American Exchange Time LLC v. Tissot SA
- Victor Marrero
- 1:17-cv-04737
- U.S. District Court · Southern District of New York
- 17
In American Exchange Time v. Tissot, Judge Marrero granted fees and dismissed the action after adopting a recommendation awarding $95,746.50.
American Exchange Time LLC received an award of $95,746.50 in attorneys’ fees; Tissot S.A. was ordered to pay those fees, and the action was dismissed.
What happened
American Exchange Time LLC sued Tissot S.A. over whether American Exchange’s “itouch” trademark was confusingly similar to Tissot’s “T-TOUCH” trademark. The court had already entered judgment for American Exchange after Tissot defaulted.
Magistrate Judge Ona T. Wang recommended awarding American Exchange $95,746.50 in attorneys’ fees, reduced from the requested amount because some billing entries lacked identifying information. She found that Tissot’s failure to appear at a court conference, failure to participate meaningfully in settlement discussions, and other conduct justified the award.
Judge Victor Marrero adopted the recommendation in full, granted American Exchange’s motion for attorneys’ fees, and dismissed the action. The opinion did not decide American Exchange’s request for costs because its supporting papers did not specify any costs.
The detailed version
- American Exchange Time LLC v. Tissot SA · No. 1:17-cv-04737
- Victor Marrero
- Dec. 5, 2022
Background
American Exchange Time LLC brought this trademark action against Tissot S.A. under the federal declaratory-judgment statutes and the Lanham Act, seeking declarations that its “itouch” mark was not confusingly similar to Tissot’s “T-TOUCH” mark and that its use of the mark did not infringe Tissot’s trademark rights. American Exchange also sought attorneys’ fees and costs.
On August 23, 2019, Judge Marrero entered default judgment for American Exchange after Tissot defaulted. He referred American Exchange’s motion for attorneys’ fees and costs to Magistrate Judge Ona T. Wang for a report and recommendation. Tissot did not object to the recommendation.
Reasons for the Fee Award
Magistrate Judge Wang recommended awarding fees under Federal Rule of Civil Procedure 16(f), which permits sanctions when a party fails to appear at a court conference, fails to participate in good faith, or disobeys a court order. The recommendation found that Tissot failed to appear meaningfully at a July 9, 2019 conference that Tissot had requested. Tissot’s counsel appeared only as an “observer” and said Tissot had instructed him to default and not take further action. The recommendation also found that Tissot had failed to engage meaningfully in settlement discussions.
The recommendation separately concluded that American Exchange was a prevailing party under the Lanham Act and that the case was “exceptional” because of the unreasonable manner in which Tissot litigated it. The recommendation cited Tissot’s conduct during the trademark dispute, settlement discussions, court conference, and default.
Amount of the Award
American Exchange requested $96,446.50. The recommendation found the requested attorney rates and hours generally reasonable, but reduced the award by $700 because three billing entries identified workers only as “JR” and “JL” without providing their names, qualifications, or rates. Applying a blended hourly rate of $300 to those entries, the recommendation set the fee award at $95,746.50.
The recommendation did not award or analyze costs because American Exchange’s supporting papers did not specify the costs incurred.
Ruling
Judge Marrero adopted Magistrate Judge Wang’s Report and Recommendation in its entirety. He granted American Exchange’s motion for attorneys’ fees, resulting in an award of $95,746.50, and ordered that the action be dismissed. The Clerk was directed to terminate pending motions and close the case.
Read the full 17-page opinion on CourtListener, the free public archive maintained by the Free Law Project.