The opinion of the court was delivered by: Denise Cote, District Judge
After prevailing on summary judgment in this trademark infringement and false advertising case, defendants Lionel Bissoon, M.D., d/b/a Mesotherapie & Estetik, Meridian Co., Ltd., Meridian Medical Inc. and Meridian America Medicals, Inc. (collectively, "Meridian") now move for attorney's fees. For the reasons stated below, Meridian's motion is granted in part.
Much of the relevant background is provided in the Opinion of June 1, 2009, Therapy Products, Inc. v. Bissoon, 623 F. Supp. 2d 485 (S.D.N.Y. 2009) ("June Opinion"), familiarity with which is assumed. Only the facts necessary to a resolution of the pending motion are described here.
On October 9, 2007, plaintiff Therapy Products, Inc. d/b/a Erchonia Medical ("Erchonia") filed its complaint stating trademark infringement and false advertising claims. Erchonia alleged, inter alia, that:
Erchonia has used the mark LIPOLASER at least since 2002.... Erchonia invested substantial time and money in developing its branding, including LIPOLASER, and has promoted and consistently and successfully used this branding to market itself and to set itself apart in the marketplace.... Long after Erchonia had invested the time and monies necessary to achieve a high level of distinction and effectiveness in the mark LIPOLASER, Defendants Meridian began using Erchonia's mark, and specifically the term LIPOLASER in their marketing materials, brochures, websites, and public presentations.*fn1
At the initial pre-trial conference, the parties and the Court discussed the plaintiff's need to show that it used the term "lipolaser" as a trademark in commerce. Plaintiff's counsel assured the Court that Erchonia had so used the term in relation to its product since 2001.
In his deposition, Erchonia President Steven Shanks ("Shanks") admitted that the term "lipolaser" was not used "on" every device since 2001, and that Erchonia used the term "on [and] off" and "randomly." Therapy Products, 623 F. Supp. 2d at 491. Shanks also admitted that Erchonia did not affix the term to the outside of all lipolasers in 2004 and 2005, and that Erchonia put the term on the lipolaser in 2006 after "people started using our term." Id.
Following the completion of discovery, on January 30, 2009, Meridian moved for summary judgment and Erchonia cross-moved for partial summary judgment. In its memorandum of law in support of its motion for partial summary judgment, Erchonia asserted that it "has been using the mark LIPOLASER... continuously since 2001."
The June Opinion granted summary judgment for Meridian, holding that the mark "lipolaser" was descriptive as a matter of law, and that the mark had not acquired the secondary meaning necessary for a descriptive mark to be protectable. The June Opinion found that Erchonia introduced no photographs of its lipolaser, promotional materials, advertisements, sales records, or any other type of evidence that showed consistent use of the term as a trademark since 2001 or 2002. To the contrary, the evidence showed only sporadic and infrequent use of the term "lipolaser" in association with the product at issue. Moreover, that product was frequently marketed with other prominently displayed marks. Erchonia essentially relied on Shanks's assertions in his declaration that Erchonia "has continually used the mark LIPOLASER on its products since as early as 2001." The June Opinion found such assertions to be contradicted by Shanks's own deposition testimony as well as by the documentary evidence.
On June 17, 2009, Meridian moved for attorney's fees and costs associated with defending both the instant action and a prior action that was instituted in Texas and voluntarily dismissed by the plaintiff in favor of pursuing this action.*fn2
This motion was fully submitted on July 9.
Pursuant to Section 35 of the Lanham Act, a court may award "reasonable attorney fees" in "exceptional cases." 15 U.S.C. § 1117(a). The Second Circuit has held that a court should award such fees "only on evidence of fraud or bad faith." Gordon & Breach Science Publishers S.A. v. American Inst. of Physics, 166 F.3d 438, 439 (2d Cir. 1999) (per curiam) (citation omitted). A finding of bad faith is warranted "when the claim is entirely without color and has been asserted wantonly, for purposes of harassment or delay, or for other improper reasons." Baker v. ...