LHO Chicago River, L.L.C. v. Joseph Perillo, 942 F.3d 384

LHO Chicago River, L.L.C. (owner of a downtown Chicago Marriott rebranded as “Hotel Chicago”) sued Perillo and related LLCs for trademark infringement and unfair competition after defendants opened a nearby “Hotel Chicago.”
Litigation lasted over a year; LHO voluntarily dismissed its claims with prejudice and the district court entered judgment for defendants.
Defendants sought prevailing-party attorney fees under the Lanham Act, 15 U.S.C. § 1117(a), which permits fees in “exceptional” cases.
The district court applied this Circuit’s then-governing “abuse of process” test (from Burford/Nightingale) and denied fees; defendants appealed.
The Seventh Circuit considered whether the Supreme Court’s Octane Fitness totality-of-the-circumstances standard (applied to patent-fee shifting under 35 U.S.C. § 285) governs § 1117(a) awards and whether the fee order should be revisited.
The court held Octane controls for Lanham Act fee motions, vacated the district court’s fee order, and remanded for reconsideration under Octane.

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether Octane’s totality-of-the-circumstances standard applies to Lanham Act § 1117(a) fee requests	Burford/Nightingale abuse-of-process test remains controlling; Octane addressed a different statute	Octane should apply because § 1117(a) uses identical “exceptional” language, Congress referenced patent/copyright fee statutes, and Octane relied on trademark precedent	Adopted Octane: courts should apply a totality-of-the-circumstances, discretionary test for “exceptional” cases under § 1117(a)
Whether the district court erred by denying fees without applying Octane	District court followed Seventh Circuit precedent and reasonably denied fees	Denial without Octane review was error; appellate court should vacate and remand for Octane analysis	Vacated and remanded for the district court to re-evaluate fee request under Octane; appellate court declined to decide fee award merits (abuse-of-discretion review applies)

Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (adopts a totality-of-the-circumstances, discretionary test for awarding fees under the Patent Act)
Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (identifies nonexclusive factors for fee awards under analogous statutes)
Noxell Corp. v. Firehouse No. 1 Bar-B-Que Rest., 771 F.2d 521 (D.C. Cir. 1985) (interprets “exceptional” under § 1117(a) as uncommon/not run-of-the-mill)
Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc., 393 F.3d 1378 (Fed. Cir. 2005) (previous Federal Circuit test requiring either sanctionable misconduct or both subjective bad faith and objective baselessness)
Burford v. Accounting Practice Sales, Inc., 786 F.3d 582 (7th Cir. 2015) (Seventh Circuit’s pre-Octane abuse-of-process test for § 1117(a))
Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC, 626 F.3d 958 (7th Cir. 2010) (defines abuse-of-process prongs used by the Seventh Circuit)
Romag Fasteners, Inc. v. Fossil, Inc., 866 F.3d 1330 (Fed. Cir. 2017) (applies Octane principles in a related context)