East Iowa Plastics, Inc. v. PI, Inc., No. 15-2757 (8th Cir. 2016)Annotate this Case
EIP filed suit against PI, alleging claims related to the PAKSTER mark under the Lanham Act, 15 U.S.C. 119, 1120, and 1125(a). PI filed counterclaims for trademark infringement and unfair competition under the Lanham Act. The district court then issued findings of fact and conclusions of law. As relevant to this appeal, the district court cancelled PI’s two federal trademark registrations and found that EIP was the prevailing party. PI now appeals the grant of attorney's fees. The court concluded that the district court lacked jurisdiction to cancel the federal registrations of PI’s trademarks, and vacated the cancellation. Having obtained no damages, injunction, or cancellation from its section 38 claim, there is no basis for concluding that EIP was the prevailing party on that claim, which EIP agrees is a precondition to receiving attorney’s fees. As a result, the court need not reach PI’s argument that attorney’s fees are not available under section 38 of the Lanham Act. The court also concluded that, because EIP was not the “prevailing party” with respect to PI’s trademark infringement and unfair competition counterclaims, it is not entitled to attorney’s fees under section 35 of the Lanham Act. Finally, the court remanded the case for further consideration of the issue of whether EIP should obtain attorney's fees because it successfully obtained a declaration that it owned the PAKSTER trademark. Accordingly, the court vacated in part, reversed in part, and remanded.