Safeway Transit LLC v. Discount Party Bus, Inc., 954 F.3d 1171

Background:

Safeway Transit LLC (Silenko) began using the unregistered marks “Rent My Party Bus,” “952 Limo Bus,” and “Party Bus MN” online and in print from 2008 onward; DPB (Adam Fernandez/Discount Party Bus) used similar terms in earlier print ads but stopped by 2009.
In 2014–2015 DPB/Party Bus MN filed state and federal trademark applications (submitting materials that included Safeway content), registered related domain names, and used the contested terms in SEO, URLs, and social-media hashtags to capture search traffic.
Safeway sued (2015) under the Lanham Act and Minnesota deceptive-trade-practices law; parties tried infringement and deceptive-practices claims to the district court after partial settlement of registration claims.
The district court found infringement and permanently enjoined DPB and Fernandez from using the two marks (and related domain names/keywords/hashtags) but denied Safeway’s requests for disgorgement of DPB’s profits and for attorney’s fees.
On appeal Safeway challenged denial of disgorgement (15 U.S.C. § 1117(a)) and denial of attorney’s fees; the Eighth Circuit affirmed, concluding disgorgement and fees were not required under the equitable standards governing the Lanham Act.
The court emphasized (1) insufficient evidence of unjust enrichment or provable profits/actual confusion, (2) the injunction was an adequate equitable remedy given the court’s factual findings (including that DPB plausibly believed it had rights), and (3) the case was not "exceptional" to justify fee shifting.

Issues:

Issue	Plaintiff's Argument	Defendant's Argument	Held
Disgorgement of profits under the Lanham Act	Injunction insufficient (DPB going out of business); disgorgement needed for unjust enrichment and to deter willful infringers; district court misapplied equitable doctrines and shifted burdens	Injunction is adequate; plaintiff failed to prove DPB’s gross revenues, net profits, or actual confusion; DPB plausibly believed it had rights; discovery did not yield revenue evidence	Affirmed denial: no abuse of discretion. Plaintiff failed to prove unjust enrichment or requisite proof to support disgorgement; injunction satisfied the equities and court reasonably found deterrence unnecessary
Attorney’s fees under § 1117(a) (exceptional-case doctrine)	Case is exceptional due to DPB’s bad-faith trademark filings, meritless counterclaims, and discovery abuses; fees warranted	DPB’s conduct was not sufficiently exceptional; district court reasonably credited DPB’s plausible defenses and considered equities; Safeway also had "bad acts"	Affirmed denial: no abuse of discretion. The district court—familiar with the record—did not clearly err in concluding the case was not exceptional; even if exceptional, fee award remains discretionary (concurring judge would remand for factual findings on fees)

Key Cases Cited

Qwest Commc’ns Corp. v. Free Conferencing Corp., 837 F.3d 889 (8th Cir. 2016) (standard of review for equitable remedies)
Parke v. First Reliance Standard Life Ins., 368 F.3d 999 (8th Cir. 2004) (equitable accounting/disgorgement is discretionary)
Masters v. UHS of Del., Inc., 631 F.3d 464 (8th Cir. 2011) (disgorgement may be available under § 1117(a); injunction often preferred)
Minn. Pet Breeders, Inc. v. Schell & Kampeter, Inc., 41 F.3d 1242 (8th Cir. 1994) (Lanham Act bars punitive remedies; injunction preferred)
4 Pillar Dynasty LLC v. New York & Co., 933 F.3d 202 (2d Cir. 2019) (discussing deterrence rationale and willfulness in profit awards)
George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532 (2d Cir. 1992) (fraudulent use supports award of defendant’s profits)
Porous Media Corp. v. Pall Corp., 173 F.3d 1109 (8th Cir. 1999) (profit awards and related Lanham Act principles)
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (definition and framework for "exceptional" cases for fee awards)
First Nat’l Bank in Sioux Falls v. First Nat’l Bank S.D., 679 F.3d 763 (8th Cir. 2012) (review of fee-award discretion under Lanham Act)
John Allan Co. v. Craig Allen Co., 540 F.3d 1133 (10th Cir. 2008) (actual confusion as highly probative of likelihood of confusion)