United States Court of Appeals

For the First Circuit

Nos. 01-1382, 01-2273

TAMKO ROOFING PRODUCTS, INC.,

Plaintiff, Appellee,

v.

IDEAL ROOFING COMPANY, LTD.,

Defendant, Appellant.

APPEALS FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW HAMPSHIRE

[Hon. Joseph A. DiClerico, Jr., U.S. District Judge]

Before

 Selya, Circuit Judge,

Campbell, Senior Circuit Judge,

and Lynch, Circuit Judge.

H. Joseph Hameline, Rosemary M. Allen, Geri L. Haight, Mintz,

Levin, Cohn, Ferris, Glovsky and Popeo, P.C., and Michael B. Clapp

on brief for appellant.

Christopher R. Benson, Marcy Hogan Greer, Susan J. Hightower,

and Fulbright & Jaworski L.L.P. on brief for appellee.

June 28, 2002
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LYNCH, Circuit Judge. Tamko Roofing Products, after

winning its trademark infringement action at trial, and prevailing

on a subsequent appeal by the infringer Ideal Roofing Company,

brings this application for an award of reasonable attorneys' fees

and expenses in connection with the appeal. We articulate the

standards to be used in the analysis and deny Tamko's application

because we find that Ideal's appeal did not constitute an

exceptional case within the meaning of 15 U.S.C. § 1117(a) (2000).

I. 

The six-day trial in this trademark infringement case

concerned Ideal's use of Tamko's Heritage trademark in connection

with roofing products. The district court ruled that Tamko's

Heritage trademarks were valid, and the jury found: (i) "by a

preponderance of the evidence that Ideal infringed Tamko's

trademarks"; (ii) "by clear and convincing evidence that Ideal

acted willfully in infringing Tamko's trademarks"; and (iii) "by a

preponderance of the evidence that the roofing product[s] of Ideal

and Tamko directly competed with each other." Tamko Roofing

Products, Inc. v. Ideal Roofing Co., 282 F.3d 23, 29 (1st Cir.

2002) (internal quotation marks omitted).

In August 2000, the district court issued orders that

Tamko was entitled to: (1) an accounting of Ideal's profits; (2)

attorneys' fees; and (3) an injunction permanently enjoining Ideal

from "using the term Heritage, Heritage Series, H Series, or any

name or mark confusingly similar to Heritage." Id. (internal

quotation marks omitted).
1 This case does not present the occasion to delineate the

boundaries between an award of just damages and costs under Fed. R.

App. P. 38, Maher v. Hyde, 272 F.3d 83, 87 (1st Cir. 2001)

(discussing Rule 38's "frivolous appeal" standard), and an award of

appellate attorneys' fees for "exceptional cases" under 15 U.S.C.

§ 1117(a), except to say that the two standards do not appear to be

the same.

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On appeal, Ideal challenged all three of the district

court's rulings, but not the jury's finding of willful

infringement. We affirmed all of the appealed district court's

rulings in Tamko Roofing Products, Inc. v. Ideal Roofing Co., 282

F.3d 23 (1st Cir. 2002).

On April 22, 2002, Tamko filed an application for an

award of attorneys' fees and expenses in connection with its

defense of the appeal that Ideal brought. Ideal filed an objection

to Tamko's application on May 20, 2002. 

II.

The Lanham Act's attorneys' fees provision, section 35,

reads: "The court in exceptional cases may award reasonable

attorney fees to the prevailing party." 15 U.S.C. § 1117(a)

(2000). In "exceptional cases," a prevailing party can obtain

attorneys' fees for a trial and on an appeal.1 See 5 J.T.

McCarthy, McCarthy on Trademarks and Unfair Competition § 30:99, at

30-184 (4th ed. 2002). As we noted in Tamko Roofing Products, we

"turn[] to the legislative history for a working definition" of

exceptional cases: "In exceptional cases, attorneys' fees may be

appropriate in circumstances where the acts of infringement were

'"malicious," "fraudulent," "deliberate," or "willful."'" 282 F.3d

at 31 (quoting S. Rep. 93-1400, at 5 (1974), reprinted in 1974
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U.S.C.C.A.N. 7132, 7133). The district court awarded attorneys'

fees to Tamko for the defense of its trademark at the trial level.

In affirming the attorneys' fees award for the trial in

this case, we rejected the argument "that bad faith or fraud is a

necessary condition to an award of attorneys' fees under section 35

of the Lanham Act," and held that "willful conduct may be

sufficient when the trial court takes into account all the facts

and equities of the case." Id. at 27. The facts and equities

surrounding Ideal's willful infringement of Tamko's mark justified

the trial court's award of fees.

 Here, Tamko argues that because this was an exceptional

case and attorneys' fees were awarded at the trial level,

attorneys' fees should also be awarded for the appeal. Tamko cites

to Committee for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814

(9th Cir. 1996), in which the Ninth Circuit granted the prevailing

plaintiff attorneys' fees on appeal because "the district court

found that appellants 'knowingly, intentionally and deliberately

adopted and used'" the plaintiff's name, and the case was therefore

exceptional. Id. at 825. 

In response, Ideal argues that in order to obtain an

award of attorneys' fees for an appeal, the appeal itself must be

exceptional, which it equates with frivolous. Ideal, in turn,

relies on another Ninth Circuit case, U-Haul International, Inc. v.

Jartran, Inc., 793 F.2d 1034 (9th Cir. 1986), which denied an award

of attorneys' fees against a defendant who, like Ideal, lost both

at trial and on appeal. The Ninth Circuit reasoned that attorneys'
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fees were not warranted because "[t]here [was] nothing

'exceptional' about [the defendant] appealing this $40 million

judgment. . . . [D]ifficult issues were raised . . . [and] [i]t was

entirely reasonable for [the defendant] to challenge the district

court's decision." Id. at 1044. 

The case law in this area is very sparse, perhaps because

most applications for attorneys' fees for an appeal are handled in

summary court orders. Articulation of the standards by which we

will evaluate whether appeals are within the "exceptional case"

requirement may be helpful. We reject Ideal's view that the appeal

must be frivolous in order to justify an award of appellate

attorneys' fees; rather, the statutory standard is whether the

case, as it appears on appeal, is "exceptional." We also reject

Tamko's argument that whenever a case is deemed exceptional at the

trial court level, attorneys' fees should automatically be awarded

for the appeal. Instead, we strike a middle ground. In each case

this court will assess and weigh several factors: (1) whether the

appeal was on issues different from those that caused the trial

court to find an "exceptional case"; (2) the relative strengths or

weaknesses of the appellate issues; and (3) the extent to which the

appeal can be said to have prolonged, without adequate

justification, a particularly bad "exceptional case." The weight

to be given to each of these three factors may vary from case to

case. In addition, this court will look to whether the losing

party's position on appeal appears to be of a whole with the

earlier "malicious, fraudulent, deliberate, or willful" acts of
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infringement or is otherwise inequitable. Cf. Securacomm

Consulting, Inc. v. Securacom Inc., 224 F.3d 273, 280-83 (3d Cir.

2000) (fees justified where litigation itself is oppressive and

meant to delay). 

This approach makes sure that the prevailing party in a

trademark infringement case does not have to keep expending its

resources defending the merits of a case characterized by

exceptional willful infringement, but also ensures that the losing

party is not unfairly thwarted in its attempts to make relevant and

reasonable arguments about potential procedural errors or about the

type and amount of remedies. In addition, this approach lends a

degree of flexibility because a portion of the total amount of

appellate attorneys' fees may be awarded when the appeal in part

attempts to rehash the merits of an already exceptional case, and

in part makes relevant and reasonable arguments about procedural or

remedial issues.

We apply our standards to this case. Here, we understand

the district court's award of fees to have been based on Ideal's

willful acts of infringement and not on Ideal's position as to

appropriate remedy. Ideal did not appeal from the infringement

finding against it. Its appeal was, by contrast, primarily

concerned with the appropriateness of the remedies ordered and with

the award of attorneys' fees. Thus, its appeal was on issues

different from those that caused the trial court to find that this

was an exceptional case. 

As to the relative strengths and weaknesses, Ideal's
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arguments, while not strong, were respectable; were made in areas

where the law of this circuit was unclear; and had some reason to

them. This appeal cannot be said to have prolonged, without

adequate justification, a case that the district court found to be

exceptional. We therefore deny Tamko's application for the award

of attorneys' fees in connection with the appeal. 

So ordered.