focus 

Nutrition’s ability to act on the reservation in the stipulation to seek attorneys’ fees. 

Attorneys’ fees may have been recoverable under other provisions in the Federal 

Rules of Civil Procedure, such as Rule 37, or through the inherent powers of the 

federal district court to sanction a party, see Goodyear Tire & Rubber Co. v. Haeger, 

137 S. Ct. 1178, 1186 (2017). Because of these other potential means for seeking 

attorneys’ fees, we reject Focus Nutrition’s suggestion that Xlear’s entrance into the 

stipulation of dismissal estops Xlear from arguing there was no judgment for 

purposes of a Rule 54 motion for attorneys’ fees. 
10 

1. Preservation

 Generally, “[a]n issue is waived if it was not raised below in the district 

court.” Wilburn v. Mid-South Health Dev., Inc., 343 F.3d 1274, 1280 (10th Cir. 

2003). “[W]e will relax the waiver rule when the issues involved are questions of 

law, the proper resolution of which are beyond reasonable doubt, and the failure to 

address the issues would result in a miscarriage of justice.” Gray v. Phillips 

Petroleum Co., 971 F.2d 591, 592 n.3 (10th Cir. 1992) (internal quotation marks 

omitted). Separately, “an intervening change in the law permits appellate review of 

an issue to which a party did not object below.” Id.

 Considering each of Xlear’s arguments in support of its contention that a Rule 

41(a)(1)(A)(ii) stipulation does not produce a judgment for purposes of Rule 54 

separately, we reach contrary conclusions on the issue of preservation. As Xlear’s 

response to Focus Nutrition’s Rule 54 motion preceded the Supreme Court’s decision 

in Microsoft, appellate review of Xlear’s argument under Microsoft is appropriate. 

This is particularly true where some district courts have recently applied Microsoft to 

hold that a Rule 41(a)(1)(A)(ii) stipulation of dismissal does not produce a judgment 

for purposes of a Rule 54 motion. See Keith Mfg. Co. v. Butterfield, 256 F. Supp. 3d 

1123, 1128–30 (D. Or. 2017); see also Physician’s Surrogacy, Inc. v. German, ___ F. 

Supp. 3d ___, 2018 WL 1876187, at *2 (S.D. Cal. Apr. 19, 2018) (relying on Keith to 

conclude that stipulation of dismissal did not produce judgment for purposes of Rule 

54); but see Killer Burger, Inc. v. Rock & Roll Chili Pit, Inc., 2018 WL 1156237, at 

*2 (D. Or. Mar. 5, 2018) (distinguishing Keith and rejecting application of Microsoft 
11 

to Rule 54 motion where Rule 41(a)(1)(A)(ii) stipulation of dismissal included 

reservation of parties’ rights to seek attorneys’ fees). 

 We, however, conclude that appellate review of Xlear’s second argument—

that a Rule 41(a)(1)(A)(ii) stipulation of dismissal is self-executing and does not 

result in a physical judgment—is not preserved or subject to an exception to the 

preservation requirement. As early as 2011, we concluded that “[a] stipulation of 

dismissal filed under Rule 41(a)(1)(A)(i) or (ii) is self-executing and immediately 

strips the district court of jurisdiction over the merits.” De Leon v. Marcos, 659 F.3d 

1276, 1283 (10th Cir. 2011). Furthermore, at the time Xlear filed its response to the 

Rule 54 motion, it was apparent from the docket that the district court did not enter a 

physical judgment. Thus, nothing prevented Xlear from arguing below that a Rule 

41(a)(1)(A)(ii) stipulation of dismissal is self-executing and that there was no 

physical judgment for purposes of a Rule 54 motion. Accordingly, we decline to 

consider this argument for the first time on appeal. 

2. Microsoft Does Not Apply Within the Context of a Rule 54 Motion 

 In Microsoft, the district court denied the putative class plaintiff’s motion for 

class certification, a denial that is not a final judgment and does not otherwise permit 

for an appeal as of right. 137 S. Ct. at 1710–11. Instead of litigating his claims as an 

individual plaintiff and appealing the denial of his motion for class certification 

following a final judgment on his individual claims, the plaintiff stipulated to the 

dismissal of his action with prejudice but reserved the right to refile the action if the 

appellate court reversed the district court’s adverse class certification decision. Id. at 
12 

1706–07, 1711. After the appellate court reversed the adverse class certification 

decision, Microsoft petitioned to the Supreme Court, arguing that the stipulation of 

dismissal was not a final decision capable of creating appellate jurisdiction under 28 

U.S.C. § 1291. See id. at 1711–12. Focusing on the unique nature of class action 

litigation and that the voluntary dismissal tactic employed by the putative class 

plaintiff would allow plaintiffs to appeal immediately from adverse class certification 

decisions but not allow defendants the same appellate opportunity and could result in 

piecemeal appeals, the Supreme Court held that a voluntary dismissal within the 

context of a class action suit was not a “final decision” for purposes of appellate 

jurisdiction. Id. at 1707, 1713. 

We read Microsoft as addressing the narrow situation where a hopeful class 

action plaintiff uses a stipulation of dismissal as a tactic to overcome the limitations 

placed on appellate jurisdiction by 28 U.S.C. § 1291.3

 Notably, a stipulated dismissal 

with prejudice pursuant to Rule 41(a)(1)(A)(ii) that reserves only the issue of 

attorneys’ fees does not create any possibility of piecemeal litigation and cannot give 

rise to the plaintiff re-filing any of the dismissed claims. Nor is the stipulated 

dismissal in this case a tactic to turn an interlocutory order into a final judgment or to 

otherwise overcome a jurisdictional defect. Finally, the stipulation here does not have 

 3

 Our reading of Microsoft Corp. v. Baker, 137 S. Ct. 1702 (2017), is in accord 

with the reading of the Court of Appeals for the District of Columbia Circuit. See In 

re Brewer, 863 F.3d 861, 871 (D.C. Cir. 2017) (noting limited reach of holding in 

Microsoft because the decision was driven by the “questionable tactics” used by the 

putative class plaintiff in an effort to circumvent the rules governing appellate 

jurisdiction). 
13 

the effect of giving only one party the ability to appeal. Instead, the stipulation 

permitted both parties to seek attorneys’ fees, from which a single appeal, by either 

party and limited to the issue of attorneys’ fees, might follow. Accordingly, none of 

the concerns underlying the holding in Microsoft are present when parties enter into a 

Rule 41(a)(1)(A)(ii) stipulation of dismissal with prejudice that reserves only the 

issue of attorneys’ fees. We therefore decline to read Microsoft as supporting the 

conclusion that a Rule 41(a)(1)(A)(ii) dismissal does not produce a judgment for 

purposes of a motion for attorneys’ fees under Rule 54. 

Having established that Microsoft does not preclude Focus Nutrition from 

seeking attorneys’ fees through a Rule 54 motion, we proceed by analyzing the 

district court’s determination that Focus Nutrition was entitled to recover $26,674 in 

attorneys’ fees, first considering the award under the Lanham Act and then 

considering the award under the UTIAA. 

B. Attorneys’ Fees Under the Lanham Act 

Under the Lanham Act, “[t]he court in exceptional cases may award reasonable 

attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). Thus, a party seeking an 

award of attorneys’ fees must demonstrate that (1) it is a “prevailing party” and (2) 

the case is “exceptional.” Because Focus Nutrition is not a “prevailing party,” we 

start and end our analysis on that matter without considering whether this case was 

“exceptional.” 

The Supreme Court has defined “prevailing party” as “a party in whose favor 

judgment is rendered, regardless of the amount of damages awarded.” Buckhannon 
14 

Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598, 603 

(2001) (quoting Black’s Law Dictionary 1145 (7th ed. 1999)).4

 To meet this 

definition, a party must be “one who has been awarded some relief by the court” in 

that the court materially altered the legal relationship between the plaintiff and the 

defendant. Id. at 603–04. Thus, “[a] defendant’s voluntary change in conduct, 

although perhaps accomplishing what the plaintiff sought to achieve by the lawsuit, 

lacks the necessary judicial imprimatur on the change.” Id. at 605. Buckhannon

identified two situations—“enforceable judgments on the merits and court-ordered 

consent decrees”—that involve sufficient judicial imprimatur to convey prevailing 

party status onto a litigant. Id. at 604; see Sole v. Wyner, 551 U.S. 74, 82 n.3 (2007) 

(identifying Buckhannon as holding that the term prevailing party “does not ‘include 

a party that has failed to secure a judgment on the merits or a court-ordered consent 

decree, but has nonetheless achieved the desired result because the lawsuit brought 

about a voluntary change in the defendant’s conduct’” (quoting Buckhannon, 532 

U.S. at 600)); see also CRST Van Expedited Inc. v. EEOC, 136 S. Ct. 1642, 1651–52 

(2016) (concluding procedural-based judgment that terminated litigation in favor of 

 4

 Although Buckhannon involved a party seeking attorneys’ fees pursuant to 

the Fair Housing Amendments Act of 1988 and the Americans with Disabilities Act, 

Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 

U.S. 598, 601 (2001), the phrase “prevailing party” appears in multiple fee-shifting 

statutes and should be interpreted in a “consistent manner” across those statutes, 

CRST Van Expedited, Inc. v. EEOC, 136 S. Ct. 1642, 1646 (2016). Thus, while 

Buckhannon did not address a request for attorneys’ fees under the Lanham Act, its 

teachings about the definition of the phrase “prevailing party” apply with full force to 

a request for attorneys’ fees under the Lanham Act. 
15 

defendant qualified as judicial imprimatur to convey prevailing party status onto 

defendant). 

For our part, we have had at least three occasions to apply Buckhannon to the 

question of whether a litigant was a prevailing party for purposes of recovering attorneys’ 

fees. See Biodiversity Conservation All. v. Stem, 519 F.3d 1226 (10th Cir. 2008); Bell v. 

Bd. of Cty. Comm’rs, 451 F.3d 1097 (10th Cir. 2006); see also Sanchez v. Bd. of E. N.M., 

361 F. App’x 980 (10th Cir. 2010). In Bell, we concluded that a settlement was only 

capable of conveying prevailing party status onto a litigant if the settlement bore the 

hallmarks of a consent decree: 

if a court does not incorporate a private settlement into an order, does not 

sign or otherwise provide written approval of the settlement’s terms, and 

does not retain jurisdiction to enforce performance of the obligations 

assumed by the settling parties, the settlement does not bear any of the 

marks of a consent decree and does not confer prevailing party status on the 

party whose claims have been compromised. 

451 F.3d at 1103 (quotation marks omitted) (citing T.D. v. LaGrange Sch. Dist. No. 102, 

349 F.3d 469, 479 (7th Cir. 2003); Smyth v. Rivero, 282 F.3d 268, 285 (4th Cir. 2002); 

Smalbein ex rel. Smalbein v. City of Daytona Beach, 353 F.3d 901, 905–06 (11th Cir. 

2003)). Further, a court’s involvement in a settlement conference by assuming a quasimediator role and advising the parties of the strengths and weaknesses of their case is 

insufficient to satisfy the judicial imprimatur requirement for a litigant to obtain 

prevailing party status. See id.; see also Sanchez, 361 F. App’x at 984–85. Likewise, a 

clerk of court terminating a case following a stipulation of dismissal does not constitute 

judicial action or judicial imprimatur for purposes of the prevailing party analysis. Bell, 
16 

451 F.3d at 1104. And, the fact that a stipulation of dismissal reserves the issue of 

attorneys’ fees and allows the district court to retain jurisdiction over that issue also does 

not qualify as judicial imprimatur relative to the dismissal of the action. Sanchez, 361 F. 

App’x at 983–84. 

In Biodiversity Conservation Alliance, we rejected the contention that comments 

by a district court favoring the merits of one party’s position over another party’s position 

constitute sufficient judicial imprimatur to convey prevailing party status onto a litigant. 

519 F.3d at 1230. Specifically, we stated that Buckhannon

requires more than a mere judicial statement favoring one party. Instead, 

in order for a party to prevail, the court’s statement must lend judicial 

teeth to the merits of the case. More specifically, a party is entitled to 

attorneys’ fees only if it could obtain a court order to enforce the merits 

of some portion of the claim it made in its suit. . . . 

 . . . . 

. . . Judicial imprimatur, of the sort required in Buckhannon, 

gives a plaintiff substance it can rely on in enforcing the merits of its 

case. 

Id. (emphasis added). 

 In an effort to establish that it is a prevailing party, Focus Nutrition relies on 

Xlear’s decision to enter into the stipulation of dismissal with prejudice and the 

district court’s comments during the hearing on its Rule 12(c) motion. The stipulation 

of dismissal in this case does not bear any attributes of a consent decree and did not 

permit the district court to retain jurisdiction to enforce any aspect of the dismissal 

relative to the merits of case. Instead, the stipulation of dismissal, by the fact that it 

was a stipulation entered into under Federal Rule of Civil Procedure 41(a)(1)(A)(ii), 
17 

did not permit the district court to take any action relative to the merits of Xlear’s 

claims or Focus Nutrition’s counterclaim. See Smith v. Phillips, 881 F.2d 902, 904 

(10th Cir. 1989) (“A voluntary dismissal by stipulation under Rule 41(a)(1)[(A)](ii) 

is of right, cannot be conditioned by the court, and does not call for the exercise of 

any discretion on the part of the court. Once the stipulation is filed, the action on the 

merits is at an end.” (citations and footnote omitted)). Further, the stipulation of 

dismissal resulted only in the Clerk of Court terminating the case. And we have 

already held that a clerk of court terminating a case after a settlement by the parties 

does not constitute sufficient judicial imprimatur for the prevailing party analysis. 

Bell, 451 F.3d at 1104. 

We turn next to the comments by the district court judge at the hearing on the 

Rule 12(c) motion. While certainly favorable to Focus Nutrition’s legal position 

because they signaled the district court was likely to grant a future motion for 

summary judgment by Focus Nutrition, the comments were not sufficient to allow 

Focus Nutrition to “obtain a court order to enforce the merits of some portion of the 

claim.” See Biodiversity Conservation All., 519 F.3d at 1230. In fact, the district 

court denied Focus Nutrition’s Rule 12(c) motion. In so doing, the district court 

explicitly indicated that there was a possibility that Xlear could produce evidence to 

substantiate its claims and proceed past summary judgment. Specifically, the district 

court judge stated, “I suppose there is the possibility that facts will get revealed 

during this discovery disclosure window that would allow [Xlear] to avoid summary 

judgment.” App’x at 115–16. Thus, while the district judge’s comments about the 
18 

validity of Xlear’s Lanham Act claim may have prompted Xlear to enter into 

meaningful settlement talks that culminated in the stipulation of dismissal with 

prejudice, these comments cannot be viewed as judicial action that altered the legal 

rights of either party.5

In summation, under Buckhannon, Bell, and Biodiversity Conservation 

Alliance, to establish that it was a prevailing party, a litigant must demonstrate the 

existence of judicial imprimatur by identifying judicial action that altered or 

modified the legal rights of the parties. Focus Nutrition cannot satisfy this 

requirement and, therefore, is not entitled to recover attorneys’ fees under the 

Lanham Act. Therefore, we reverse the district court’s award of attorneys’ fees under 

the Lanham Act. 

C. Attorneys’ Fees Under the UTIAA 

Focus Nutrition argues that even if it was not a prevailing party under federal law 

for purposes of the Lanham Act, it was a prevailing party under Utah law for purposes of 

 5

 Put another way, Focus Nutrition argues that because the district court’s 

comments were the precipitating factor, or the catalyst, for Xlear engaging in 

settlement talks and entering into the stipulation of dismissal with prejudice, the 

comments qualify as judicial imprimatur. However, Buckhannon rejected the catalyst 

theory for determining if a litigant is a prevailing party and precluded courts from 

considering the “subjective motivations” of a party who voluntarily changed course 

during litigation when conducting the prevailing party analysis. See Buckhannon, 532 

U.S. at 601; see also Petersen v. Gibson, 372 F.3d 862, 866 (7th Cir. 2004) (noting 

that catalyst theory necessitated evaluation of subjective motivations of the parties 

and Buckhannon rejected reliance on such as part of prevailing party analysis). 

Accordingly, faithful application of Buckhannon prevents us from considering what 

motivated Xlear to enter into the stipulation of dismissal and, instead, forces us to 

focus our analysis on the fact that Xlear’s entrance into the stipulation of dismissal 

was voluntary and the filing of the stipulation of dismissal did not permit for or result 

in any approval or action by the district court relative to the merits of the case. 
19 

the UTIAA and that the UTIAA entitled it to recover its requested attorneys’ fees of 

$26,674. For two independent reasons, we vacate the district court’s award of attorneys’ 

fees under the UTIAA and remand for further proceedings. 

Under the UTIAA, “[t]he court shall award attorneys’ fees to the prevailing party.” 

Utah Code Ann. § 13–11a–4(2)(c). Because a provision of the UTIAA awards attorneys’ 

fees to the prevailing party—an outcome-based reason for awarding fees that is part and 

parcel of the state law cause of action—the UTIAA fee award statute is substantive, and 

state law controls the ability to award Focus Nutrition fees stemming from its defense of 

Xlear’s UTIAA claim. See United Mine Workers of Am. v. Gibbs, 383 U.S. 715, 726 

(1966) (applying Erie6 Doctrine to state law claims arising under supplemental 

jurisdiction); see also Chieftain Royalty Co. v. Enervest Energy Institutional Fund XII–A, 

L.P., 888 F.3d 455, 460 (10th Cir. 2017) (state law governing attorneys’ fees is 

substantive when it ties the recoverability of attorneys’ fees to the “outcome of the 

litigation” or where the state-created right to recover attorneys’ fees is “part and parcel of 

the cause of action over which we have [supplemental] jurisdiction” (internal quotation 

marks omitted)). 

The Utah Supreme Court has adopted a “flexible,” “reasoned,” and “commonsense” approach to whether a litigant is a prevailing party. Neff v. Neff, 247 P.3d 380, 

399, 400 (Utah 2011). This approach requires a “case-by-case evaluation” so as “to 

handle circumstances where both, or neither, parties may be considered to have 

prevailed.” Id. at 398 (emphasis omitted). In employing this approach, a trial court should 

 6 Erie R. Co. v. Tompkins, 304 U.S. 64 (1938). 
20 

consider several factors, including “the language of the . . . statute that forms the basis for 

the attorney fees award, the number of claims brought by the parties, the importance of 

each of the claims relative to the entire litigation, and the amounts awarded on each 

claim.” Id. at 398. The trial court may also consider whether interests of “justice and 

equity” weigh in favor or against an award of attorneys’ fees. See Hull v. Wilcock, 285 

P.3d 815, 830–31 (Utah Ct. App. 2012). Finally, under Utah law, 

a party seeking fees must allocate its fee request according to its 

underlying claims. Indeed, the party must categorize the time and fees 

expended for “(1) successful claims for which there may be an 

entitlement to attorney fees, (2) unsuccessful claims for which there 

would have been an entitlement to attorney fees had the claims been 

successful, and (3) claims for which there is no entitlement to attorney 

fees.” 

Foote v. Clark, 962 P.2d 52, 55 (Utah 1998) (quoting Cottonwood Mall Co. v. Sine, 830 

P.2d 266, 269–70 (Utah 1992)). 

By incorrectly concluding that Focus Nutrition was a prevailing party under the 

Lanham Act, the district court never analyzed which of the requested fees stemmed from 

Focus Nutrition’s defense of the UTIAA claim rather than the Lanham Act claim. Nor 

could the district court have attempted to perform this analysis where the affidavit and 

one-page billing record submitted by Focus Nutrition did not delineate time spent 

defending the UTIAA claim from time spent defending the Lanham Act claim and the 

common law unfair competition claim or time spent pursuing the counterclaim. That said, 

from the record before us, we know that Focus Nutrition’s attorneys’ fees relative to its 

Rule 12(c) motion are not recoverable under the UTIAA because the motion only sought 

dismissal of Xlear’s Lanham Act claim. We also know that Focus Nutrition pursued a 
21 

counterclaim under the Lanham Act. Thus, attorneys’ fees attributable to the preparation 

and prosecution of the counterclaim cannot be recovered under the UTIAA.7

 Even 

assuming temporarily that Focus Nutrition is a prevailing party under Utah law for 

purposes of Xlear’s UTIAA claim, therefore, would not permit an award of the full 

requested fees of $26,674. Accordingly, we must vacate the district court’s award of 

attorneys’ fees under the UTIAA and remand the matter to permit the district court to 

determine which of the requested fees are attributable to Focus Nutrition’s defense of the 

UTIAA claim rather than to its defense of the non-UTIAA claims or to its pursuit of the 

counterclaim. 

Apart from the fact that the UTIAA cannot support an award of the full requested 

fees, we conclude that the district court did not adequately state its findings with respect 

to the prevailing party analysis under Utah law. The entirety of the district court’s 

analysis specific to Focus Nutrition’s attorneys’ fees request under the UTIAA reads: 

The Utah Truth in Advertising Act provides that “[c]osts shall be 

allowed to the prevailing party unless the court otherwise directs. The court 

shall award attorneys’ fees to the prevailing party.” U.C.A. § 13-11a4(2)(c). Federal courts have followed Utah law in determining whether a 

party is the “prevailing party” under this statute. See e.g. First Data Merch. 

Servs. Corp. v. SecurityMetrics Inc., 672 Fed. Appx. 229, 239 (4th Cir. 

2016). 

Under Utah law, the Court looks to whether there was a prevailing 

party “within the context of the case as a whole” in awarding attorneys’ 

fees. See Neff v. Neff, 247 P.3d 380 (Utah 2011); First Data, 672 Fed. 

Appx. at 239. The Court is to employ a “flexible and reasoned approach” 

and “take into consideration ‘the significance of the net judgment in the 

case’ and ‘the amounts actually sought . . . balanc[ed] . . . proportionally 

 7

 Although we identify two examples of tasks that were part of the requested 

attorneys’ fees and not incurred in defense of the UTIAA claim, other tasks not 

specifically identified here may also fall into this category. 
22 

with what was recovered.’” Giles v. Mineral Res. Int’l, Inc., 320 P.3d 684, 

687-88 (Utah App. 2014)(quoting A.K. & R. Whipple Plumbing & Heating 

v. Guy, 94 P.3d 270 (Utah 2004). “Courts should not ignore common sense 

when deciding which party prevailed.” Giles, 320 P.3d at 687-88. 

The Court finds that Defendant prevailed within the context of this 

case as a whole. As discussed above, it succeeded in Plaintiff dismissing all 

of its claims with prejudice. 

App’x at 151–52. This analysis, however, does not account for several of the factors 

identified in Neff, particularly the importance of the UTIAA claim relative to the entire 

litigation. See 247 P.3d at 398. The need for findings on this Neff factor is magnified by 

our earlier conclusion that Focus Nutrition did not prevail on the Lanham Act claim. And, 

where we must vacate the district court’s award of attorneys’ fees under the UTIAA 

because the UTIAA cannot support an award of all of Focus Nutrition’s requested fees, 

we find it prudent, in light of the abuse of discretion standard that governs our review of 

attorneys’ fees awards, to allow the district court to conduct a full analysis of the Neff 

factors in the first instance. 

 In summation, while it may be the case that Focus Nutrition is a prevailing party 

for purposes of the UTIAA, we vacate the district court’s award of attorneys’ fees under 

the UTIAA because the UTIAA cannot support an award of fees to Focus Nutrition for 

fees incurred in defense of the non-UTIAA claims or in pursuit of its counterclaim. 

Furthermore, on remand, the district court should analyze the factors identified in Neff to 

determine if Focus Nutrition remains a prevailing party under the UTIAA in light of our 

conclusion that Focus Nutrition is not a prevailing party under the Lanham Act. 
23 

D. Reasonableness of Requested Attorneys’ Fees 

Finally, because the matter is likely to arise again on remand, we discuss the 

parameters governing the issue of whether Focus Nutrition’s requested attorneys’ 

fees are reasonable. As noted earlier, in granting Focus Nutrition all of its requested 

fees, the district court did not explicitly comment on the reasonableness of the 

requested fees or address Xlear’s argument that Focus Nutrition failed to submit 

adequate evidence to permit the district court to assess the reasonableness of the 

requested fees. 

Because we have already determined that if Focus Nutrition is to recover any 

attorneys’ fees it can only recover fees incurred in defense of the UTIAA claim, we 

start our analysis by considering the issue of whether federal or state law establishes 

the requirements for assessing the reasonableness of the requested fees. “The 

calculation of attorney fees is considered substantive law because ‘the method of 

calculating a fee is an inherent part of the substantive right to the fee itself and 

reflects substantive state policy.’” Chieftain Royalty Co., 888 F.3d at 462 (quoting 

Moore’s Federal Practice § 124.07[3][b] (3d ed. 2011)). Thus, “[w]hen state law 

governs whether to award attorney fees . . . state law also governs how to calculate 

the amount.” Id. at 461. And, “it is state substantive law that cabins the meaning of 

reasonable” with respect to the amount of fees awarded. Id. at 462 (emphasis 

omitted).

Under Utah law, “an award of attorney fees must be supported by evidence in 

the record.” Dixie State Bank v. Bracken, 764 P.2d 985, 988 (Utah 1988). “Except in 
24 

the most simple cases, the evidence should include the hours spent on the case, the 

hourly rate or rates charged for those hours, and usual and customary rates for such 

work.” U.S.A. United Staffing All., LLC v. Workers’ Comp. Fund, 213 P.3d 20, 30 

(Utah Ct. App. 2009) (quoting Cottonwood Mall Co., 830 P.2d at 268). Additionally, 

the evidence submitted in support of the fee request should permit the district court to 

assess four questions central to the reasonableness inquiry: 

1. What legal work was actually performed? 

2. How much of the work performed was reasonably necessary to 

adequately prosecute [or defend] the matter? 

3. Is the attorney’s billing rate consistent with the rates customarily 

charged in the locality for similar services? 

4. Are there circumstances which require consideration of additional 

factors, including those listed in the Code of Professional 

Responsibility? 

Dixie State Bank, 764 P.2d at 990 (footnotes omitted). “The appropriateness of the 

work actually performed and of the attorney’s billing rate is evaluated before a 

reasonable fee is set.” Id. “The trial court should . . . document its evaluation of the 

requested fees’ reasonableness through findings of fact,” which should (1) “mirror 

the requesting party’s allocation of fees per claims,” (2) “support any award issued,” 

and (3) “detail the factors considered dispositive by the trial court in calculating the 

award.” Foote, 962 P.2d at 55. 

Additionally, “[a] party is . . . entitled only to those fees resulting from its 

principal cause of action for which there is a contractual (or statutory) obligation for 

attorney’s fees.” Utah Farm Prod. Credit Ass’n v. Cox, 627 P.2d 62, 66 (Utah 1981). 

Therefore, where a party incurs attorneys’ fees prosecuting or defending multiple 
25 

claims within a single litigation and the party has a statutory right only to recover 

fees relative to one of the claims, the party must submit sufficient evidence to permit 

the district court to determine what portion of the fees were incurred prosecuting or 

defending the claim for which fee recovery is statutorily authorized. Id.; see Paul 

Mueller Co. v. Cache Valley Dairy Ass’n, 657 P.2d 1279, 1288 (Utah 1982) 

(affirming fee award because “the trial court . . . had sufficient information before it 

in the billing records to enable it to separate the counterclaim hours from those spent 

in defense of the main causes of action”); see also Foote, 962 P.2d at 55 (requiring 

party seeking fees to delineate requested fees based on successful claims, 

unsuccessful claims, and claims for which fee recovery is not authorized). 

 Now that Focus Nutrition’s request for attorneys’ fees rises and falls on the 

UTIAA, the particulars of Utah law relative to the calculation and reasonableness of 

the requested fees are essential to Focus Nutrition’s ability to recover any of its 

initially-requested fees. On remand, and assuming the district court concludes Focus 

Nutrition is a prevailing party under the UTIAA, Focus Nutrition must submit 

additional evidence sufficient to permit the court to make the necessary findings 

relative to which fees were incurred in defense of the UTIAA claim and what a 

reasonable award of fees is relative to Focus Nutrition’s defense of the UTIAA claim. 

IV. CONCLUSION 

We REVERSE the district court’s award of attorneys’ fees under the Lanham 

Act because Focus Nutrition cannot establish that it was a prevailing party under 

federal law. And we VACATE the district court’s award of attorneys’ fees under the 
26 

UTIAA because the UTIAA cannot support an award of attorneys’ fees incurred by 

Focus Nutrition when defending non-UTIAA claims or when prosecuting its Lanham 

Act counterclaim and because the district court did not make findings relative to the 

prevailing party factors outlined in Neff. We REMAND this case to permit the 

district court to determine whether Focus Nutrition is a prevailing party under the 

UTIAA and, if so, to determine the reasonableness of Focus Nutrition’s requested fee 

relative to its defense of the UTIAA claim.