Mintable Pte. Ltd. v. Mintology Inc.

Background

In an earlier ruling, the court entered default judgment for Mintable Pte. Ltd. on its claims against Mintology Inc. and Cindy Jin for trademark infringement and dilution under the Lanham Act. The court previously found that an attorneys’ fee award was warranted but deferred determining the amount because Mintable had not provided enough evidence that its requested fees were reasonable.

Mintable later submitted invoices and requested $201,704.70 in attorneys’ fees and $1,609.29 in costs. The fee request covered 408.6 hours of work performed by four attorneys and two paralegals at Lewis Baach Kaufmann Middlemiss PLLC.

Legal Standard

Section 35(a) of the Lanham Act allows a court to award reasonable attorneys’ fees to the prevailing party in an “exceptional” case. The court had already determined that this case was exceptional because continued infringement after cease-and-desist letters, together with failure to appear in the litigation, displayed willful conduct.

The court calculated the fee award using the lodestar method: a reasonable hourly rate multiplied by a reasonable number of hours. The party seeking fees bears the burden of providing enough information to show that both the rates and hours are reasonable. Courts may exclude excessive, redundant, or unnecessary time.

Hourly Rates

The court found that the requested rates were too high for this relatively straightforward trademark case. It set the reasonable hourly rates at $550 for Arthur D. Middlemiss, $450 for Elizabeth Velez, $300 for Li Jiang, $300 for Annika B. Conrad, and $125 for both James MacFadyen and Lauren Skala.

Hours Worked

Mintable sought fees for work before the Trademark Trial and Appeal Board. The court held that work performed in that separate, parallel litigation was not recoverable. Because the time records did not separate work on the federal case from work on the Trademark Trial and Appeal Board matters, the court applied a percentage reduction.

The court also found that about twelve hours spent preparing cease-and-desist letters was more than necessary in light of comparable cases. In addition, the overall request included substantially more time than was reasonably required for the complaint, service, and uncontested motion for default judgment. The court therefore applied a 70% reduction in hours.

After applying the reduced rates and hours, the court calculated fees as follows: $3,151.50 for Middlemiss, $20,871 for Velez, $13,320 for Conrad, $477 for Jiang, and $2,958.75 for MacFadyen and Skala, for a total of $40,778.25.

Costs and Disposition

Mintable requested $1,609.29 in costs for online legal research, mailing, and filing expenses. The court found the costs adequately documented and generally reasonable, but the records did not separate costs for the federal case from costs for the Trademark Trial and Appeal Board proceedings. The court therefore reduced the requested costs by 50% and awarded $804.65.

Judge Lewis J. Liman concluded that Mintable’s fee application was granted in part and denied in part. The court awarded $40,778.25 in attorneys’ fees and $804.65 in costs.