Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
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`ESTTA Tracking number:
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`ESTTA884423
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`Filing date:
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`03/20/2018
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Proceeding
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`91237697
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`Party
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`Correspondence
`Address
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`Submission
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`Filer's Name
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`Filer's email
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`Signature
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`Date
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`Attachments
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`Defendant
`SilverHorse Racing, LLC
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`JOSEPH CANITANO
`SILVERHORSE RACING LLC
`700 S JOHN RODES BLVD BLDG B-10
`MELBOURNE, FL 32904
`UNITED STATES
`Email: info@silverhorseracing.com, mcanitano@silverhorseracing.com
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`Motion to Reopen
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`Joseph Canitano
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`mcanitano@silverhorseracing.com
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`/Joseph Canitano/
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`03/20/2018
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`Request to resume proceeding.pdf(222441 bytes )
`Attachment A 102 final order.pdf(147607 bytes )
`Attachment B 105 Order Denying Att Fee.pdf(186005 bytes )
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`

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`
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`FORD MOTOR COMPANY,
`a Delaware corporation,
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` Opposer
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`v.
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` SILVERHORSE RACING, LLC,
`a Florida limited liability company,
`
`
`
` Applicant
`
`
`
`
` REQUEST TO RESUME
` PROCEEDINGS
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` Opposition No. 91237697
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` Application No. 87/334,679
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` Filed: February 14, 2017
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` Trademark SilverHorse Racing and
` Design
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`
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`APPLICANT SILVERHORSE RACING, LLC’S
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`REQUEST TO RESUME PROCEEDINGS
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`Applicant SilverHorse Racing, LLC located and doing business at 700 S. John Rodes
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`Blvd. Building B-10, Melbourne, Florida 32904 (hereinafter “Applicant”), hereby requests that
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`the TTAB lift the suspension of Proceedings on Opposition filing 91237697 and grant the mark
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`as requested in Amended Answer filed March 16, 2018.
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`As evidence that suspension of proceeding is no longer warranted, the court in Case 6:16-
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`CV-0053-ACC-KRS filed a final order (Attachment “A”) on February 6, 2018 (Doc 102), denial
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`of Ford’s Attorney fees (Doc 105) (Attachment “B”) on February 12, 2018, and neither
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`Applicant or Opposer filed an Appeal to the 11th Circuit Court of Appeals in a timely manner by
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`March 8, 2018, therefore the case should be considered terminated and the TTAB no longer has a
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`need to suspend proceedings.
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`

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`RELIEF REQUESTED
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`WHEREFORE, having provided information to the TTAB that civil Case 6:16-CV-0053-ACC-
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`KRS has terminated and Applicant filed Amended Answer as requested by the TTAB, Applicant
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`requests that the Opposition be dismissed, and that application for registration of Applicant’s
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`mark be passed to registration forthwith.
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`Respectfully submitted,
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`By: /Joseph M. Canitano/
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`
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` Joseph M. Canitano
`
` Applicant
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`
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`
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`Dated: March 20, 2018
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`(Filed electronically via USPTO.ESSTA)
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`
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and complete copy of the following document:
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`APPLICANT SILVERHORSE RACING LLC’S REQUEST TO RESUME PROCEEDINGS
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`has been served on
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`Casimir W. Cook II
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`Schiff Hardin, LLC
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`PO Box 7397
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`Ann Arbor, MI 48104
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`Email: ccook@schiffhardin.com
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`fordtrademarks@schiffhardin.com
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`
`
`
`
`
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`by electronically mailing such document on March 20, 2018 to the email addresses above.
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`Additionally, document has been served and filed electronically at http://estta.uspto.gov .
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`I declare under penalty of perjury under the laws of the State of Florida and the United States of
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`America that the foregoing is true and correct.
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`
`
` /Joseph M. Canitano/
`
`
`Dated: March 20, 2018
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`
`
` Joseph M. Canitano
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`
`
`
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`

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`Case 6:16-cv-00053-ACC-KRS Document 102 Filed 02/06/18 Page 1 of 3 PageID 2353
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`
`
`SILVERHORSE RACING, LLC,
`
`Plaintiff and
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`Counterclaim Defendant,
`
`v.
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`FORD MOTOR COMPANY,
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`Defendant, Counterclaimant and
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`Third-Party Plaintiff
`
`v.
`
`JOSEPH CANITANO,
`
`Third-Party Defendant.
`
`
`
`Case No: 6:16-cv-53-Orl-22KRS
`
`
`
`FINAL JUDGMENT AND PERMANENT INJUNCTION
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`The Court, having issued its Order of December 6, 2017 (Doc. 86) that entered summary
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`judgment in favor of Counterclaimant Ford Motor Company (“Ford”) against Counterclaim
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`Defendant Silverhorse Racing, LLC and Third-Party Defendant Joseph Canitano (collectively
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`“Defendants” or “SHR”) with respect to Ford’s counterclaim for federal trademark infringement
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`arising from SHR’s manufacturing, advertising, and sale of merchandise bearing the trademarks
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`GT® (Reg. No. 3,968,489) and 5.0® (Reg. No. 4,466,709), finding Ford’s remaining
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`counterclaims either unnecessary to reach or moot, and denying SHR’s cross motion, and this
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`Court having previously entered summary judgment in favor of Ford dismissing Silverhorse
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`Racing, LLC’s Complaint, which asserted a single claim for tortious interference (Doc. 41), hereby
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`ORDERS as follows:
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`1.
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`Defendants, their respective officers, agents, servants, employees, and attorneys,
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`and all other persons who are in active concert or participation with any of these persons, and who
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`receive actual notice of this Final Judgment and Permanent Injunction (the “Injunction”) by
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`personal service or otherwise, are permanently enjoined from:
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`

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`Case 6:16-cv-00053-ACC-KRS Document 102 Filed 02/06/18 Page 2 of 3 PageID 2354
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`
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`(a)
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`Using any reproduction, counterfeit, copy, or colorable imitation of GT® (Reg. No.
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`3,968,489) and/or 5.0® (Reg. No. 4,466,709) (collectively the “Ford Marks”), or
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`any trademark that is substantially similar to the Ford Marks, in connection with
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`the sale, offering for sale, distribution, or advertising of any goods or services for
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`any Ford or Mustang vehicles.
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`(b)
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`Reproducing, counterfeiting, copying, or colorably imitating the Ford Marks, and
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`applying such reproduction, counterfeit, copy, or colorable imitation to labels,
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`signs, prints, packages, wrappers, receptacles, or advertisements intended to be
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`used in commerce upon or in connection with the sale, offering for sale,
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`distribution, or advertising of goods or services for any Ford or Mustang vehicles
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`without written authorization from Ford; and
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`(c)
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`Instructing, assisting, aiding, or abetting any other person or business in engaging
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`in or performing any of the activities referred to in paragraphs (a) through (b),
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`above.
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`2.
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`Defendants shall permanently remove all photos of Ford’s TRI-BAR® emblem
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`from the Custom Order page of their website.
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`3.
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`Defendants shall deliver to Ford’s counsel for destruction within 10 days from the
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`date of entry of this Final Judgment and Permanent Injunction all goods bearing any reproduction,
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`counterfeit, copy, or colorable imitation of any Ford Mark, or any trademark that is substantially
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`similar to any Ford Mark (“Infringing Goods”), together with any advertising materials,
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`catalogues, promotional materials, or written material in Defendants’ possession, custody, or
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`control which comprise or copy any Ford Mark or any mark that is substantially similar to any
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`Ford Mark.
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`4.
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`Defendants shall, within 30 days from the date of entry of this Final Judgment and
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`- 2 -
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`

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`Case 6:16-cv-00053-ACC-KRS Document 102 Filed 02/06/18 Page 3 of 3 PageID 2355
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`Permanent Injunction, file with the Court a true and accurate report, in writing and under oath,
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`setting forth in detail the manner and form of Defendants’ compliance with this Final Judgment
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`and Permanent Injunction.
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`5.
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`6.
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`Ford is awarded its costs.
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`This Court retains and shall have continuing jurisdiction to enforce the terms of this
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`Final Judgment and Permanent Injunction.
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`7.
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`8.
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`The Court retains jurisdiction to address attorney fee issues.
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`The Clerk is directed to close the file.
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`DATED: February 6, 2018.
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`Copies furnished to:
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`Counsel of Record
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`- 3 -
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`

`

`Case 6:16-cv-00053-ACC-KRS Document 105 Filed 02/12/18 Page 1 of 11 PageID 2362
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`UNITED STATES DISTRICT COURT
`MIDDLE DISTRICT OF FLORIDA
`ORLANDO DIVISION
`
`
`SILVERHORSE RACING, LLC,
`
`Plaintiff and
`
`Counterclaim Defendant,
`
`v.
`
`FORD MOTOR COMPANY,
`
`Defendant, Counterclaimant and
`
`Third-Party Plaintiff
`
`v.
`
`JOSEPH CANITANO,
`
`Third-Party Defendant.
`
`
`
`Case No: 6:16-cv-53-Orl-22KRS
`
`
`
`ORDER
`
`This cause comes before the Court on Counterclaimant and Third-Party Plaintiff Ford
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`Motor Company’s (“Ford”) Motion for Attorney’s Fees (Doc. 91), filed on December 20, 2017,
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`and Counterclaim Defendant Silverhorse Racing, LLC and Third-Party Defendant Joseph
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`Cantino’s (collectively “SHR”) Response, filed on January 2, 2018. (Doc. 95.) For the reasons
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`that follow, the Court will DENY Ford’s motion.
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`I. BACKGROUND
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`As the Court previously thoroughly reviewed the facts of this action in its prior Summary
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`Judgment Order (Doc. 86 at 1–8), the Court will only address the facts relevant to this Order. On
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`December 6, 2017, the Court granted Ford summary judgment on its federal trademark
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`infringement claims on its GT® and 5.0® trademarks against SHR, denied the remainder of Ford’s
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`claims as moot, denied SHR’s cross motion for summary judgment, and found that Ford was
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`entitled to a permanent injunction. (Doc. 86 at 48–49.) On December 20, 2017, Ford filed a Motion
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`for Attorney’s Fees. (Doc. 91.) On January 2, 2018, SHR responded in opposition. (Doc. 95.) On
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`

`

`Case 6:16-cv-00053-ACC-KRS Document 105 Filed 02/12/18 Page 2 of 11 PageID 2363
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`February 6, 2018, the Court entered its Final Judgment and Permanent Injunction (Doc. 102),
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`leaving attorney’s fees as the last remaining issue in this action.
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`II. LEGAL STANDARD
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`As the prevailing party, Ford seeks an entitlement of attorney’s fees in this action. Under
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`the Lanham Act, 15 U.S.C. § 1117(a), the Court may award reasonable attorney’s fees to the
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`prevailing party in an exceptional trademark infringement case. Prior to the Supreme Court’s
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`decision in Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014), the U.S.
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`Court of Appeals for the Eleventh Circuit defined “an exceptional case” as “one that can be
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`characterized as malicious, fraudulent, deliberate and willful or one in which evidence of fraud or
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`bad faith exists.” Tire Kingdom, Inc. v. Morgan Tire & Auto, Inc., 253 F.3d 1332, 1335 (11th Cir.
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`2001) (citations and internal quotation marks omitted). In construing a similar fee-shifting
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`provision for patent infringement actions, the Octane court applied a more liberal definition—
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`holding that “an exceptional case is simply one that stands out from others with respect to the
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`substantive strength of a party’s litigating position (considering both the governing law and the
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`facts of the case) or the unreasonable manner in which the case was litigated.” Octane Fitness, 134
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`S. Ct. at 1756 (internal quotation marks omitted). Octane allows “[d]istrict courts [to] determine
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`whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the
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`totality of the circumstances.” Id. Although the instant case arises under the Lanham Act and
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`Octane is a patent case, in Octane, the Supreme Court cited with approval the trademark
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`infringement case of Noxell Corp. v. Firehouse No. 1 Bar–B–Que Restaurant, 771 F.2d 521, 526
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`(D.C. Cir. Aug. 23, 1985) noting that it “interpret[ed] the term ‘exceptional’ in the Lanham Act’s
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`identical fee-shifting provision, 15 U.S.C. § 1117(a), to mean ‘uncommon’ or ‘not run-of-the-
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`mill.’ ” Octane Fitness, 134 S. Ct. at 1756.
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`
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`- 2 -
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`

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`Case 6:16-cv-00053-ACC-KRS Document 105 Filed 02/12/18 Page 3 of 11 PageID 2364
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`
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`While the Eleventh Circuit has not yet addressed the effect of Octane Fitness on its Lanham
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`Act “exceptional case” jurisprudence, this Court, other district courts within the Eleventh Circuit,
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`and other circuit courts have applied Octane Fitness to Lanham Act cases. See, e.g., Georgia-Pac.
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`Consumer Prod. LP v. von Drehle Corp., 781 F.3d 710, 721 (4th Cir. 2015), as amended (Apr. 15,
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`2015) (“But the language of § 1117(a) and § 285 is identical, and we conclude that there is no
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`reason not to apply the Octane Fitness standard when considering the award of attorneys fees
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`under § 1117(a).”); Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 315 (3d Cir. 2014) ( “We
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`therefore import Octane Fitness’s definition of ‘exceptionality’ into our interpretation of § 35(a)
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`of the Lanham Act.”) ; RCI TM Corp. v. R & R Venture Grp., LLC, No. 6:13-CV-945-ORL-22,
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`2015 WL 668715, at *9 (M.D. Fla. Feb. 17, 2015); BMW of N. Am., LLC v. Cuhadar, No. 6:14-
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`CV-40-ORL-37DAB, 2014 WL 5420133, at *2 (M.D. Fla. July 10, 2014); 5 J. THOMAS
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`MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 30.99 (5TH ED. 2017)
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`(“Almost all courts have applied the rulings in the Octane decision to trademark cases.”). Thus,
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`the Court will apply the Octane analysis.
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`III. ANALYSIS
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`A. Substantive Strength of a Party’s Litigating Position
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`Under Octane’s first factor, courts examine if “a case is simply one that stands out from
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`the others with respect to the substantive strength of a party’s litigating position (considering both
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`the governing law and the facts of the case).” Octane Fitness, 134 S. Ct. at 1756. Based on Ford’s
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`argument, the Court does not find that this present action is exceptional.
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`Ford argues that SHR’s willfully and deliberately infringing Ford’s GT® and 5.0®
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`trademarks (the “Ford marks”) make this an exceptional case under the Lanham Act. (Doc. 91 at
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`3–5.) Ford highlights that “SHR knowingly used virtually identical marks on identical products,
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`and persisted in doing so after having unsuccessfully sought to form a business relationship with
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`- 3 -
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`

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`Case 6:16-cv-00053-ACC-KRS Document 105 Filed 02/12/18 Page 4 of 11 PageID 2365
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`Ford and having applied for a license.” (Id. at 5.) In support of its argument, Ford cites to cases in
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`which courts found that conduct similar to SHR’s conduct made a case exceptional and warranted
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`an award of attorney’s fees. (Id.) (citing Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d
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`665 (E.D. Mich. 2002); Audi AG v. D’Amato, 381 F. Supp. 2d 644, 670 (E.D. Mich. 2005); Aetna
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`Health Care Sys., Inc. v. Heath Care Choice, Inc., 231 U.S.P.Q.2d 614,1986 WL 84362 (N.D.
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`Okla. 1986) ;Playboy Enters., Inc. v. P.K. Sorren Export Co., Inc., 546 F. Supp. 987 (S.D. Fla.
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`1982)).
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`SHR responds that Ford improperly relies on the Pre-Octane standard by basing Ford’s
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`argument for entitlement to attorney’s fees on SHR’s willful and deliberate actions. (Doc. 95 at 3.)
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`SHR also asserts that Ford is not entitled to attorney’s fees because there was not a significant
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`disparity in the merits of the parties’ positions and Ford prevailed on only a fraction of its claims.
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`(Id.) SHR highlights that Ford only prevailed on two out of its eleven claims at summary
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`judgement and was granted an injunction. (Id. at 4.) SHR argues that “Ford is not entitled to
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`attorney’s fees because SHR did not act in a willful or deliberate manner.” (Id.) SHR asserts that
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`it had a good faith belief that its “5.0” and “GT” marks did not infringe Ford’s marks because of
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`the widespread use of “GT” and “5.0” in the automotive world and beyond. (Id. at 5.) As further
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`proof of SHR’s good faith, SHR highlights that it voluntarily ceased selling the products that Ford
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`complained about in its demand letters months and years before this present action commenced
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`except for the “GT” and “5.0” products because SHR believed it was not infringing. (Id. at 6.) In
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`regards to SHR approaching Ford to form a business relationship, SHR admits that it made
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`inquiries to Ford but “they were for the purpose of offering another line of officially licensed Ford
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`products in addition to SHR’s own GT and 5.0 products, which SHR believed to be non-
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`infringing.” (Id.) SHR highlights that it was not denied a license by Ford. (Id.)
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`- 4 -
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`

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`Case 6:16-cv-00053-ACC-KRS Document 105 Filed 02/12/18 Page 5 of 11 PageID 2366
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`
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`Ford bases its entitlement to attorney’s fees on SHR’s willful and deliberate infringing—
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`specifically “SHR knowingly used virtually identical marks on identical products, and persisted in
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`doing so after having unsuccessfully sought to form a business relationship with Ford and having
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`applied for a license.” (Doc. 91 at 5.) As discussed supra, pre-Octane, “[t]he Eleventh Circuit
`
`definition of exceptional required an affirmative finding of bad faith or deliberate or willful
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`conduct in order to justify fees.” High Tech Pet Prod., Inc. v. Shenzhen Jianfeng Elec. Pet Prod.
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`Co., No. 6:14-CV-759-ORL-22TBS, 2015 WL 926023, at *1 (M.D. Fla. Mar. 4, 2015). However,
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`“the Eleventh Circuit standard of maliciousness . . . is not the Octane standard.” BMW, 2014 WL
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`5420133, at *4; see Hunter Residential Servs., LLC v. AAA Randpro Plumbing, Inc., No. 8:16-CV-
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`01311-CEH-TGW, 2017 WL 1987247, at *6 (M.D. Fla. Feb. 21, 2017) (“[D]istrict courts in this
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`circuit and other circuit courts have consistently held that a showing of subjective bad faith or
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`fraud is no longer required.”) (citations omitted). While willful and deliberate conduct is not
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`required for an exceptional case under Octane, it may still be considered. However, Ford failed to
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`show how SHR’s alleged willful and deliberate infringing is so exceptional to justify an award of
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`attorney’s fees. In trademark cases, infringers often willfully and deliberately infringe on a
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`plaintiff’s trademark to benefit from the plaintiff’s business reputation and goodwill. See, e.g., Pelc
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`v. Nowak, 596 F. App’x 768, 770 (11th Cir. 2015)1 (“Defendant admitted that he used Plaintiffs’
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`trademarks for the purpose of attracting Internet Users searching on the Internet for information
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`regarding the corporate Plaintiff’s business, which includes but is not limited to those ‘searching
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`for Plaintiff’s business.”) (internal quotation marks omitted); Howard Johnson Co. v. Khimani,
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`892 F.2d 1512, 1520 (11th Cir. 1990) (collecting cases). Ford failed to persuade the Court that this
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`action is not a run of the mill case. Even post-Octane, “an attorney’s fee award is still the exception
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`1Unpublished opinions of the Eleventh Circuit constitute persuasive, not binding, authority. See 11th Cir. R.
`36-2 and I.O.P. 6.
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`- 5 -
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`

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`Case 6:16-cv-00053-ACC-KRS Document 105 Filed 02/12/18 Page 6 of 11 PageID 2367
`
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`to the American Rule and should be reserved only for rare circumstances.” Net Talk.com, Inc. v.
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`Magic Jack Vocaltec Ltd., No. 12-CV-81022-GAYLES/Turnoff, 2015 WL 10015379, at *3 (S.D.
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`Fla. Nov. 20, 2015) (citations omitted), report and recommendation adopted sub nom. Net
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`Talk.com, Inc. v. Magicjack Vocaltec Ltd., No. 12-81022-CIV, 2016 WL 498437 (S.D. Fla. Feb.
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`9, 2016), aff’d, 682 F. App’x 941 (Fed. Cir. 2017). Under the argument presented by Ford, such a
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`rare circumstance does not exist in the present action. If the Court were to allow an award of
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`attorney’s fees in every case involving willful and deliberate infringement, then the exception
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`would swallow the rule. See BMW, 2014 WL 5420133, at *4 (declining to award attorney’s fees
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`based on the defendants’ default because “[o]therwise, every default case would warrant fees; a
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`conclusion not justified by the statute”). Moreover, the Court rejects Ford’s cases in support of its
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`position as they are Pre-Octane and make no mention of Octane’s factors. In addition, three of the
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`four cases cited by Ford, Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665 (E.D. Mich.
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`2002); Audi AG v. D’Amato, 381 F. Supp. 2d 644, 670 (E.D. Mich. 2005); Aetna Health Care Sys.,
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`Inc. v. Heath Care Choice, Inc., 231 U.S.P.Q.2d 614,1986 WL 84362 (N.D. Okla. 1986), are out
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`of circuit cases. Therefore, the Court finds that Ford has not set this case apart from other trademark
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`infringement cases with respect to the substantive strength of a party’s litigating position.
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`B. The Unreasonable Manner in which the Case was Litigated
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`Under Octane’s second factor, courts examine if a “case is simply one that stands out from
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`the others with respect to . . . the unreasonable manner in which the case was litigated.” Octane
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`Fitness, 134 S. Ct. at 1756. Once again, based on Ford’s arguments, the Court does not find that
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`this present action is exceptional.
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`Ford argues that it is entitled to attorney’s fees under the Lanham Act because of the
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`unreasonable manner in which SHR litigated this case. (Doc. 91 at 5.) Ford asserts that “[d]istrict
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`courts have not hesitated to award attorney’s fees in circumstances when, as here, the losing party
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`- 6 -
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`Case 6:16-cv-00053-ACC-KRS Document 105 Filed 02/12/18 Page 7 of 11 PageID 2368
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`failed to produce evidence to support its claims or engaged in tactics that caused delay or increased
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`costs.” (Id.) Ford alleges that SHR did both. (Id. at 6.) Ford proceeds to give its version of events
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`for this present action. According to Ford, SHR began this present action by suing Ford in state
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`court for tortious interference with business relationships, based on Ford sending demand letters
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`to companies that SHR had established business relationships, requesting among other things that
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`the businesses remove all unlicensed and infringing SHR products from their website. (Docs. 41
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`at 3, 91 at 6.) Ford then moved to dismiss SHR’s claim based on Ford’s actions being privileged
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`under the Noerr-Pennington doctrine. (Doc. 91 at 6.) Ford, without providing a citation, states:
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`“Silverhorse vigorously opposed Ford’s motion on the ground that Ford’s enforcement efforts
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`were a sham, claiming Ford knew it did not possess valid trademark rights and had sent demand
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`letters only because a former employee had been bribed by a SHR competitor who wanted to harm
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`SHR.” (Id.) However upon the Court’s reading of SHR’s Response to Ford’s Motion to Dismiss,
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`SHR defended its claim based on the Noerr-Pennington doctrine not applying to the case and even
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`if it did, that the allegations in SHR’s Complaint invoked the “sham litigation” exception , allowing
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`SHR’s action to survive Ford’s Motion to Dismiss. (Doc. 12.) There was no mention of bribery.
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`(Id.) Citing to the Court’s Order Denying Ford’s Motion to Dismiss (Doc. 27), Ford states that
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`“SHR did not concede its outlandish claims were baseless until after this Court denied Ford’s
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`Motion to Dismiss in order to provide SHR with the opportunity to conduct discovery and until
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`after Ford had incurred the substantial expense of again moving for dismissal of SHR’s claims, on
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`summary judgment.” (Doc. 91 at 6–7.) Upon review of that Order, the Court did not dismiss SHR’s
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`claim at the motion to dismiss stage because the Court lacked information to determine as a matter
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`of law that Ford’s conduct was immunized under the Noerr-Pennington doctrine and SHR’s “sham
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`litigation” allegations satisfied the notice pleading standard. (Doc. 27.) Therefore, allowing SHR
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`additional time for discovery is not why the Court denied Ford’s Motion to Dismiss; in fact,
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`discovery is not even mentioned in the Order. Citing to the Court’s January 30, 2017 Summary
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`Judgment Order (Doc. 41), Ford asserts that “SHR’s outlandish claims were ultimately found to
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`lack factual or legal basis and dismissed as baseless.” (Doc. 91 at 6.) In reviewing that Order, the
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`Court never stated that SHR’s claims lacked factual or legal basis or were baseless. Instead the
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`Court found that Ford sending demand letters to SHR’s business associates was protected by the
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`Noerr-Pennington doctrine , SHR failed to provide evidence that Ford’s sending the demand letters
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`was done in bad faith, and “SHR ha[d] not raised a disputed issue of material fact as to whether
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`Ford’s [d]emand [l]etters were a sham.” (Doc. 41 at 8–9.) Ford last argues that SHR’s sincerity in
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`attacking the validity of Ford’s trademarks is undercut by SHR’s previously seeking to establish a
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`business relationship with SHR. (Doc. 91 at 7.) Ford asserts that SHR knew what it was doing
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`when it replicated Ford’s marks and SHR’s attacks on their validity was an attempt to avoid
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`accountability. (Id.)
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`In response, SHR argues that SHR bringing and defending its claim for tortious
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`interference does not entitle Ford to attorney’s fees because tortious interference is not a cause of
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`action under the Lanham Act and SHR did not litigate the case in an unreasonable manner. (Doc.
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`95 at 8.) SHR highlights, like the Court did supra, how Ford mischaracterizes numerous activities
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`in this case, such as the denial of Ford’s Motion to Dismiss not being based on allowing SHR
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`additional time to conduct discovery. (Id. at 8–9.) SHR asserts that it is entirely reasonable to
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`vigorously oppose a motion to dismiss and also reasonable to continue with litigation after
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`surviving a motion to dismiss, “rather than conceding defeat prior to [d]iscovery and [s]ummary
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`[j]udgment.” (Id. at 9.) SHR next rebuts Ford’s use of SHR’s attempting to establish a business
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`relationship with Ford as support of SHR’s unreasonableness in litigating this case. (Id. at 10.)
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`SHR asserts that this relates to the first Octane factor — substantive strength of a party’s litigating
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`position — not this factor. (Id.) SHR reiterates that its voluntarily ceasing the sale of non-“GT”
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`and “5.0” products is evidence that SHR did not believe it was infringing the Ford marks. (Id.)
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`The actions of SHR that Ford emphasizes do not persuade the Court that SHR litigated the
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`case in an unreasonable manner that stands out from other cases. The Court admonishes Ford for
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`its various mischaracterizations of what transpired in these proceedings. The crux of Ford’s
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`argument, without Ford’s mischaracterizations, is that SHR defended its claim at the motion to
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`dismiss stage and then proceeded with its claim after it survived Ford’s Motion to Dismiss to the
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`summary judgment stage, where the claim was ultimately defeated. Nothing about SHR’s actions
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`in this sequence is unreasonable to the Court. At the motion to dismiss stage, SHR defended its
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`Complaint, making the reasonable arguments that the Noerr-Pennington doctrine did not
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`immunize Ford’s conduct and if the doctrine did apply then SHR’s “sham litigation” allegations
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`were sufficient to survive a motion to dismiss. The Court denied Ford’s Motion to Dismiss,
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`essentially giving SHR the greenlight to proceed with its claim. Although SHR’s arguments were
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`defeated at summary judgment and Ford prevailed is not sufficient to warrant an award of
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`attorney’s fees. “Every case will have a loser and the fact that a party made losing arguments is
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`not grounds for finding a case exceptional; to do so, the prevailing party must show that [their
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`case] stands out from others.” Buccellati Holding Italia SPA v. Laura Buccellati LLC, No. 13-
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`21297-CIV, 2015 WL 11202358, at *4 (S.D. Fla. Mar. 10, 2015) (citation and internal quotation
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`marks omitted). The Court finds that the facts presented by Ford do not show how this case stands
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`out from others. Moreover, SHR argues that SHR pursuing its tortious interference claim does not
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`entitle Ford to attorney fees because tortious interference is not a cause of action under the Lanham
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`Act. Ford failed to provide the Court with authority to support its entitlement to attorney’s fees
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`under the Lanham Act based on SHR’s pursuing a non-Lanham Act cause of action.
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`Ford’s last basis for SHR litigating this case in an unreasonable manner is SHR attacking
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`the validity of Ford’s trademark rights despite SHR previously attempting to establish a business
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`relationship with Ford. Ford asserts that SHR’s attacks on the Ford marks’ validity was an attempt
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`to avoid accountability for SHR’s acts. (Doc. 91 at 7.) In order to prevail on a claim of trademark
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`infringement, a plaintiff must show “that its mark is valid and that the defendant’s use of the
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`contested mark is likely to cause confusion.” Dieter v. B & H Indus. of Sw. Fla., Inc., 880 F.2d
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`322, 326 (11th Cir. 1989) (citations omitted). Therefore, it is reasonable that a defendant would
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`attack the validity of a plaintiff’s mark to defeat a claim of trademark infringement. See Ice Cold
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`Auto Air of Clearwater, Inc. v. Cold Air & Accessories, Inc., 828 F. Supp. 925, 934 (M.D. Fla
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`1993) (rejecting defendant’s argument that plaintiff’s mark was generic and thus invalid.) Given
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`that Ford had previously been denied registration of its GT® mark by the United States Patent and
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`Trademark Office (Doc. 57-6) and Ford’s 5.0® mark was not registered for automobile parts and
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`accessories (Doc. 51-10.)2, it was even more reasonable for SHR to attack the validity of these
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`marks.
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`The Court has not identified factors to set this case apart from the other Lanham Act cases
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`with respect to the substantive strength of a party’s litigating position or the unreasonable manner
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`in which the case was litigated. As the Supreme Court has stated “[d]istrict courts may determine
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`whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the
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`totality of the circumstances.” Octane Fitness, 134 S. Ct. at 1756. Here, the Court does not find
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`that this case is exceptional.
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`IV. CONCLUSION
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` Based on the foregoing, it is ordered as follows:
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`2Ford’s 5.0® mark is registered for clothing and headwear. (Doc. 51-10.)
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`1.
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`Ford Motor Company’s Motion for Attorney’s Fees (Doc. 91) filed December 20,
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`2017, is DENIED.
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`DONE and ORDERED in Chambers, in Orlando, Florida on February 12, 2018.
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`Copies furnished to:
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`Counsel of Record
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