FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

SECALT S.A.; TRACTEL, INC., 

Plaintiffs-Appellants, No. 10-17007

v. D.C. No. 

WUXI 2:08-cv-00336-JCM- SHENXI CONSTRUCTION

MACHINERY COMPANY, LTD., GWF

Defendant-Appellee. 

SECALT S.A.; TRACTEL, INC.,  No. 11-15066 Plaintiffs-Appellants,

D.C. No.

v.  2:08-cv-00336-JCMWUXI SHENXI CONSTRUCTION GWF

MACHINERY COMPANY, LTD., OPINION Defendant-Appellee. 

Appeal from the United States District Court

for the District of Nevada

James C. Mahan, District Judge, Presiding

Argued and Submitted

November 17, 2011—San Francisco, California

Filed February 7, 2012

Before: Michael Daly Hawkins, M. Margaret McKeown, and

Milan D. Smith, Jr., Circuit Judges.

Opinion by Judge McKeown

1269
COUNSEL

Scott S. Christie (argued), McCarter & English, Newark, New

Jersey, for the plaintiffs-appellants.

James C. Martin, Charles H. Dougherty, Jr., Donna M. Doblick (argued), Clay P. Hughes, Reed Smith LLP, Pittsburgh,

Pennsylvania; Carina M. Tan, Reed Smith LLP, Palo Alto,

California; Ivy Y. Mei, The Law Offices of Ivy Y. Mei,

Mountain View, California, for the defendant-appellee.

OPINION

McKEOWN, Circuit Judge:

Although “[p]rotection of trade dress, no less than of trademarks, serves the [Lanham] Act’s purpose,” Two Pesos, Inc.

v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992), that protection does not extend to designs that are functional. We consider here whether a traction hoist manufactured by Secalt,

S.A., and Tractel, Inc. (collectively “Tractel”) qualifies for

trade dress protection. We agree with the district court that

Tractel did not meet its burden to establish nonfunctionality

and affirm the grant of summary judgment in favor of Jiangsu

Shenxi Construction Machinery Co. (“Jiangsu”). We affirm

the district court’s award of attorney’s fees to Jiangsu upon

finding that this is an “exceptional” case meriting fees. While

the line delineating “exceptional” cases under the Lanham Act

may be murky, this action falls squarely within the realm of

exceptional cases contemplated by the Act.

SECALT S.A. v. WUXI SHENXI CONSTRUCTION 1273
FACTUAL AND PROCEDURAL BACKGROUND

Tractel manufactures and sells the Tirak traction hoist,

which is used typically for commercial building projects and

external maintenance, like window washing. These devices

are commonly affixed to suspended platforms to power the

platforms up and down stationary wire ropes. Upon discovering that Jiangsu, a Chinese competitor, exhibited similar looking hoists at a trade show in Las Vegas, Tractel brought suit

claiming that Jiangsu’s hoists infringed the trade dress of the

Tractel traction hoist. The complaint included three counts

against Jiangsu: trade dress infringement under the Lanham

Act; federal unfair competition; and related state law trade

dress and unfair competition claims. This photograph reflects

the design of Tractel’s hoist.

1274 SECALT S.A. v. WUXI SHENXI CONSTRUCTION
Tractel alleges that the external design elements of its hoist

deserve trade dress protection. It claims as its trade dress: 1)

a cube-shaped gear box with horizontal fins; 2) a cylindrical

motor mounted in an off-set position on the cube and partially

overhanging the edge of the cube; 3) the cylindrical motor

SECALT S.A. v. WUXI SHENXI CONSTRUCTION 1275
including vertical fins on a lower portion and a generally

smooth sheet metal upper cover having a control descent lever

and top cap positioned over the upper end and supported by

rectangular legs; 4) a rectangular control box cantilevered to

the motor by a square shaped member, the control box positioned over the cube, the control box including controls

thereon; and 5) a rectangular frame.

In the district court, Jiangsu argued that Tractel failed to

establish that its claimed trade dress was nonfunctional. Noting that “[e]ven when viewed in the most favorable light, the

admissible evidence submitted by Tractel fails to suggest that

the alleged Tirak trade dress is non-functional,” the district

court granted summary judgment in favor of Jiangsu. The district court also found the action to be “exceptional” under the

Lanham Act and awarded both fees and costs to Jiangsu.

DISCUSSION

I. TRADE DRESS PROTECTION AND NONFUNCTIONALITY

[1] Trade dress protection under federal law is designed to

promote competition. TrafFix Devices, Inc. v. Mktg. Displays,

Inc., 532 U.S. 23, 28 (2001). Such protection, however, “must

subsist with the recognition that in many instances there is no

prohibition against copying goods and products.” Id. at 29.

Rather, “[t]he physical details and design of a product may be

protected under the trademark laws only if they are nonfunctional . . . .” Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512,

515 (9th Cir. 1989) (citing Vuitton Et Fils S.A. v. J. Young

Enters., 644 F.2d 769, 772 (9th Cir. 1981)). Were a product’s

functional features protected, then “a monopoly over such

features could be obtained without regard to whether they

qualify as patents and could be extended forever.” Disc Golf

Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir.

1998) (citation omitted).

Under the Lanham Act, Congress imposes a presumption of

functionality, and plaintiff bears the burden of proving non1276 SECALT S.A. v. WUXI SHENXI CONSTRUCTION
functionality. 15 U.S.C. § 1125(a)(3) (“In a civil action for

trade dress infringement under this chapter for trade dress not

registered on the principal register, the person who asserts

trade dress protection has the burden of proving that the matter sought to be protected is not functional.”). Therefore,

Tractel, as the “one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature

is not functional, for instance by showing that it is merely an

ornamental, incidental, or arbitrary aspect of the device.”

TrafFix, 532 U.S. at 30. In cases of product design, the

Supreme Court has counseled “that design, like color, is not

inherently distinctive.” Wal-Mart Stores, Inc. v. Samara

Bros., 529 U.S. 205, 212 (2000).

[2] In conducting the functionality analysis, which is a

question of fact, we must be mindful that “‘[f]or an overall

product configuration to be recognized as a trademark, the

entire design must be nonfunctional.’ ” Leatherman Tool Grp.

v. Cooper Indus., 199 F.3d 1009, 1012 (9th Cir. 1999) (quoting Clamp, 870 F.2d at 516); see also Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 786 (9th Cir. 2002) (foreclosing a

finding of nonfunctionality where “ ‘the whole is nothing

other than the assemblage of functional parts’ ” (quoting Leatherman, 199 F.3d at 1013)). “De facto” functionality means

that the “design of a product has a function, i.e., a bottle of

any design holds fluid,” whereas “de jure” functionality

means that the “product is in its particular shape because it

works better in this shape.” Leatherman, 199 F.3d at 1012

(citation omitted). “[B]efore an overall product configuration

can be recognized as a trademark, the entire design must be

arbitrary or non de jure functional.” Id.

[3] Tractel claims that the overall exterior appearance of its

hoist is nonfunctional because the hoist’s design—wherein

the component parts meet each other at right angles—

demonstrates a “cubist” look and feel. Its engineering manager testified that the hoist’s “cube shape was part of the

design look” and that the fins were supposed to be “modern”

SECALT S.A. v. WUXI SHENXI CONSTRUCTION 1277
and “flashy.” Tractel touts the “singular exterior design” that

sets its hoist apart from those of its competitors by presenting

evidence that its hoist has “more square edges” and a “rectangular look.”1

 Tractel’s fundamental misunderstanding—which

infects its entire argument—is that the presumption of functionality can be overcome on the basis that its product is visually distinguishable from competing products. While such

distinctive appearance is necessary, it is here insufficient to

warrant trade dress protection.

Our decision in Leatherman is determinative and underscores the fallacy of Tractel’s approach. The court in Leatherman was faced with competing multifunction pocket tools that

resembled the classic “Swiss army knife.” 199 F.3d at 1010.

The defendant’s products contained only “small but not particularly visible differences” from the plaintiff’s product. Id.

Nonetheless, we reversed a jury finding of infringement

because:

To be sure, the [pocket tool] has an appearance, as

every physical object must. There is no evidence,

however, that anything about that appearance (other

than the Leatherman name) exists for any nonfunctional purpose. Rather, every physical part of the

Leatherman [tool] is de jure functional. . . . [T]he

evidence showed, as in Textron, that “the product is

in its particular shape because it works better in this

shape.”

Id. at 1013 (quoting Textron, Inc. v. U.S. Int’l Trade Comm’n,

753 F.2d 1019, 1025 (Fed. Cir. 1985)).

[4] Just as in Leatherman, Tractel’s hoist has an exterior

appearance, as every object must; but there is no evidence that

anything about the appearance exists for any nonfunctional

1

The briefs and record in this case were filed under seal; however, nothing we discuss in this opinion is proprietary or confidential. 

1278 SECALT S.A. v. WUXI SHENXI CONSTRUCTION
purpose. Rather, every part is de jure functional. A piece of

industrial machinery with “rectangular” components that meet

each other at “right angles,” without more, is wholly insufficient to warrant trade dress protection. It is not enough to say

that the design portrays a “cubist” feel—so does a square

table supported by four legs. The fins may be attractive but

they serve a functional purpose. And the cube-shaped gear

box is simply housing. Except for conclusory, self-serving

statements, Tractel provides no other evidence of fanciful

design or arbitrariness; instead, here, “the whole is nothing

other than the assemblage of functional parts, and where even

the arrangement and combination of the parts is designed to

result in superior performance, it is semantic trickery to say

that there is still some sort of separate ‘overall appearance’

which is non-functional.” Id.

[5] As evidence of nonfunctionality, Tractel points to a

United States design patent issued to Griefzug Hebezeubau

GmbH. To be sure, the Supreme Court has recognized that a

“producer can ordinarily obtain protection for a design that is

inherently source identifying (if any such exists) . . . by securing a design patent or a copyright . . . .” Wal-Mart, 529 U.S.

at 214.2

 Design patent protection, which is limited, extends

only to “any new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171; see also Manual of

Patent Examining Procedure § 1504.01 (8th ed. rev. July

2010). Such protection extends only to “the appearance of the

article and not structural or utilitarian features.”

[6] Courts have uniformly held that a design patent, without more, is insufficient to prove that a design is nonfunc2

Tractel also argues that its trade dress serves as a source identifier to

the public. This argument misses the mark because “[w]hether a feature

is functional has no direct bearing on whether it plays a source-identifying

role. The functionality analysis should not be conflated with the inquiry

into whether the purchasing public associates the dress with a particular

source.” Clicks Billiards Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1260

(9th Cir. 2001) (internal quotation marks omitted). 

SECALT S.A. v. WUXI SHENXI CONSTRUCTION 1279
tional. See McCarthy on Trademarks and Unfair Competition,

§ 7.93 (4th ed. 2010) (“While a design patent is some evidence of nonfunctionality, alone it is not sufficient without

other evidence.”). In Krueger Int’l, Inc. v. Nightingale Inc.,

then-District Judge Sotomayor collected cases and concluded

that “[a]t best, a design patent can only help rebut the functionality defense; it cannot do the whole job of proving inherent distinctiveness. The plaintiff still needs to show that, in its

market at the time of the alleged infringement, the design is

both ornamental and deserving of trade dress protection.” 915

F. Supp. 595, 605 (S.D.N.Y. 1996), overruled on other

grounds by Landscape Forms, Inc. v. Columbia Cascade Co.,

113 F.3d 373 (2d Cir. 1997). Other than conclusory assertions

about the design patent, Tractel offers no other relevant evidence. Because Tractel is unable to present evidence of nonfunctionality, it fails to demonstrate that the exterior design

and appearance of its hoist deserve trade dress protection.

Tractel’s reliance on the design patent is further problematic for a number of reasons. To begin, Tractel baldly asserts

its claimed trade dress is protected by the patent and yet offers

no analysis and proffers no evidence of any connection with

the design or the designer. Nor is there any evidence the

patent has been assigned or licensed to Tractel, or that Tractel

has any relationship to the patent. The chain becomes even

more attenuated based on the issuance of the patent in the

year 2003, more than twenty years after Tractel started selling

its hoist in the United States. See 35 U.S.C. § 102(b) (“A person shall be entitled to a patent unless . . . the invention was

. . . on sale in this country, more than one year prior to the

date of the application for patent in the United States.”). And

finally, Tractel’s purported trade dress does not even match

the design in the patent.3

 For example, the patent drawings do

3

We recognize that were this a design patent infringement case, the figures in the patent, not Tractel’s commercial product, would be the baseline

design. See Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985,

990 (Fed. Cir. 1993) (“Under the test set forth by the Supreme Court [in

1280 SECALT S.A. v. WUXI SHENXI CONSTRUCTION
not contain legs, whereas Tractel explicitly claims support

“by rectangular legs” as a distinctive feature. In short, Tractel

doesn’t have a leg to stand on via the design patent.

Tractel also criticizes the district court for failing to cite the

four Disc Golf factors in analyzing functionality: “(1) whether

the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the

utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.” Disc Golf, 158 F.3d at 1006.

These factors certainly illuminate the functionality analysis,

but instead of aiding Tractel, they further support the district

court’s finding of functionality.

[7] Disc Golf teaches that “[a] product feature need only

have some utilitarian advantage to be considered functional.”

Id. at 1007. Tractel’s claims of its cubist visual effect are

undermined by its own engineering witness who testified that

numerous features of the claimed trade dress serve a function

—round motors can accommodate the rotating cylindrical

shaft, vertical fins can dissipate heat, and the top cap can keep

water and debris from falling into the fan. Absent is any evidence that these functional aspects of the trade dress were

adorned with arbitrary, ornamental embellishments; instead,

Tractel claims that the exterior design has nothing to do with

how the hoist functions internally and that customers consider

how the hoist performs, not how it looks. This argument

undercuts Tractel’s position by demonstrating that hoists are

fungible goods for which customer preferences do not depend

on visual features. See Tie Tech, 296 F.3d at 785 (differentiatGorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871)], infringement of a

design patent requires a showing that the accused design is substantially

the same as the claimed design. . . . Proper application of the Gorham test

requires that an accused design be compared to the claimed design, not to

a commercial embodiment.”). 

SECALT S.A. v. WUXI SHENXI CONSTRUCTION 1281
ing between features that constitute the benefit that the consumer wishes to purchase, which is unprotected, from

artificial embellishment, which has trademark significance).

Since at least some (and in this case significant) utilitarian

advantage stems from the visual appearance, the presumption

of functionality remains intact.

[8] Under the second Disc Golf factor, a lack of alternative

designs favors a finding of functionality. It is undisputed that

Tractel’s competitors market and sell hoists that look similar,

but not identical, to the Tractel hoist. This does not help Tractel because “[e]ven though many of the [competitor’s hoists]

likely are highly functional and useful, none of them offer

exactly the same features as [Tractel’s hoist].” Leatherman,

199 F.3d at 1013-14. For example, a particular alternative

design might be smaller or larger than Tractel’s hoist. As such

it may be preferred by a customer looking either for a easily

maneuverable hoist, or a heavier duty hoist. The same considerations apply to differences in maintenance costs and ease of

storage. Unfortunately for Tractel, “a customer’s preference

for a particular functional aspect of a product is wholly distinct from a customer’s desire to be assured ‘that a particular

entity made, sponsored, or endorsed a product.’ Whereas the

latter concern encompasses the realm of trademark protection,

the former does not.” Tie Tech, 296 F.3d at 786-87 (quoting

Leatherman, 199 F.3d at 1012).

[9] Next, advertising that touts the utilitarian advantages of

the Tractel design points to functionality. Tractel’s advertising

specifically claims that the angular construction of its hoist

“[a]llows for easier maintenance. [The hoist] does not roll off

of the table. Service people love it.” This direct utilitarian

advantage of the angular design favors functionality.

We consider last whether the particular design results from

a comparatively simple or inexpensive method of manufacture. Since manufacturing costs are generally the same in the

hoist industry, about $2,000 per hoist, this factor is neutral.

1282 SECALT S.A. v. WUXI SHENXI CONSTRUCTION
Jiangsu contends that alternative designs are subsumed by

“competitive necessity” and therefore need not be considered.

As the Supreme Court noted in Inwood Labs., Inc. v. Ives

Labs., Inc., 456 U.S. 844, 850 n.10 (1982), a product feature

is functional “if it is essential to the use or purpose of the article.” The Court later explained that “[w]here [a product’s]

design is functional under the Inwood formulation there is no

need to proceed further to consider if there is a competitive

necessity.” TrafFix, 532 U.S. at 33. Thus, a determination of

functionality under Inwood may be seen as short circuiting

some of the Disc Golf factors. See Au–Tomotive Gold, Inc. v.

Volkswagen of Am., Inc., 457 F.3d 1062, 1071 (9th Cir. 2006)

(“As to functionality, we read the Court’s decision [in TrafFix] to mean that consideration of competitive necessity may

be an appropriate but not necessary element of the functionality analysis.”).

[10] Nonetheless, even if the Disc Golf factors are somewhat more expansive than the Inwood formulation, they do

not aid Tractel in meeting its burden of demonstrating nonfunctionality. Tractel’s hoist is, at bottom, a utilitarian

machine with no indication that the visual appearance of its

rectangular exterior design is anything more than the result of

a simple amalgamation of functional component parts. Absent

are any indicia of arbitrary or fanciful design. “To uphold a

finding of infringement here . . . would suggest that the general appearance of almost any unpatented product rarely if

ever could be copied faithfully. That is not the law.” Leatherman, 199 F.3d at 1011. The form of Tractel’s hoist follows its

function, making the hoist a classic example of “de jure”

functionality. We affirm the district court’s determination that

Tractel did not present evidence sufficient to create a triable

issue as to the nonfunctionality of its claimed trade dress.

II. EXCEPTIONALITY AND ATTORNEY’S FEES

[11] Section 35(a) of the Lanham Act provides that “[t]he

court in exceptional cases may award reasonable attorney fees

SECALT S.A. v. WUXI SHENXI CONSTRUCTION 1283
to the prevailing party.” 15 U.S.C. § 1117(a). An action may

be considered exceptional “[w]hen a plaintiff’s case is

groundless, unreasonable, vexatious, or pursued in bad faith.”

Stephen W. Boney, Inc. v. Boney Servs., 127 F.3d 821, 827

(9th Cir. 1997) (internal citation and quotation marks omitted). The district court concluded that “the plaintiffs were

unable to provide the court with any evidence to support their

assertion that the trade dress was not functional.” It further

found that:

“[T]he mere absence of bad faith on [Tractel’s] part

does not render it ineligible for attorney’s fees.”

[Tractel does] not provide the court with any evidence that there were “debatable issues of law and

fact” with regards to the trade dress. They assert

rights in the design patent to rebut the defendant’s

‘unreasonable’ argument, yet fail to produce evidence that they own the design patent or that the true

owner assigned the rights to them.

In light of these factors, Tractel’s continued prosecution of its

claims was held by the district court to be “unreasonable.”

We review de novo the district court’s legal determination

that an action is “exceptional” under the Lanham Act; however, once an action is determined to be exceptional, the district court’s decision to award attorney’s fees is reviewed for

an abuse of discretion. Earthquake Sound Corp. v. Bumper

Indus., 352 F.3d 1210, 1216 (9th Cir. 2003).

[12] The line distinguishing exceptional cases from nonexceptional cases is far from clear. It is especially fuzzy

where the defendant prevails due to plaintiff’s failure of

proof. We have previously held that an action is exceptional

under the Lanham Act if the plaintiff has no reasonable or

legal basis to believe in success on the merits. See Cairns v.

Franklin Mint Co., 292 F.3d 1139, 1156 (9th Cir. 2002) (“The

false advertisement claim was groundless and unreasonable

1284 SECALT S.A. v. WUXI SHENXI CONSTRUCTION
because the statements in the advertisements at issue were

true and [plaintiff] had no reasonable basis to believe they

were false.”); id. (“the dilution of trademark claim was

groundless and unreasonable because it had no legal basis”).

In other words, exceptional cases include instances where

plaintiff’s case is frivolous or completely lacking in merit.

[13] Although Tractel does not ultimately prevail, were it

able to provide some legitimate evidence of nonfunctionality,

this case would likely fall on the unexceptional side of the

dividing line. When summary judgment motions were heard,

the parties had been in discovery for almost two years, taken

multiple depositions, and compiled substantial documents.

Yet, Tractel could not identify the aesthetic value of the exterior design, and was reduced to arguing that it was pursuing

a “cubist” look and feel even though its own witnesses undercut this argument.

[14] In addition, months before the summary judgment

proceedings, the Northern District of Georgia, in a separate

action regarding the same claimed trade dress, denied Tractel’s motion for a preliminary injunction because “there’s

nothing about [Tractel’s] design that is arbitrary, incidental or

ornamental.” The court went even further: “Each of the features of the alleged trade dress, based on the evidence that

I’ve heard, serve a function in the operation of the hoist. . .

. There’s an utter failure of evidence . . . .” Although the

Georgia decision was made at the preliminary injunction

stage, Tractel was on notice that even on its own motion for

relief, there was “an utter failure” of proof. Given that evidence of nonfunctionality would be primarily in Tractel’s possession, its inability to demonstrate nonfunctionality in the

Georgia case seriously undercuts its arguments that it was

raising “debatable issues of law and fact” in this action. Stephen W. Boney, Inc., 127 F.3d at 827.

As it turned out, the testimony at summary judgment in

Nevada played out just like in Georgia—there was an utter

SECALT S.A. v. WUXI SHENXI CONSTRUCTION 1285
failure of proof. Tractel failed to “provide the court with any

evidence that there were ‘debatable issues of law and fact’

with regards to the trade dress.” From its own witnesses,

Tractel at best offered either unsupported or conclusory

claims about the design. Fatal to its claim was the testimony

of its own witnesses who honestly laid out the functional

nature of the design. Lacking was any evidence, like engineering notebooks or testimony from the designers, about

design or aesthetics. Even more devastating was the testimony

of third-party witnesses called by Tractel who laid bare the

claim of nonfunctionality. For example, they testified that the

fins play an important function of dissipating heat and are not

for aesthetics. Likewise, the shape of the hoist is practical

because it fits in confined construction sites and it is “more

efficient and more compact” than some of the other hoists on

the market. One of Tractel’s distributors, who was also a hoist

industry professional, summed up the functional reality of the

Tractel hoist:

[T]he entire design is predicated on function from

what I’ve seen, and again as with most hoist manufacturers, every element on there is critical to the

design otherwise they wouldn’t waste the money or

the weight which again comes back to the weight is

the key component. So in my opinion every element

on there is important to the function.

Faced with this evidence, the slim reed offered by Tractel

is a design patent for a hoist that does not mirror the Tractel

hoist. Tellingly, Tractel does not offer evidence that it has any

claim or rights in the patent or even that it is a valid patent.

Although we do not favor a mini patent trial within the trade

dress context, Tractel cannot simply raise the specter of a

third-party patent and hope it will serve to support nonfunctionality. We need not decide whether, under different circumstances, a trade dress claimant could rely on its own

identical design patent to overcome the lack of any other evidence of nonfunctionality, though the case law suggests other1286 SECALT S.A. v. WUXI SHENXI CONSTRUCTION
wise. Nonetheless, Tractel cannot even make that claim.

Simply pointing to a design patent with similarities (and differences) to its claimed trade dress is insufficient to raise a

“debatable issue of law or fact.”

[15] Although the timing of Tractel’s suit could be considered suspicious, such preemptive suits are not uncommon in

intellectual property matters. Even if Tractel had an ulterior

anti-competitive motive, had it made a colorable claim, that

factor would weigh in our analysis. See Mennen Co. v. Gillette Co., 565 F. Supp. 648, 657 (S.D.N.Y. 1983), aff’d, 742

F.2d 1437 (2d Cir. 1984) (attorney’s fees justified where suit

was filed “as a competitive ploy”). Instead, Tractel’s action

appears to be a conscious, albeit misguided, attempt to assert

trade dress rights in a non-protectable machine configuration.

We affirm the district court’s finding that this is an exceptional case meriting attorney’s fees under 15 U.S.C.

§ 1117(a).

III. AWARD OF ATTORNEY’S FEES

The district court awarded Jiangsu $836,899.99 as attorney’s fees and non-taxable costs. We outlined the path for fee

calculation in Intel Corp. v. Terabyte Int’l, Inc.:

When it sets a fee, the district court must first determine the presumptive lodestar figure by multiplying

the number of hours reasonably expended on the litigation by the reasonable hourly rate. Next, in appropriate cases, the district court may adjust the

‘presumptively reasonable’ lodestar figure based

upon the factors listed in Kerr v. Screen Extras

Guild, Inc., 526 F.2d 67, 69-70 (9th Cir. 1975), that

have not been subsumed in the lodestar calculation.

6 F.3d 614, 622 (9th Cir. 1993) (internal citations omitted).

Although the district court did not parse out the lodestar calculation or the Kerr factors, its order first discussed and

SECALT S.A. v. WUXI SHENXI CONSTRUCTION 1287
rejected Tractel’s arguments, and then adopted the lodestar

calculation performed by Jiangsu. On appeal, Tractel raises

again the arguments already rejected by the district court. The

district court’s analysis is amply supported by the record.

Tractel first claims that the rates charged by Jiangsu’s

attorneys—$320 to $685 per hour—exceeded prevailing rates.

Jiangsu’s attorneys explained that the rates “reflect a negotiated discount from market rates,” and are “well within the

range for comparably-experienced attorneys” because they

“take into account the experience of the individual attorney,

the geographic location of that attorney’s practice, and

publicly-available information concerning rates charged by

similar law firms.” The district court did not abuse its discretion in awarding the hourly rate.

According to the district court, the time spent by Jiangsu’s

attorneys was reasonable. Even though Jiangsu’s attorneys

tersely testified that the fees incurred were “reasonable and

necessary” to defend against Tractel’s claims, twenty-two

months of discovery, including foreign language documents

and multiple motions to compel, numerous transnational inperson depositions with interpreters, cross-motions for summary judgment, and a motion to exclude expert testimony,

support the reasonableness of the time expended.4

Tractel also argues that the bills contain conclusory narratives.5

 Given the voluminous billing entries, spanning two

4

Tractel’s reliance on the design patent prompted the need for a patent

attorney. Ivy Mei, an American patent attorney who speaks Mandarin,

interfaced between domestic counsel and the non-English speaking defendant. Given her unique position, her fees were not unreasonable simply

because she spent some of her time on logistics. 5

The allegedly conclusory narratives include “teleconference with

. . . ,” “discuss case . . . ,” “work with . . . ,” “communicate with . . . ,”

“provide translation,” and “SJM.” The first four entries all list the individuals involved, and the remaining two, while not a model of clarity, are

obvious in context. For instance, “SJM” appears to stand for Summary

Judgment Motion. 

1288 SECALT S.A. v. WUXI SHENXI CONSTRUCTION
years, the district court did not abuse its discretion in awarding fees for such entries, which are few in number. The same

rationale applies to Tractel’s claim that Jiangsu engaged in

block billing. Though a small subset of the billing entries list

numerous tasks performed over multi-hour spans, it was not

an abuse of discretion for the district court to award the associated fees because counsel “is not required to record in great

detail how each minute of his time was expended.” Hensley

v. Eckerhart, 461 U.S. 424, 437 n.12 (1983).6

[16] Finally, attorney’s fees under the Lanham Act may

also include reasonable costs that the party cannot recover as

the “prevailing party.” See Grove v. Wells Fargo Fin. Cal.,

Inc., 606 F.3d 577, 580 (9th Cir. 2010) (“we repeatedly have

allowed prevailing plaintiffs to recover non-taxable costs

where statutes authorize attorney’s fees awards to prevailing

parties.”). The district court awarded $83,229.49 for twelve

such categories of costs, including “legal research,” “deposition expenses,” and “expert witness fee.” Since no further

details or itemization was provided, neither Tractel nor we

can determine whether the costs were in fact reasonably

incurred. The district court abused its discretion by failing to

confirm their reasonableness, and also by failing to “determine whether it is the prevailing practice in the given community for lawyers to bill those costs separate from their hourly

rates.” Id. at 583. We remand to the district court to consider

the reasonableness of these costs.

IV. TAXABLE COSTS

[17] The district court awarded taxable costs associated

with two interpreters after finding that in at least one instance,

the “dialect of the first interpreter was not the same as that of

the witnesses, and that the second interpreter played a ‘vital

role,’ as she was able to communicate for the parties.” The

6

We acknowledge Tractel’s multiple remaining arguments but are not

persuaded the district court abused its discretion in calculating the fees. 

SECALT S.A. v. WUXI SHENXI CONSTRUCTION 1289
related holding that the second interpreter was therefore necessary during all four depositions in December 2009 was

therefore not an abuse of discretion. The district court did,

however, abuse its discretion in reimbursing, as translation

costs, expenses associated with an attorney providing informal translation services. Since there is no evidence that attorney Lam was qualified to provide translation services, her

attorney’s fees were not properly charged as “interpreter

costs.” The district court further abused its discretion by

awarding an extra $738.90 in deposition costs that are not

substantiated by the bills.

CONCLUSION

[18] We affirm the district court’s grant of summary judgment, its finding of exceptionality, and its award of attorney’s

fees under the Lanham Act. We reverse the district court’s

award of non-taxable costs and certain taxable costs and

remand for further proceedings.

AFFIRMED in part; REVERSED in part; and

REMANDED. Costs on appeal are awarded to Jiangsu.

1290 SECALT S.A. v. WUXI SHENXI CONSTRUCTION