In Atlas Equipment Co., LLC v. Weir Slurry Group, Inc., plaintiff and a third-party defendant sought attorney’s fees under the Lanham Act against counterclaimants/third-party plaintiffs Weir Slurry and Weir Minerals Australia, Ltd. (collectively, “Weir”), arguing those parties’ counterclaims and third-party claims for “reverse passing off” and trade dress infringement were baseless and pursued for too long. Though the Western District dismissed the subject claims on summary judgment, it did not agree they were so lacking that the prevailing parties deserved a fees award.
Judge Thomas Zilly explained:
“Before alleging its claim for ‘reverse passing off,’ Weir analyzed a pump sold by Atlas Equipment Co., LLC, and discovered that the pump casing, which originally bore Weir’s trademark, had been altered; metallographic testing revealed that the raised letters AH WARMAN had been ground off the casing. Although Weir was not able through discovery to establish that the adulterated casing was produced by Weir, a fact Weir was required to prove as an element of its ‘reverse passing off’ claim, the Court is satisfied that Weir’s assertion of the claim met the criteria of Rule 11(b). Moreover, Weir’s inability to trace the pump casing to one of its foundries does not undermine the legitimacy or reasonableness of Weir’s discovery efforts; Weir could not have known in the absence of discovery how the casing arrived at its doctored state. Finally, the Court is persuaded that Weir seasonably abandoned its ‘reverse passing off’ claim.
“With regard to Weir’s trade dress infringement claim, the Court concludes that Weir relied on a ‘good faith argument for an extension … of existing law.’ Weir raised genuine issues of material fact as to two of the three elements of its trade dress infringement claim, and as to the other element, namely functionality, the law is not fully developed and Weir presented non-frivolous, and rather challenging, contentions to support its position. Finally, the Court also takes into account that the party initiating this declaratory judgment action was Atlas Equipment Co., LLC, and not Weir.”
The case cite is Atlas Equipment Co., LLC v. Weir Slurry Group, Inc., 2009 WL 4430701, C07-1358Z (W.D. Wash. Nov. 30, 2009) (Zilly, J.).