Top Tobacco, L.P. v. North Atl. Operating Co., No. 06 C 950, 2007 WL 118527 (N.D. Ill. Jan. 4, 2007) (Kennelly, J.).

Judge Kennelly granted defendants’ motion for attorneys’ fees and granted in part their bill of costs.  In January, Judge the Court granted summary judgment for defendants on plaintiff’s trademark, unfair competition and dilution claims (read more about that decision in the Blog’s archives).  The Court ruled that no reasonable jury could find that consumers were confused between plaintiffs’ TOP mark and defendants’ "Fresh-Top Canister" mark.  Defendants then filed the instant bill of costs and motion for attorneys’ fees arguing that the case was exceptional.  The Court held the case exceptional for three reasons.  First, the Court found that plaintiffs’ infringement and dilution claims were "exceptionally weak" stating that "a simple look at the canisters as they appeared on store shelves shows the virtual impossibility that consumers would be confused . . . ."  The Court disregarded plaintiffs’ purported evidence of actual confusion, which it presented for the first time in its response to the motion for attorneys’ fees.  Second, plaintiffs argued before the PTO that other "top" marks in the tobacco classification were narrow.  But before the Court plaintiffs took the "diametrically opposite" position, arguing that their TOP mark should enjoy broad protection.  Third, the Court found defendant Top Tobacco’s chairman Donald Levin’s testimony that the two products looked identical because they were both cans of tobacco "absurd."  The Court analogized Levin’s argument to the position that all the books on library shelves are identical because they are all books, without regard to their titles, jacket designs or colors.

Taken together, the Court held that these three elements made the case exception and awarded defendants’ reasonable attorneys fees.  But the Court cautioned defendants that its fee petition should exercise "billing judgment" and that billed time should be organized by activity as opposed to date or timekeeper.  The Court also noted that it would not wade through an unreasonable petition to make it reasonable. 

Finally, the Court reviewed defendants bill of costs.  Of particular note on the bill of costs, the Court only awarded transcription costs, not videography costs, for depositions with one exception.  In the one instance where there was specific evidence, beyond arguments that video testimony was value for impeachment purposes, of the need for video of the deposition, both transcription and video costs were awarded.