United States Court of Appeals

For the First Circuit

No. 05-2098

No. 05-2181 

ATTREZZI, LLC,

Plaintiff, Appellee/Cross-Appellant,

v.

MAYTAG CORPORATION,

Defendant, Appellant/Cross-Appellee.

APPEALS FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF NEW HAMPSHIRE

[Hon. Paul J. Barbadoro, U.S. District Judge]

Before

 Boudin, Chief Judge,

Selya, Circuit Judge,

and Stahl, Senior Circuit Judge.

Edward A. Haffer with whom Sheehan Phinney Bass & Green,

P.A. was on brief for plaintiff.

James G. Goggin with whom Peter S. Black and Verrill Dana,

LLP were on brief for defendant.

January 27, 2006
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BOUDIN, Chief Judge. Attrezzi, LLC, ("Attrezzi LLC") a

New Hampshire limited liability company, operates a single retail

store of the same name in Portsmouth, New Hampshire, specializing

in fine kitchen products and services. The proprietor, Jennifer

Slade, opened her shop's doors in June 2002, and at the same time

launched a website (www.attrezzinh.com) to support an anticipated

mail-order business. Slade obtained a New Hampshire trademark

registration for "Attrezzi" in November 2003.

Maytag, a well-known appliance maker, selected the same

word, "Attrezzi," in the spring of 2003 as the name for a new line

of small electric kitchen appliances that Maytag was preparing to

launch. Attrezzi LLC's line of products includes such appliances

although it does not carry Maytag's products. Before launching its

line, Maytag learned through the customary trademark investigation

that Attrezzi LLC was using the term for its business, and Maytag's

in-house trademark counsel warned that this created "a problem."

After higher management asked its in-house counsel to

"take another look," counsel reversed his position, and in March

2003 Maytag filed an "intent-to-use" application with the Patent

and Trademark Office ("PTO") to register Attrezzi as its trademark

for small electric appliances. The next month Maytag began to

promote the name as a sub-brand of "Jenn-Air," its "high-end house

mark"; it announced that its "Jenn-Air Attrezzi" line would include
Section 1125(a) provides a cause of action for the use in 1

commerce of "any word, term, [or] name" which is "likely to cause

confusion, or to cause mistake, or to deceive as to the

affiliation, connection, or association of such person with another

person, or as to the origin, sponsorship, or approval of his or her

goods, services, or commercial activities by another person."

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small electric kitchen appliances and might extend to "our own

coffee," "[b]ar ware, cups, glasses, [and] cutlery."

The PTO eventually approved Maytag's application (subject

to opposition) and gave public notice of this action. Attrezzi LLC

wrote to Maytag complaining of Maytag's use of the term Attrezzi

and filed a "use" service mark application of its own, with the

PTO, to register the term for retail store and online use for the

sale of kitchen and dining goods. Maytag responded to Attrezzi LLC

that there was no likelihood of customers confusing the source of

Jenn-Air Attrezzi branded products with the Attrezzi store.

In turn, Attrezzi LLC filed suit, in October 2003, in

federal district court in New Hampshire, charging Maytag with

violating the unfair competition provision of the Lanham Act, 15

U.S.C. § 1125(a) (2000), and New Hampshire's trademark 1

infringement, unfair competition, and trademark dilution statutes,

N.H. Rev. Stat. Ann. §§ 350-A:11-14, 358-A:2, 350-A:12 (1995 &

Supp. 2005). Attrezzi LLC requested a jury trial and sought

declaratory relief, a permanent injunction against the use of the

term Attrezzi, and enhanced damages, attorneys' fees and costs.
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 Prior to trial, the district court denied Attrezzi LLC's

motion for a preliminary injunction and Maytag's motion for summary

judgment. It also denied Maytag's motion to strike Attrezzi LLC's

jury demand, reserving the question until "after the case has been

completed," at which point, "[i]f [the court] determine[s] that

plaintiff does not have a right to a jury trial, [it] w[ould] treat

the jury's verdict as advisory pursuant to Fed. R. Civ. P. 39(c)."

In the meantime, in September 2004, Attrezzi LLC filed an

opposition before the PTO to Maytag's application to register

Attrezzi.

After a five-day trial in February 2005, the jury found

Maytag to have willfully infringed Attrezzi LLC's trademark and to

have caused damages of $5,400 (the cost of Attrezzi LLC's

opposition to Maytag's application before the PTO). After posttrial proceedings, the district court granted a permanent

injunction against Maytag's use of the mark Attrezzi (but allowed

it a 12-month period to sell off stock so marked) and awarded

double damages ($10,800) and attorneys' fees.

Maytag now appeals from the judgment against it.

Attrezzi LLC cross-appeals, opposing the 12-month sell-off period

and the denial of certain litigation expenses. This court granted

unopposed motions for a stay of the injunction pending appeal and

for expedited consideration of the appeals. We begin with Maytag's

claims of error--that there was no right to a jury trial; that even
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if there were, the evidence did not permit findings necessary to

liability; and that the provision of the New Hampshire statute

providing for the award of attorneys' fees and enhanced damages is

preempted by the Lanham Act.

The jury trial issue deserves attention first because, in

its post-trial proceedings, the district judge said that in a bench

trial, he would have decided the case in Maytag's favor. His

reason was that, if he were the trier of fact, he would have found

the evidence insufficient in the present circumstances to establish

a likelihood of customer confusion as between Attrezzi and Jenn-Air

Attrezzi. Had the jury trial been disallowed, we would be

reviewing the evidence from the opposite perspective.

Maytag made a timely objection to a jury trial, which it

renewed in its motions for judgment as a matter of law. Its main

argument was that the injunctive action was equitable and that no

evidence supported a claim for damages. An infringement claim for

damages is a common-law rather than an equitable claim and such a

claim would be triable to a jury even if joined, as here, with a

request for equitable relief. Beacon Theatres, Inc. v. Westover,

359 U.S. 500, 508-11 (1959).

Here, Maytag's attack is solely on the sufficiency of the

evidence presented at trial to show monetary damages. We are thus

spared any consideration of how matters stood at the pleading and

summary judgment stages. Compare Laskaris v. Thornburgh, 733 F.2d
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260, 264 (3d Cir.), cert. denied, 469 U.S. 886 (1984), with

Hildebrand v. Bd. of Trs. of Mich. State Univ., 607 F.2d 705, 709-

10 (6th Cir. 1979).

Since the jury in this case found damages, Maytag's

attack must fail unless "reasonable persons could not have reached

the conclusion that the jury embraced." Sanchez v. P.R. Oil Co.,

37 F.3d 712, 716 (1st Cir. 1994). As we have said elsewhere, the

test "is a stringent one":

"[W]e must examine the evidence in the light

most favorable to the plaintiff and determine

whether there are facts and inferences

reasonably drawn from those facts which lead

to but one conclusion--that there is a total

failure of evidence to prove plaintiff's

case." Mayo v. Schooner Capital Corp., 825

F.2d 566, 568 (1st Cir. 1987) (quotation and

citation omitted). In reviewing the record,

we will evaluate neither the credibility of

the witnesses nor the weight of the evidence.

Santiago-Negron v. Castro-Davila, 865 F.2d

431, 445 (1st Cir. 1989).

Vázquez-Valentín v. Santiago-Díaz, 385 F.3d 23, 29 (1st Cir. 2004),

petition for cert. filed, 73 U.S.L.W. 3604 (U.S. Feb. 11, 2005)

(No. 04-1322).

In this instance, Maytag argues that there was never any

basis for Attrezzi LLC's claim of monetary damages because Attrezzi

LLC introduced no evidence of lost profits or damage to its

goodwill. And, although Attrezzi LLC did claim and obtained

damages reflecting the expense of opposing Maytag's PTO

application, Maytag says that this expense was unrecoverable
Conceivably, Maytag could have argued against the PTO 2

expenses on other grounds (e.g., that if the PTO expenses were

recoverable it was as equitable relief and not as "legal" damages,

cf. 5 McCarthy, McCarthy on Trademarks and Unfair Competition §

32:124, at 32-206 to 32-207 & nn.5-6 (4th ed. 2005)). We mention

the possibility only to make clear that we are not deciding

possible objections not presented.

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because full relief including an injunction could have been granted

by the district court, making it unnecessary for Attrezzi LLC to

oppose Maytag's PTO application.2

It is true as a general matter that a patently

unnecessary expense would be avoidable damage and so not

collectible. See Restatement (Second) of Torts § 918 (1979).

Maytag argues that the opposition was unnecessary because the

district court could have granted injunctive relief. However,

fearing the repercussions of a PTO grant for the infringement claim

in district court, a competent lawyer could sensibly oppose

Maytag's PTO application. It is a matter of reasonable judgment

whether the precaution was legitimate; nothing indicates that

Attrezzi LLC's choice was unreasonable.

This brings us to the central issue on the appeal,

namely, Maytag's claim that at trial there was insufficient

evidence of a protectable mark and of likely customer confusion to

permit a verdict for Attrezzi LLC. Although our review of the

district court's rejection of the Rule 50(b) motions is de novo,

the question is whether any rational jury could have found for

Attrezzi LLC on the evidence presented. Sanchez, 37 F.3d at 716.
"'A term is suggestive if it requires imagination, thought 3

and perception to reach a conclusion as to the nature of goods. A

term is descriptive if it forthwith conveys an immediate idea of

the ingredients, qualities or characteristics of the goods.'"

Equine Techs., Inc. v. Equitechnology, Inc., 68 F.3d 542, 544 (1st

Cir. 1995) (quoting Blinded Veterans Ass'n v. Blinded Am. Veterans

Found., 872 F.2d 1035, 1040 (D.C. Cir. 1989)).

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Under governing case law, a trade name is safeguarded by

the Lanham Act only if the mark is "distinctive," a term of art

meaning that the mark must be arbitrary or "suggestive" or, if

merely "descriptive," must have acquired "secondary meaning." An 3

arbitrary or suggestive term, being "inherently distinctive," can

be appropriated by a first user, while a descriptive term is

subject to such appropriation "only if it has acquired 'secondary

meaning' by which consumers associate it with a particular producer

or source." Boston Beer Co. Ltd. P'ship v. Slesar Bros. Brewing

Co., 9 F.3d 175, 180 (1st Cir. 1993).

The jury found specially that Attrezzi LLC's use of the

name Attrezzi for its goods was a suggestive, rather than a

descriptive use, and that in any event the name had acquired

secondary meaning. Both findings are treated as determinations of

fact, Boston Beer, 9 F.3d at 180, and it is enough to qualify the

name for protection if either one is established. Here, a rational

jury could find the Attrezzi mark, as used to identify a service

selling kitchen appliances, utensils, and dinnerware, to be

suggestive.
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Under the "doctrine of foreign equivalents," a foreign

word is ordinarily translated into English to determine whether it

is suggestive or descriptive. See, e.g., Pizzeria Uno Corp. v.

Temple, 747 F.2d 1522, 1531-32 (4th Cir. 1984); see also 2

McCarthy, McCarthy on Trademarks and Unfair Competition § 11:34, at

11-66 (4th ed. 2005). The district court so charged the jury and

neither side contests the instruction. Attrezzi is an Italian word

meaning "tools." Maytag argues that the term is merely descriptive

as it relates to Attrezzi LLC's business, which consists of

selling, among other things, "chef's tools."

But Attrezzi translates as "tools," not "chef's tools";

as applied to kitchen implements and appliances, the term can

easily be viewed as suggesting a similarity, not an identity,

between ordinary workman's tools and electrical appliances or the

like used by a chef. It does not help Maytag that the PTO had

originally balked at Maytag's own application and then given way

when Maytag urged the PTO that Attrezzi was suggestive rather than

descriptive as applied to Maytag's kitchen appliances.

Alternatively, Maytag argues that the evidence did not

permit a rational jury to find "likelihood of confusion," as

required for trademark infringement and unfair competition actions.

The precise showing is proof "that the allegedly infringing

conduct"--here, Maytag's use of the mark Attrezzi--"carries with it

a likelihood of confounding an appreciable number of reasonably
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prudent purchasers exercising ordinary care." Int'l Ass'n of

Machinists & Aerospace Workers, AFL-CIO v. Winship Green Nursing

Ctr., 103 F.3d 196, 201 (1st Cir. 1996). The question of confusion

of non-customers, Beacon Mut. Ins. Co. v. OneBeacon Ins. Group, 376

F.3d 8, 16 (1st Cir. 2004), is not at issue here.

Attrezzi LLC did not advance an ordinary confusion claim,

i.e., one in which the claimant asserts that the infringer is

diverting the claimant's customers and free-riding on the

claimant's reputation and goodwill. Rather, its claim was one of

"reverse" confusion, by which Attrezzi LLC might be harmed by

purchasers misperceiving that Maytag--because of its use of the

term Attrezzi in its own advertising--was the source or sponsor of

Attrezzi LLC's goods and services. See DeCosta v. Viacom Int'l,

Inc., 981 F.2d 602, 608 (1st Cir. 1992) (endorsing the reverse

confusion concept), cert. denied, 509 U.S. 923 (1993).

In such a case, damage can result either because current

or prospective customers of the claimant associate the claimant's

product with an inferior product offered by the infringer, or

because the latter's use of the mark "saturates the market and

'overwhelms the senior user,'" such that "'the senior user loses

the value of the trademark, its product identity, corporate

identity, control over its goodwill and reputation, and ability to

move into new markets.'" 3 McCarthy, supra, § 23:10, at 23-36

(quoting Ameritech, Inc. v. Am. Info. Techs. Corp., 811 F.2d 960,
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964 (6th Cir. 1987)). Attrezzi LLC in fact argued at trial that

difficulties with Maytag's Attrezzi-branded products--whether the

complaints were atypical goes only to degree--were acknowledged

internally within Maytag and reinforced the danger that Attrezzi

LLC might be tarred with the same brush to the extent that

confusion existed.

Whatever the source or extent of such damage, the

requirement of likely confusion is common both to the ordinary

"forward" confusion claim and the "reverse" confusion variant urged

in this case. In assessing confusion, this circuit has resorted to

the consultation of a series of factors rather than any mechanical

formula. A representative list includes:

(1) the similarity of the marks; (2) the

similarity of the goods (or, in a service mark

case, the services); (3) the relationship

between the parties' channels of trade; (4)

the juxtaposition of their advertising; (5)

the classes of prospective purchasers; (6) the

evidence of actual confusion; (7) the

defendant's intent in adopting its allegedly

infringing mark; and (8) the strength of the

plaintiff's mark.

Winship Green, 103 F.3d at 201; see also Pignons S.A. de Mecanique

de Precision v. Polaroid Corp., 657 F.2d 482, 487 (1st Cir. 1981).

Here, both sides have points in their favor. Both use

the word Attrezzi and to this extent the marks are identical rather

than merely similar. On the other hand, Maytag uses the word only

in conjunction with the term Jenn-Air (i.e., Jenn-Air Attrezzi),

which could help diminish the chance of confusion. See Pignons,
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657 F.2d at 487. Yet since the alleged harm is reverse confusion,

to the extent Jenn-Air is itself the more recognized label the

linkage could actually aggravate the threat to Attrezzi LLC. A &

H Sportswear, Inc. v. Victoria's Secret Stores, Inc., 237 F.3d 198,

230 (3d Cir. 2000).

Turning to the overlap of products, Maytag fairly points

out that its Jenn-Air Attrezzi products are appliances while

Attrezzi LLC uses the Attrezzi term to represent its entire retail

business. But Attrezzi LLC itself sells small electric appliances

alongside its gourmet foods and dinnerware. This is not a case in

which two products are so dissimilar as to make confusion highly

unlikely; and the more similar the marks are, the less necessary it

is that the products themselves be very similar to create

confusion. 3 McCarthy, supra, § 23:20.1, at 23-73 to 23-74 & nn.1-

2 (collecting cases).

 Channels of trade, advertising modes, and prospective

customers--a set of factors often considered together, see Winship

Green, 103 F.3d at 204--also cut both ways. Maytag is a national

manufacturer selling through stores and catalogues while Attrezzi

LLC operates a single retail store engaged in local sales. But

both use websites--Attrezzi LLC has customers in many states--and

searches using the terms Attrezzi or Jenn-Air Attrezzi turn up both

companies' websites. Both parties aim at basically the same highend customers, a point in favor of Attrezzi LLC, but conceivably
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customer sophistication could also ameliorate confusion, Pignons,

657 F.2d at 489.

Attrezzi LLC's evidence of actual confusion, often deemed

the best evidence of possible future confusion, Beacon Mut., 376

F.3d at 18, is limited but real: eight e-mails mistakenly sent to

it rather than Maytag through Attrezzi LLC's website (complaining

of problems with Jenn-Air Attrezzi products); testimony that the

New Hampshire store had received a dozen or so calls intended for

Maytag; and written declarations from two Attrezzi LLC customers

that they had been confused--for example:

I thought that Maytag operated Attrezzi as one

of a chain of retail shops. Part of the

reason for this belief is the distinctiveness

of the Attrezzi name. I figured that because

both companies were using the same name in the

kitchen products market, they must be related.

The "good faith" of the alleged infringer is yet another

factor. Here, although Maytag offered an innocent explanation for

disregarding the initial advice of its in-house counsel, the jury

seemingly concluded in its willfulness finding that Maytag was well

aware of a substantial risk of confusion and nonetheless decided to

gamble. On the other hand, there is some distance in a case like

this one between a company's knowing decision to risk a law suit

and a factual inference that customer confusion is likely.

Finally, the respective strengths of the junior and

senior marks--in a nutshell, their respective renown--are regarded

as relevant. Attrezzi LLC offered some evidence of regional
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success, showing that its retail business "has been mentioned or

featured" in publications such as the Boston Globe and Accent

Magazine, and that it received an award from Business NH magazine

in 2003 for its Attrezzi branding campaign. Maytag showed large

national expenditures to promote Jenn-Air Attrezzi; yet in a

reverse confusion case, the relatively greater strength of a junior

user like Maytag may hurt, rather than help, its defense. See A &

H Sportswear, 237 F.3d at 230-31.

Maytag appears to argue on appeal that because the

Attrezzi mark was suggestive rather than arbitrary, it was

therefore inherently weak. This is not a proposition supported by

any First Circuit case law and its logic is not apparent to us.

The factors commonly considered as to strength--e.g., wide

recognition, efforts to promote, see Beacon Mut., 376 F.3d at 19--

are concerned with practical matters and not the legal

classification of the mark.

In sum, this is not a clear-cut case as to confusion.

Perhaps, like the district judge, we might as factfinders have come

out the other way, but we see no way to describe the jury's

liability verdict as irrational. Civil juries have their benefits

and their risks. Nor is there any hint of a strongly partisan jury

in this case: in the end, no vast damages were awarded; Maytag

will simply have to find another word than Attrezzi to couple to

its Jenn-Air brand.
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Maytag's final argument--attacking the award of

attorneys' fees and double damages--rests on the fact that the

federal statute provides for attorneys' fees only "in exceptional

cases," and permits the court in its discretion to award enhanced

damages "subject to principles of equity." 15 U.S.C. § 1117(a).

New Hampshire, by contrast, provides attorneys' fees as a matter of

course and only to plaintiffs, and offers enhanced damages

automatically upon a showing that the violation was willful or

knowing. N.H. Rev. Stat. Ann. § 358-A:10.

Maytag's argument is that the federal statute ought to be

treated as preempting the deviating state rule as to attorneys'

fees and enhanced damages. Attrezzi LLC says that Maytag forfeited

this argument by waiting until after trial to make it; but both

attorneys' fees and enhancement of damages are decided by the judge

rather than the jury, see Carter v. Lachance, 766 A.2d 717, 719

(N.H. 2001), and Maytag made the preemption-of-remedy argument at

the appropriate time, namely, when the district court was asked to

make the awards.

The Lanham Act does not say expressly that it preempts

state unfair competition law as to attorneys' fees or enhanced

damages, but Maytag argues that two theories of implied preemption

govern in this case: preemption of the "field" and so-called

"conflict" preemption:

When Congress intends federal law to "occupy

the field," state law in that area is
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preempted. . . . [Preemption also occurs]

where it is impossible for a private party to

comply with both state and federal law, and

where "under the circumstances of [a]

particular case, [the challenged state law]

stands as an obstacle to the accomplishment

and execution of the full purposes and

objectives of Congress."

Crosby v. Nat'l Foreign Trade Council, 530 U.S. 363, 372-73 (2000)

(citations omitted). Our review is de novo. Hotz v. Blue Cross &

Blue Shield of Mass., Inc., 292 F.3d 57, 59 (1st Cir. 2002).

It is settled that the Lanham Act does not in general

preclude state unfair competition statutes from operating, see

Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 372 & n.3 (1st

Cir. 1980), so "field" preemption is a dubious argument. Indeed,

it is common practice for federal and state statutes to operate in

the same field--anti-discrimination laws are a classic example--

even though their terms may be somewhat different and state law may

be more favorable to the plaintiff. See, e.g., Dichner v. Liberty

Travel, 141 F.3d 24, 30-31 (1st Cir. 1998).

Thus, conflict preemption is the more apt rubric.

Because there is no issue here of inconsistent commands to a party,

the question is whether New Hampshire's laxer standard for an award

of attorneys' fees or its mandatory award of enhanced damages

undermines the policy of the federal statute. New Hampshire, of

course, has adopted a remedial policy different from Congress' own,

but it has done so with respect to its own statutory cause of

action and not that provided by the Lanham Act.
Not only are Congress' fee-shifting statutes often more 4

favorable to law suits than is section 1117(a), compare, e.g., 42

U.S.C. § 1988 (2000), but there is even a trace of legislative

history in the 1975 amendment explaining that the availability of

the fee-shifting provision to prevailing defendants will "provide

protection against unfounded suits brought by trademark owners for

harassment and the like," S. Rep. 93-1400, 1974 U.S.C.C.A.N. 7132,

7136 (Department of Commerce statement).

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The New Hampshire statute does create a stronger

incentive for plaintiffs to bring unfair competition suits against

trademark infringers by making attorneys' fees for the plaintiffs

automatic on success and by enhancing damages more readily than

under the federal statute. Congress' use of a less favorable

incentive structure for federal suits was deliberate: enhanced

damages were from the outset left to the judge's discretion, and

when Congress amended the Lanham Act in 1975 to permit attorneys'

fees, Pub. L. No. 93-600, 88 Stat. 1955 (1975), it deliberately

made them discretionary and evenhandedly available to both sides.4

But it is accepted that Congress did not prohibit state

unfair competition statutes that might have substantive terms

somewhat more favorable to plaintiffs than the Lanham Act. See

Keebler, 624 F.2d at 372 n.3. That is apparently not true of New

Hampshire's statute in this case--at least, neither party has

argued as much--but it is not unusual in other types of protective

statutes. See, e.g., Coady Corp. v. Toyota Motor Distribs., Inc.,

361 F.3d 50 (1st Cir. 2004). In this sense, to complain in this
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case about the modest deviation in remedial benefits favorable to

plaintiffs is to swallow the camel but strain at the gnat.

Admittedly, trademark protection has great potential to

affect interstate commerce, as this case illustrates (e.g., both

parties' use of the internet, and Maytag's national advertising).

Excessive protection--even if not biased in favor of local

residents--can compromise interstate commerce just as easily as

inadequate protection. The concerns here are perhaps greater than

in cases where state law provides more protection than federal law

against local employment discrimination or supposed abuse of local

dealers by national car makers.

Nevertheless, Congress has not instituted a full-scale

federal regulatory scheme, like the Clean Water Act's discharge

permitting regulations in Int'l Paper Co. v. Ouellette, 479 U.S.

481, 494-97 (1987); or created an intricate and targeted sanctions

regime against a foreign government in "a deliberate effort to

steer a middle path," as in Crosby, 530 U.S. at 377-80; or

instituted "uniform national standards," as for automobile safety

in Wood v. General Motors Corp., 865 F.2d 395, 412 (1st Cir. 1988),

cert. denied, 494 U.S. 1065 (1990). In all these cases, state

deviations, including attempts to provide greater protection for

putative plaintiffs, were deemed to upset a carefully constructed

regulatory compromise.
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By contrast, the Lanham Act primarily provides a federal

forum for what is in substance a traditional common-law claim. If

state substantive regimes are (ordinarily) not preempted by the

Lanham Act, neither is New Hampshire's tinkering with the remedial

components. The only other circuit case cited to us on this issue

agrees with this view. Tonka Corp. v. Tonk-A-Phone, Inc., 805 F.2d

793, 794-95 (8th Cir. 1986); cf. Brunswick Corp. v. Spinit Reel

Co., 832 F.2d 513, 527-29 (10th Cir. 1987) (assuming validity of

separate attorneys' fee rules under state deceptive trade practices

statute).

We turn now to Attrezzi LLC's cross-appeal. The company

first urges that the district judge erred in allowing Maytag a 12-

month sell-off period for any existing stock bearing the Jenn-Air

Attrezzi mark. Review is for abuse of discretion, Anderson ex rel.

Dowd v. City of Boston, 375 F.3d 71, 91 (1st Cir. 2004), and there

is obviously a rationale for avoiding the wastefulness of renaming

or junking existing stock--especially where diversion of sales from

the plaintiff is unlikely.

Attrezzi LLC urges that it was unreasonable for the

district judge to give any latitude to an infringer who had been

found by the jury to have acted willfully, and it cites a couple of

decisions that have denied sell-off periods to willful infringers.

E.g., Berkshire Fashions, Inc. v. Sara Lee Corp., 729 F. Supp. 21,

21-22 (S.D.N.Y. 1990). We assume, as he did himself, that the
Cf. Perdoni Bros., Inc. v. Concrete Sys., Inc., 35 F.3d 1, 5 5

(1st Cir. 1994) ("'[W]hen a party has a right to a jury trial on an

issue involved in a legal claim, the judge is of course bound by

the jury's determination of that issue as it affects his

disposition of an accompanying equitable claim.'" (quoting Lincoln

v. Bd. of Regents of Univ. Sys. of Ga., 697 F.2d 928, 934 (11th

Cir.), cert. denied, 464 U.S. 826 (1983))).

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district judge was obliged to accept the jury's finding of

willfulness in deciding what equitable relief to grant.5

The jury instructions permitted the jury to base its

willfulness finding on "deliberate indifference"; so the jury

finding, in light of the evidence, is certainly compatible with a

decision by Maytag to take a deliberate risk in what it thought was

a debatable case. Maytag is paying a stiff price in wasted

advertising expenses; there is no indication that the risk of harm

to Attrezzi LLC's service mark is likely to increase appreciably

because of the additional 12 months of Maytag's competing use; and

we think that the district judge acted within his discretion.

Attrezzi LLC's other main claim on its cross-appeal is

that the district court failed to award it the proper amount of

"the costs of the suit and reasonable attorney's fees, as

determined by the court" to which a prevailing party is entitled

under the New Hampshire statute. N.H. Rev. Stat. Ann. § 358-A:10.

In particular, Attrezzi LLC claims that it incurred litigation

expenses, including for attorney travel (e.g., for depositions) and

computer-assisted research, which it identified in its postjudgment submission but which were not awarded to it.
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Attrezzi LLC did receive an award of the full amount of

its time-based attorneys' fees ($239,675.00), albeit without an

upward adjustment it sought. It is unclear whether the district

court intended to disallow the separate items now in issue, or

overlooked them (Attrezzi LLC did not ask the court to reconsider

on this ground), or thought they would be considered by the court

clerk as part of an award of costs. Maytag suggests the latter,

urging that an appeal on this issue is premature, but then says

that these items are not recoverable costs anyway--citing federal

practice. 

True enough, expenses for items such as attorney travel

and computer research are not deemed "costs" within the meaning of

the federal statute that provides for recovery of costs by a

prevailing party. 28 U.S.C. § 1920 (2000). But such items may be

recovered where appropriate as part of attorneys' fees under the

typical federal fee-shifting statute. See, e.g., InvesSys, Inc. v.

McGraw-Hill Cos., 369 F.3d 16, 22-23 (1st Cir. 2004) (interpreting

the federal Copyright Act, 17 U.S.C. § 505 (2000)); Palmigiano v.

Garrahy, 707 F.2d 636, 637 (1st Cir. 1983) (interpreting 42 U.S.C.

§ 1988 (2000)). No such federal statute applies here, but whether

the New Hampshire statute covers such items, either as "costs" or

as part of attorneys' fees, is a matter that neither party has

troubled to brief.
-22-

We think that the cleanest way to resolve the uncertainty

is to affirm the district court's judgment without prejudice to a

prompt renewed request by Attrezzi LLC to the district court as to

the omitted expense items. That court can say in the first

instance whether it intends to award such costs and in what amount

or whether it proposes to deny them and if so why. In addition, it

can if it chooses obtain from the parties briefing on how New

Hampshire's statute may apply to such items, either as costs or as

part of attorneys' fees.

In closing, Attrezzi LLC also makes two other requests.

One is for a "remand to award Attrezzi the amount of profits on the

infringing sales that occurred since the trial." The request,

presented in a single sentence at the end of the section of its

brief attacking the sell-off period and reprised in a single

sentence in the "Conclusion" paragraph, is not seriously presented

and we do not consider it. Mass. Sch. of Law v. Am. Bar Ass'n, 142

F.3d 26, 43 (1st Cir. 1998).

The other request is for "new attorneys' fees and costs

incurred in prosecuting this appeal." A request for attorneys'

fees in this court should be presented by separate motion to us

following our decision, stating the basis for the claim, the amount

sought, supporting it through conventional records, and providing

the legal basis for the award--to all of which the opponent may

respond. Cf. Fed. R. App. P. 38; 1st Cir. R. 38.
-23-

The judgment of the district court is affirmed but

without prejudice to a prompt renewed request by Attrezzi LLC to

the district court for the previously sought items of litigation

expense and a new appeal by either side from that disposition if

either side is dissatisfied with the resolution. We need not

reserve jurisdiction; if such a new "clean-up" appeal is filed, our

clerk should direct it to the present panel.

It is so ordered.