105 F.4th 1269
9th Cir.2024Background
- BillFloat (using the "SmartBiz" mark) and Collins Cash (using "Smart Business Funding") both provide small business financing, but operate under different models and customer bases.
- BillFloat registered the "SmartBiz" mark in 2014; Collins Cash began using its mark later, registering only in 2020.
- The parties entered a partnership in 2018, involving customer referrals and a contractual fee arrangement, which included a provision for attorneys' fees for prevailing parties in contract disputes.
- BillFloat sued for trademark infringement, breach of contract, unfair competition, and unlawful business practices; all but the trademark infringement claim were dismissed or dropped pre-trial.
- A jury found no likelihood of confusion between the marks following a trial that included expert witness survey evidence.
- Both sides cross-appealed regarding the admissibility and weight of evidence, jury instructions, and entitlement to attorneys’ fees and costs.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Admissibility of defendant’s consumer confusion survey | Survey had methodological errors, unreliable, should be excluded | Survey followed accepted principles, issues go to weight not admissibility | Survey properly admitted; technical flaws affect weight, not admissibility |
| Jury instruction regarding plaintiff’s lack of survey | Jury should not infer anything from absence of plaintiff's own survey | Jury can use common sense regarding absence; no adverse instruction required | Proper to decline requested instruction; no required inference |
| Award of attorneys’ fees for trademark infringement under contract or Lanham Act | Defendant not entitled to fees as claim unrelated to contract and not exceptional | Claim relates to agreement or is baseless/unreasonable, fees warranted | No abuse of discretion; claim independent from contract and not exceptional |
| Award of non-taxable costs for both claims | Defendant entitled to costs based on outcome | Only fees, not costs, allowed under contract; Lanham Act not triggered | Denial of costs affirmed |
Key Cases Cited
- Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579 (expert testimony must be reliable and relevant)
- Fortune Dynamic, Inc. v. Victoria’s Secret Stores Brand Mgmt., Inc., 618 F.3d 1025 (survey deficiencies go to weight, not admissibility)
- Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252 (survey challenges are generally for the jury to weigh)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 ("exceptional case" standard under the Lanham Act for awarding fees)
- Johnson v. Columbia Props. Anchorage, LP, 437 F.3d 894 (fee decisions reviewed for abuse of discretion)