East Iowa Plastics, Inc. v. PI, Inc., 889 F.3d 454

KenTech owned the registered trademark PAKSTER and sold thermoforming equipment and the PAKSTER mark to East Iowa Plastics (EIP) by written APA; KenTech retained an irrevocable license to use PAKSTER for injection-molded products.
KenTech later sold injection molds and some finished injection-molded products (inscribed with PAKSTER) to PI; there was no written assignment of the PAKSTER license to PI.
EIP’s federal registration of PAKSTER lapsed; years later PI applied to register PAKSTER and falsely certified no one else used the mark.
EIP sued PI under the Lanham Act; the district court found PI defrauded the PTO, canceled PI’s registration, and awarded EIP Lanham Act attorney’s fees.
On first appeal the Eighth Circuit held EIP lacked standing to seek cancellation (no proven damages) and was not a prevailing party for Lanham Act fees; the case was remanded for state‑law resolution of fee entitlement and the parties’ interests in the mark.
On remand the district court awarded EIP $400,000 in Iowa common‑law attorney’s fees and held PI owned a license limited to injection‑molded products (egg flats, baskets, chicken coops); PI appealed.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether EIP is entitled to Iowa common‑law attorney’s fees for PI’s conduct	EIP: PI’s false PTO filings, use of counsel to sign applications, and threatening letters amounted to oppressive/conniving conduct justifying fees	PI: Misconduct, even if bad faith or false statements, does not meet Iowa’s high common‑law standard for fees	Reversed: Iowa law requires oppression or connivance beyond mere bad faith; facts here do not meet that standard, so fees vacated
Scope of PI’s license in the PAKSTER mark (products covered)	EIP: license should be limited and not encompass all injection‑molded poultry products (EIP contested breadth)	PI: owns a license to use PAKSTER for injection‑molded egg flats, egg baskets, and chicken coops	Affirmed in part: PI owns a license covering injection‑molded chicken coops, egg baskets, and egg flats; EIP’s failure to cross‑appeal limits its challenges

E. Iowa Plastics, Inc. v. PI, Inc., 832 F.3d 899 (8th Cir. 2016) (prior appeal addressing standing and Lanham Act fees)
Thornton v. Am. Interstate Ins. Co., 897 N.W.2d 445 (Iowa 2017) (Iowa follows American Rule; common‑law fees available only in narrow circumstances)
Hockenberg Equip. Co. v. Hockenberg’s Equip. & Supply Co., 510 N.W.2d 153 (Iowa 1993) (standard for awarding common‑law attorney’s fees: oppression or connivance)
Williams v. Van Sickel, 659 N.W.2d 572 (Iowa 2003) (example where fabricated evidence by public official met the standard for common‑law fees)
Lamb Eng’g & Const. Co. v. Neb. Pub. Power Dist., 103 F.3d 1422 (8th Cir. 1997) (standard of review for state‑law questions)
Bethea v. Levi Strauss & Co., 916 F.2d 453 (8th Cir. 1990) (failure to file cross‑appeal bars enlarging appellee rights)