On Site Energy Company, Inc. v. MTU Onsite Energy Corp.

Filing 118

MEMORANDUM & ORDER re: 104 Plaintiff's motion for judgment as a matter of law, a new trial, and/or to set aside the verdict is DENIED; re: 102 Defendant's motion for Attorney Fees is GRANTED IN PART, but the Court cannot make a determin ation as to amount. If Defendant intends to proceed on this issue, it must file a motion for attorneys' fees, supported by appropriate case law and the contemporaneous time records, within 30 days of the date of this Order. Plaintiff's opposition is due 14 days thereafter and Defendant's reply, if any, is due within 7 days of the opposition. Ordered by Judge Joanna Seybert on 8/2/2013. (Nohs, Bonnie)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK
----------------------------------------X
ON SITE ENERGY COMPANY, INC.,
Plaintiff,

MEMORANDUM & ORDER
10-CV-1671(JS)(WDW)

-againstMTU ONSITE ENERGY CORP.,
Defendant.
----------------------------------------X
APPEARANCES
For Plaintiff:
Kurt N. Jones, Esq.
William A. McKenna, Esq.
Woodard Emhardt Moriarity McNett & Henry LLP
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
Annalee Cataldo-Barile, Esq.
Jarrett M. Behar, Esq.
Sinnreich Kosakoff & Messina
267 Carleton Avenue, Suite 301
Central Islip, NY 11722
For Defendant:

Kathleen E. McCarthy, Esq.
Erik J. Dykema, Esq.
King & Spalding LLP
1185 Avenue of the Americas
New York, NY 10036
Amy E. Jones, Esq.
Bruce W. Baber, Esq.
King & Spalding LLP
1180 Peachtree Street
Atlanta, GA 30309
Yuridia Caire, Esq.
King & Spalding LLP
333 Twin Dolphin Drive, Suite 400
Redwood City, CA 94065

SEYBERT, District Judge:
Currently pending before the Court are Defendant MTU
Onsite Energy Corp.’s (“Defendant”) motion for attorneys’ fees
(Docket Entry 102) and Plaintiff On Site Energy Company, Inc.’s
(“Plaintiff”)

motion

for

judgment

as

a

matter

trial/set aside judgment (Docket Entry 104).

of

law/new

For the following

reasons, Defendant’s motion is GRANTED IN PART and Plaintiff’s
motion is DENIED.
BACKGROUND
The

Court

facts of this case.
April

14,

Plaintiff

2010
is

a

presumes

familiarity

with

the

underlying

Briefly, Plaintiff commenced this action on

against

Defendant

corporation

that

for

trademark

provides

infringement.

retail

and

rental

services of power generation and temperature control equipment.
In 2008, Defendant “adopted a new name for its group of global
companies operating in the field of generating energy onsite MTU ONSITE ENERGY.” (Def.’s Br. for Atty. Fees, Docket Entry
102-1, at 4.)
According to Plaintiff, Defendant’s use of the ON SITE
ENERGY mark infringes upon its trademark.

The Defendant, on the

other hand, claims that it is not infringing on Plaintiff’s
trademark,

that

Plaintiff’s

trademark

is

a

generic

term

in

common use and therefore is not subject to trademark protection,
and that Plaintiff’s federal trademark registration is invalid.
2

A jury trial in this case commenced on July 30, 2012.
After

several

days

of

trial,

the

jury

made

the

following

determinations: (1) Plaintiff had not proven by a preponderance
of

the

evidence

registered

that

service

preponderance
unregistered

of

Defendant

mark;

(2)

Plaintiff

evidence

the

service

infringed

that

mark;

(3)

had

on
not

Defendant

Defendant

a

had

federally-

proven

by

infringed
proven

by

a
an
a

preponderance of the evidence that the mark was generic on its
first

counterclaim

for

cancellation

of

Plaintiff’s

federal

registration; (4) Defendant had proven by clear and convincing
evidence that the registration was obtained by fraud on its
first

counterclaim

registration;
convincing

for

cancellation

(5)

Defendant

evidence

that

had

the

not

mark

of

Plaintiff’s

proven
is

by

federal

clear

descriptive

and

without

secondary meaning on its first counterclaim for cancellation of
Plaintiff’s federal registration; and (6) Defendant had proven
its second counterclaim by a preponderance of the evidence that
ON SITE ENERGY is generic.

(Jury Verdict Sheet, Docket Entry

99, Court Ex. 6.)
DISCUSSION
Following the jury verdict in its favor, Defendant now
moves for attorneys’ fees.

Plaintiff, however, has moved for

judgment as a matter of law, a new trial, and/or to set aside

3

the verdict.

The Court will first address Plaintiff’s motion

before turning to that of Defendant.
I.

Plaintiff’s Motion
Plaintiff moves for judgment as a matter of law on the

issue of fraud in the procurement as well as for a new trial and
to vacate the judgment based upon several particular theories.
The Court will address each of Plaintiff’s arguments in turn.
A.

Judgment as a Matter of Law
As

cancel

part

of

Plaintiff’s

regarding

the

ON

its

U.S.
SITE

counterclaims,

Trademark
ENERGY

Registration

mark

registration was procured by fraud.
Defendant

submitted

various

Defendant

on

the

sought

No.

ground

to

3,759,962
that

the

In support of this claim,

correspondences

between

Defendant

and Plaintiff prior to Plaintiff’s relevant submissions to the
Patent and Trademark Office and Plaintiff’s procurement of the
trademark.

Specifically,

throughout

litigation

and

trial,

Defendant relied heavily on the April 17, 2009 letter from its
counsel, Mr. Vito Giordano, to Plaintiff’s counsel Mr. James
Durlacher.

(Apr. 17, 2009 Ltr., Trial Ex. D, Docket Entries

104-4 through 104-6.)
he

believed

provided

his

that

the

reasons

In that letter, Mr. Giordano stated that
ON

SITE

therefore.

ENERGY

mark

He

further

was

generic

maintained

and
that

“‘On-Site Energy’ . . . has been . . . pervasively used publicly
to refer to energy provided on site,” and provided a list of
4

seven

specific

examples.

(Apr.

17,

2009

Ltr.

at

3.)

Mr.

Giordano attached 179 pages to his letter in support of his
assertions.

Thereafter,

however,

Plaintiff’s

counsel

Mr.

Durlacher submitted a sworn statement (the “Verified Statement”)
to the Patent and Trademark Office affirming that the ON SITE
ENERGY

mark

had

become

distinctive

through

Plaintiff’s

substantially exclusive and continuous use in commerce for at
least

the

last

five

years.

(Verified

Stmt.,

Trial

Ex.

2J,

Docket Entry 104-2.)
On

August

5,

2012,

after

the

close

of

evidence,

Plaintiff moved for judgment as a matter of law on this claim
arguing a lack of proof of fraud in the procurement of the
trademark registration.
91.)

(Pl.’s First JMOL Mot., Docket Entry

The Court denied this motion on the record during an

August 6, 2012 conference.
97.)

(See 8/6/12 Min. Order, Docket Entry

Plaintiff now renews its motion essentially asserting the

same arguments.
1.

Legal Standard

Judgment as a matter of law is proper only when “a
party has been fully heard on an issue during a jury trial and
the court finds that a reasonable jury would not have a legally
sufficient
issue.”

evidentiary

basis

to

find

FED. R. CIV. P. 50(a)(1).

for

the

party

on

that

“In reviewing a Rule 50

motion, a court may consider all the record evidence, but in
5

doing so it ‘must draw all reasonable inferences in favor of the
nonmoving party, and it may not make credibility determinations
or weigh the evidence.’”

Cross v. N.Y.C. Trans. Auth., 417 F.3d

241, 247 (2d Cir. 2005) (quoting Reeves v. Sanderson Plumbing
Prods., Inc., 530 U.S. 133, 150, 120 S. Ct. 2097, 147 L. Ed. 2d
105 (2000)).

A court should set aside a jury verdict

only where there is such a complete absence
of evidence supporting the verdict that the
jury’s findings could only have been the
result of sheer surmise and conjecture, or .
. . such an overwhelming amount of evidence
in favor of the movant that reasonable and
fair minded men could not arrive at a
verdict against him.
Kosmynka v. Polaris Indus., Inc., 462 F.3d 74, 79 (2d Cir. 2006)
(ellipsis in original) (internal quotation marks and citation
omitted).
2.

Discussion

As

this

Court

previously

held,

“the

question

of

alleged fraud on the PTO in obtaining a trademark registration
presents a factual question for the jury.”
Docket Entry 82, at 2 (quoting MCCARTHY

ON

(7/26/12 MIL Order,
TRADEMARKS § 31:61).)

Here, there was sufficient evidence for the jury to conclude
that the trademark was procured by fraud.
The Court properly instructed the jury as follows:
Defendant
claims
that
Plaintiff
obtained
its
service
mark
registration
through fraud on the Patent and Trademark
Office.
6

To succeed on this claim, defendant
must prove by clear and convincing evidence
that
plaintiff
knowingly
made
material
misrepresentations
to
the
Patent
and
Trademark Office with the intent to deceive
the Patent and Trademark Office . . . .
You have heard the attorneys discuss
the
statement
from
plaintiff
to
the
Trademark--to
the
Patent
and
Trademark
Office that plaintiff used with the [sic] ON
SITE ENERGY mark was substantially exclusive
and continuous.
Under the law, this is not necessarily
a misrepresentation if even if [sic] other
companies or people may have been using the
On Site Energy mark at the time this
statement was made.
Plaintiff’s use of the
mark would still be substantially exclusive
if the other uses of the mark were either
inconsequential or infringing.
(Tr. 974-76.)
Plaintiff asserts that it is entitled to judgment as a
matter of law because there was insufficient proof that the
Verified Statement was false.

According to Plaintiff, at the

time Mr. Durlacher submitted the Verified Statement in November
2009, the only other company he knew of using a variation of ON
SITE

ENERGY

was

the

“On

Site

Energy”

California (the “California Company”).

company

in

Carlsbad,

(Pl.’s Br. for Post-

Trial Relief at 3-4.)

Thus, Plaintiff argues that “Defendant

failed

as

to

demonstrate

convincing

evidence,

likelihood

of

a

that

confusion

matter

Mr.

would

7

of

law,

Durlacher
result’

by

clear

‘believed

with

the

that

and
a

California

Company from Plaintiff’s use of ‘On Site Energy’ for the recited
services.”

(Pl.’s Br. for Post-Trial Relief at 5.)
Plaintiff’s argument, however, presents the issue much

too narrowly.

First, the Court properly instructed the jury

that Plaintiff’s use of the mark would still be substantially
exclusive if other uses of the mark were either inconsequential
or infringing.

It was within the jury’s ken to consider only

the California Company or to consider additional third party
companies

in

fraudulent.

determining

whether

the

Verified

Statement

was

See Fair Issac Corp. v. Experian Info. Sol., Inc.,

650 F.3d 1139, 1149 (8th Cir. 2011) (“The jury heard FICO’s
argument that it only used 300-850 as a trademark to identify
source,

and

a

reasonable

jury

could

have

rejected

FICO’s

contention and determined that the statement was false.”).
Moreover,

even

in

just

considering

the

California

Company, its services, and confusion, such evidence is not so
heavily in favor of Plaintiff as to merit judgment as a matter
of

law.

Plaintiff

submitted

evidence

that

the

California

Company is engaged in consulting services rather than retail
sales and rental services.
province

to

weigh

that

Ultimately, it was in the jury’s

evidence.

See

L.D.

Kichler

Co.

v.

Davoil, Inc., 192 F.3d 1349, 1352 (Fed. Cir. 1999) (genuine
issue of fact as to whether other companies’ use of mark was
inconsequential or infringing).
8

Second,

Defendant

submitted

extensive

evidence

that

the Verified Statement was indeed false, including the April 17,
2009

letter

Furthermore,

to

Mr.

Mr.

Durlacher

Giordano

and

the

testified

179

that

attached
he

came

pages.
to

the

conclusion that the ON SITE ENERGY mark was not exclusive to
Plaintiff based upon substantial research.
Accordingly,

Plaintiff’s

(Tr. 680-81.)

motion

for

judgment

as

a

matter of law regarding fraud in the procurement is DENIED.
B.

New Trial
1.

Legal Standard

“A motion for a new trial, pursuant to [Federal Rule
of Civil Procedure] 59, may be granted when the district court
is ‘convinced that the jury has reached a seriously erroneous
result

or

that

the

verdict

is

a

miscarriage

of

justice.’”

Tesser v. Bd. of Educ. of City Sch. Dist. of City of N.Y., 190
F. Supp. 2d 430, 440 (E.D.N.Y. 2002) (quoting Smith v. Lightning
Bolt Prods., Inc., 861 F.2d 363, 370 (2d Cir. 1988)).

In making

this determination, the Court “is free to weigh the evidence
[itself] and need not view it in the light most favorable to the
verdict winner.”
Co.,

245

F.R.D.

Health Alliance Network, Inc. v. Cont’l Cas.
121,

127

(S.D.N.Y.

2007)

(alteration

in

original) (quoting Song v. Ives Labs., Inc., 957 F.2d 1041, 1047
(2d Cir. 1992)).

In addition, the Court may grant a new trial

“even if there is substantial evidence to support the verdict.”
9

Datskow v. Teledyne Cont’l Motors Aircraft Prods., a Div. of
Teledyne Indus., Inc., 826 F. Supp. 677, 683 (W.D.N.Y. 1993)
(internal quotation marks and citation omitted).

Despite this

liberality, however, “[a] court should only grant a new trial
when a jury’s verdict is egregious.”
Inc., 245 F.R.D. at 127.
for

relitigating

theories,

old

securing

a

Health Alliance Network,

Furthermore, “Rule 59 is not a vehicle

issues,

presenting

rehearing

on

the

taking a ‘second bite at the apple[.]’”

the

case

merits,

under

or

new

otherwise

O’Connell v. Onondaga

Cnty., No. 09-CV-0364, 2013 WL 998598, at *1 (N.D.N.Y. Mar. 13,
2013)

(alteration

in

original)

(quoting

Sequa

Corp.

v.

GBJ

Corp., 156 F.3d 136, 144 (2d Cir. 1998)).
2.

“Crime” Accusations

Plaintiff argues that it is entitled to a new trial
because defense counsel repeatedly emphasized and stated that
Mr.

Durlacher

Verified

had

Statement

Specifically,

committed
to

Plaintiff

a

the

crime
Patent

points

to

in

connection

and

the

Trademark

following

with

his

Office.

portion

of

defense counsel’s closing argument: “If you are willfully blind
to that evidence, and in this particular case we have testimony
that there was a deliberate and conscious decision not to review
that,

then,

ladies

Trademark Office.”

and

gentlemen,

(Tr. 933-34.)

10

that

is

a

crime

The Court disagrees.

on

the

“[W]hile

not

all

misconduct

of

counsel

taints

a

verdict to such a degree as to warrant a new trial, ‘when the
conduct of counsel in argument causes prejudice to the opposing
party and unfairly influences a jury's verdict, a new trial
should be granted.’”

Hopson v. Riverbay Corp., 190 F.R.D. 114,

122 (S.D.N.Y. 1999) (quoting Pappas v. Middle Earth Condominium
Ass’n,

963

F.2d

534,

540

(2d

Cir.

1992)).

In

making

this

determination, “the Court must consider the ‘totality of the
circumstances’

including

‘the

nature

of

the

comments,

their

frequency, their possible relevance to the real issue before the
jury,

[and]

the

manner

in

treated the comments.’”

which

the

Id. at 122.

parties

and

the

court

(quoting Hynes v. LaBoy,

887 F. Supp. 618, 631 (S.D.N.Y. 1995)).
Here,
counsel’s

Plaintiff

summations

in

points
which

to

she

one

instance

referred

to

in

Mr.

defense

Durlacher

having committed a crime in submitting the Verified Statement.
Interestingly,

however,

the

Verified

Statement

contains

an

explicit acknowledgement that “willful false statements and the
like so made are punishable by fine or imprisonment, or both,
under

Section

1001

of

Title

18

. . . .” (Verified Stmt. at 1-2.)

of

the

United

States

Code

Moreover, that Mr. Durlacher

had committed fraud was one of Defendant’s theories in the case
and

central

to

their

fraud

in

the

procurement

counterclaim.

Thus, in the context of this case and the claims presented,
11

counsel’s

examination

of

Mr.

Durlacher

summations does not merit a new trial.
Transp.

Cos.,

397

F.3d

120,

126-27

or

a

comment

during

See Marcic v. Reinauer
(2d

Cir.

2005)

(defense

counsel’s statements that plaintiff’s medical expert’s testimony
was “silly” and it was “sad” that plaintiff would waste the
court’s time “were not so inflammatory or so unsupported by the
record” as to entitle plaintiff to a new trial); Frometa v.
Diaz-Diaz, No. 07-CV-6372, 2008 WL 5210345, at *8 (S.D.N.Y. Dec.
11,

2008)

(“[W]hile

the

defense

counsel

intimated

that

the

plaintiff’s attorney worked as a ‘team’ with Frometa’s doctors
and

withheld

information

about

Frometa’s

medical

history

and

other car accidents from her doctors, such insinuations were not
without some support in the record.”); Beyar v. City of N.Y.,
No. 04-CV-3765, 2007 WL 1959010, at *4 (E.D.N.Y. June 29, 2007)
(argument based upon inferences that could be made from the
evidence were permissible).
Therefore, this is not the kind of case where the jury
was

prejudiced

inflammatory

by

topic

repeated
and

discussion

Plaintiff’s

of

an

irrelevant

motion

on

this

and

basis

is

DENIED.
3.

Jury Instruction on Willful Blindness

Plaintiff further argues that the Court erroneously
instructed

the

jury

on

fraud

by

12

providing

the

jury

with

a

willful blindness instruction.

The instruction at issue is as

follows:
To succeed [on the counterclaim of
fraud], defendant must prove by clear and
convincing evidence that plaintiff knowingly
made material misrepresentations to the
Patent and Trademark Office with the intent
to deceive the Patent and Trademark Office.
. . .
You may find that plaintiff acted
knowingly if a representative of plaintiff
actually knew that his or her statement was
false, or if that representative acted with
willful blindness to the truth or falsity of
the statement.
A person acts with willful blindness
when he or she subjectively believed that
there
was
a
high
probability
that
a
particular fact exists and took deliberate
actions to avoid learning of that fact.
I caution you that it is not enough to
find willful blindness if the person was
simply negligent--in other words, if he or
she should have known of the relevant facts.
It is also not enough to find willful
blindness if the person acted recklessly, in
other words, if he or she believed that
there was a substantial probability that a
particular fact exists.
Willful blindness means both that a
person believed there was a high probability
that a fact exists and then took active
steps to avoid learning of that fact.
(Tr. 974-75.)
The

Court

determined

that

such

a

charge

was

appropriate only after a conference on the matter and after the
parties’ submissions on the specific issue of willful blindness.
(Tr. 875 (THE COURT: “I have asked both plaintiff and defendant
to submit their positions on the issue of willful blindness as
13

laid

out

in

Global-Tech,

with

regard

to

the

term,

willful

blindness, should be included.”); Pl.’s Proposed Fraud Chrg.,
Docket Entry 89; Def.’s Proposed Fraud Chrg., Docket Entry 90.)
At the time, the Court found the Supreme Court case of GlobalTech Applicances, Inc. v. SEB S.A., --- U.S. ----, 131 S. Ct.
2060, 179 L. Ed. 2d 1167 (2011), to be particularly instructive.
There,

the

Court

began

with

the

premise

that

induced

infringement under 35 U.S.C. § 271(b) “requires knowledge that
the induced acts constitute patent infringement.”

Id. at 2068.

The Supreme Court’s analysis continued with a discussion of the
doctrine of willful blindness generally, ultimately concluding
that “[g]iven the long history of willful blindness and its wide
acceptance in the Federal Judiciary, we can see no reason why
the doctrine should not apply in civil lawsuits for induced
patent infringement under 35 U.S.C. § 271(b).”
Then,

as

now,

the

Court

finds

Id. at 2069.
Global-Tech

to

be

analogous and that a willful blindness instruction in this case
was not erroneous.

The Court makes this determination despite

Plaintiff’s supplemental authority on the issue.

Specifically,

Plaintiff has directed the Court to the Eleventh Circuit case of
Sovereign Military Hospitaller Order of Saint John of Jerusalem
of Rhodes and of Malta v. The Florida Priority of the Knights of
Hospitallers of the Sovereign Order of Saint John of Jerusalem,
Knights of Malta, the Ecumenical Order, 694 F.3d 1200 (11th Cir.
14

Sept. 11, 2012).

Since Plaintiff’s submission, the Sovereign

Military decision was vacated and superseded on reconsideration.
See Sovereign Military, 702 F.3d 1279 (11th Cir. Dec. 18, 2012).
In

both

cases,

though,

the

Court

found

that

the

willful

blindness doctrine was not applicable in examining a fraud claim
based

on

Patent

misrepresentations

and

Trademark

declaration

oath,

in

the

Office.

however,

declaration

See

is

id.

different

“substantially exclusive” use statement.

at
from

oath

to

1290-91.
a

the
The

Section

2(f)

An examination of the

declaration oath focuses on the declarant’s subjective belief,
see

id.

at

1290,

while

Mr.

Durlacher’s

Verified

Statement

(pursuant to Section 2(f)) depends upon his knowledge.
Global-Tech

similarly

focused

on

knowledge.

“The

principle that willful blindness is tantamount to knowledge is
hardly novel,” Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 110
n.16 (2d Cir. 2010), nor would this be the first time a court in
this circuit applied the doctrine in the trademark context, see
Fendi Adele S.R.L. v. Filene’s Basement, Inc., 696 F. Supp. 2d
368,

393

(S.D.N.Y.

2010)

(applying

willful

blindness

in

determining whether defendant acted with willful deception in
plaintiff’s accounting claim); Johnson & Johnson Consumer Cos.,
Inc. v. Aini, 540 F. Supp. 2d 374, 396 (E.D.N.Y. 2008) (applying
willful

blindness

in

determining

15

whether

there

was

willful

infringement).

Accordingly, Plaintiff’s motion for a new trial

in this regard is DENIED.
4.

The Genericness Verdict

In further support of its motion for a new trial,
Plaintiff maintains that the jury’s verdict determining that the
mark at issue is generic is against the weight of the evidence.
The Court disagrees.
As the Court properly instructed the jury, “[a] term
is generic if it does not identify the source of a product or
service,

but

rather

uses

the

common

word

or

words

that

an

average consumer would use to describe the product or services.”
(Tr. 963.)

Plaintiff argues that Defendant’s evidence lacked

proof that the term “on site energy” was used as a generic term
for the particular services recited in Plaintiff’s service mark
registration, namely retail sales and rental services of power
generation and temperature control equipment.
However, Defendant’s evidence sufficiently established
at trial that “on site energy” and “onsite energy” are generic
terms for the general types of goods and services Plaintiff
provided.

See Otokoyama Co. Ltd. v. Wine of Japan Import, Inc.,

7 F. App’x 112, 115 (2d Cir. 2001) (“Testimonial and documentary
evidence, as well as actual sake products, supported W.J.I.’s
claim that the term ‘otokoyama’ has been used by as many as
sixteen different sake breweries in Japan.”).
16

For example, the

179 pages of research that accompanied Mr. Giordano’s April 17,
2009 letter, along with his testimony and the testimony of Mr.
Patrick French, Plaintiff’s general manager and vice president,
demonstrate that the mark has been used in a variety of contexts
and is such that the average consumer would use it to describe
the relevant product or services.

(See Testimony of P. French,

Tr. 359 (“Q: Do you know other people in what I would call
generally the energy business that use the name On Site Energy
other than MTU and your company?

A: That is a broad thing.

But, yeah, GO Thermal Company, that claims to make electricity
with hot water from the earth that has a variation of the name
On Site Energy.”); Testimony of V. Giordano, Tr. 671 (“Another
category were trademark applications and patent applications,
with the companies who tried to get a trademark or patent.

And

when they referred to the service that they were dealing with,
or the product that they were dealing with, and called that
service or that product, on-site energy.”).)
Furthermore, “[a] generic term refers to the genus of
which a particular product is a species.”

GMT Prods., L.P. v.

Cablevision of N.Y.C., Inc., 816 F. Supp. 207, 210 (S.D.N.Y.
1993); accord Jewish Sephardic Yellow Pages, Ltd. v. DAG Media,
Inc., 478 F. Supp. 2d 340, 356 (E.D.N.Y. 2007) (“A generic term
consists of words that simply identify a class or genus of goods
to which a particular product belongs.”).
17

Similarly, a generic

term for particular goods is also generic for the sale of those
goods.

See In re Lubys Fuddruckers Restaurants, LLC, 2011 WL

7005531,

at

*3

(T.T.A.B.

Dec.

22,

2011)

(“[A]

term

that

identifies a food item prepared and sold in restaurants may be
descriptive of restaurant services.”).
was--and

the

jury

found

that--“on

Thus, Defendant’s theory
site

energy”

or

“onsite

energy” “describes a general category of services,” encompassing
those services that Plaintiff provides.
F.

Supp.

at

210-11

(finding

that

GMT Prods., L.P., 816

“The

Arabic

Channel”

was

generic for the general category of services of channels that
broadcast in the Arabic language).
Accordingly,

Plaintiff’s

motion

for

a

new

trial

because the genericness verdict is against the weight of the
evidence is DENIED.
5.

Infringement

Plaintiff also maintains that it is entitled to a new
trial

on

its

infringement

claims

for

two

reasons.

First,

Plaintiff argues that “[t]he jury’s non-infringement finding was
likely based upon its fraud and genericness findings.”
Br. for Post-Trial Relief at 19.)

(Pl.’s

Second, Plaintiff maintains

that it was prejudiced by the exclusion of actual confusion
evidence.
With respect to Plaintiff’s first argument, there is
no dispute that the Court properly instructed the jury that, in
18

determining

Plaintiff’s

infringement

claims,

the

first

consideration is whether Plaintiff is the owner of a valid mark.
(See Pl.’s Proposed Jury Instructions, Docket Entry 55, at 18.)
Thus,

there

is

nothing

determining

that

considering

the

the

necessarily

mark

second,

was

not

confusion,

improper
valid,

about

and

element

the

jury

therefore

of

not

infringement.

Furthermore, Plaintiff offers only speculation as to how the
jury came to its verdict on the infringement claims.
nothing

to

suggest

that

the

jury

misunderstood

instructions or improperly considered issues.

There is
the

jury

See Aristrocrat

Leisure Ltd. v. Deutsche Bank Trust Co. Ams., 727 F. Supp. 2d
256, 275 (S.D.N.Y. 2010) (“There was no indication that the
jurors either failed to comprehend the special instruction or
were

swayed

by

the

stricken

testimony.”).

Accordingly,

Plaintiff’s motion for a new trial in this regard is DENIED.
With

respect

to

Plaintiff’s

second

argument,

the

parties briefed this issue and the Court previously issued a
well-reasoned
erroneously
witnesses

decision.
prevented

who

had

Plaintiff
it

called

from

maintains
presenting

Plaintiff,

associated with Defendant’s product.

that

the

Court

testimony

from

believing

it

to

be

According to Plaintiff,

such testimony is relevant to the issue of reverse confusion.
As the Court explained in its July 26, 2012 Memorandum
and Order, “[r]everse confusion exists when a subsequent user
19

selects

a

trademark

that

is

likely

to

cause

consumers

to

believe, erroneously, that the goods marketed by the prior user
are produced by the subsequent user.”

(7/26/12 MIL Order at 3

(quoting Lang v. Retirement Living Publ’g Co., 949 F.2d 576, 583
(2d Cir. 1991).)
the

Lang

case,

In so holding, the Court relied, in part, on
in

which

“the

Second

Circuit

explained

that

mistaken calls to the senior user (a publishing company that had
produced only one book) from people looking for the junior user
(a magazine for retirees) were irrelevant to reverse confusion.”
(7/26/12

MIL

According

to

Order

at

Plaintiff,

3

(citing
the

Lang,

Court

949

F.2d

misapplied

at

Lang

583).)
because

Plaintiff’s witnesses were “going to recount facts that they
were prospective purchasers of Plaintiff’s products, and because
of the confusing marks, errantly believed Plaintiff’s products
were

produced

by

the

Defendant

or

errantly

Plaintiff was affiliated with the Defendant.”

believed

that

(Pl.’s Br. for

Post-Trial Relief at 21.)
As a preliminary matter, Plaintiff made this argument
in opposition to Defendant’s motion in limine.
Entry 67 at 5.)
rendered

a

(See Docket

The Court considered Plaintiff’s submission and

written

7/26/12 MIL Order.)

decision

on

the

matter.

(See

generally

Plaintiff’s attempt to rehash the same

arguments, in the same manner, is unavailing.

20

Furthermore,

Plaintiff’s

own

description

of

proffered witness testimony belies its very argument.

its

According

to Plaintiff, it should have been able to submit evidence from
its

witnesses

prospective

because,

in

purchasers

of

accordance
Plaintiff’s

with

Lang,

products,

they

but

were

errantly

believed that Plaintiff’s products were produced by Defendant or
that Plaintiff and Defendant were affiliated.

However, this is

not

proffered.

As

illustrates,

the

the

type

Plaintiff’s
witnesses

of

testimony

description
Plaintiff

of

that
the

intended

Plaintiff
testimony

to

offer

were

Defendant’s

customers--they were seeking “a quote on an MTU ONSITE ENERGY
brand”

generator

or

“information

about

an

MTU

ONSITE

ENERGY

brand of generator set” or “a quote to service six brand new MTU
ONSITE ENERGY brand of generator sets.”

(Pl.’s Br. for Post-

Trial Relief at 20.)
Moreover,
excluded

evidence

Defendant’s

the
was

product.

Court’s

witness
(See

Order

made

testimony

7/26/12

MIL

from

clear

that

persons

Order

at

4

the

seeking
(“[T]he

witnesses MTU seeks to exclude contacted OSE thinking that OSE
supplied MTU’s generator sets.”).)

The Court did not prevent

Plaintiff from presenting relevant evidence regarding reverse
confusion, such as its survey evidence.
Accordingly,

Plaintiff’s

DENIED.
21

motion

in

this

respect

is

C.

Vacatur
Finally, Plaintiff argues that the judgment should be

vacated pursuant to Federal Rule of Civil Procedure 60.

That

rule provides, in relevant part, that “[o]n motion and just
terms, the court may relieve a party or its legal representative
from a final judgment, order, or proceeding for the following
reasons:
neglect.”

(1)

mistake,

inadvertence,

surprise,

or

excusable

FED. R. CIV. P. 60(b)(1).
According to Plaintiff, the Court erred in entering

judgment that the registration was procured by fraud.

However,

for the reasons stated above, the Court disagrees and finds that
there was no error or mistake in entering judgment in accordance
with

the

jury’s

verdict

in

this

respect.

Accordingly,

Plaintiff’s motion in this respect is DENIED.
Plaintiff

further

argues

that

the

Court

erred

in

entering the following judgment: “The terms ‘on site energy’ and
‘onsite energy’ are hereby declared to be generic terms for
goods and services relating to the providing of electric or
other power at a location at which such power is required.”
(Final Judgment, Docket Entry 101, ¶ 3.)

Plaintiff maintains

that this description of goods and services is too broad, and
does not encompass the narrower services outlined in Plaintiff’s
registration.

(Pl.’s Br. for Post-Trial Relief at 22.)

the Court disagrees.
22

Again,

The Court has already rejected Plaintiff’s argument
that it is entitled to a new trial because the jury verdict on
genericness was essentially too broad and was not specific to
the

services

reshape

the

Plaintiff
same

provides.

argument

as

Plaintiff

now

attempts

pursuant

to

Rule

one

to

60(b).

However, for the reasons stated above, there was no mistake in
the

Court’s

entry

of

the

genericness

verdict.

Accordingly,

Plaintiff’s motion in this respect is DENIED.
II.

Defendant’s Motion for Attorneys’ Fees
Having concluded that Plaintiff is not entitled to the

post-trial relief requested, the Court next turns to Defendant’s
motion

for

attorneys’

fees

and

costs

(Docket

Entry

102).

Defendant seeks attorneys’ fees pursuant to two provisions: (1)
Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a); and (2) 28
U.S.C. § 1927.

In this instance, the Court finds Section 35(a)

of the Lanham Act to be particularly instructive.
Section
exceptional

cases

prevailing

party.”

interpreted

35(a)
may

provides

award

that

reasonable

15

U.S.C.

§

“exceptional

cases”

to

“[t]he

attorney

1117(a).
mean

court
fees

to

Courts
those

in
the
have

involving

instances of fraud or bad faith, willful infringement, or a
party’s misconduct during litigation.

See Patsy’s Brand, Inc.

v. I.O.B. Realty, Inc., 317 F.3d 209, 221 (2d Cir. 2003); De La

23

Torre Bueno v. Dance Perspectives Found., Inc., No. 02-CV-8542,
2004 WL 1724950, at *2 (S.D.N.Y. July 30, 2004).
Here, the jury definitively held that Plaintiff had
obtained registration of the ON SITE ENERGY mark by fraud, as
shown by clear and convincing evidence.
Ct. Ex. 6.)

(Jury Verdict Sheet,

This, alone, merits a finding that this is an

exceptional case entitling Defendant to attorneys’ fees.

See

Firehouse Rest. Grp., Inc. v. Scurmont LLC, No. 09-CV-0618, 2011
WL 4943889, at *11 (D.S.C. Oct. 17, 2011) (“In fact, the jury’s
verdict, finding that FRG committed fraud on the USPTO, renders
this case ‘exceptional.’”); De La Torre Bueno, 2004 WL 1724950,
at *2 (jury’s finding of willful violation of plaintiff’s rights
independently
Furthermore,

satisfied
and

as

the

exceptional

discussed

case

previously,

supported by the evidence at trial.

this

requirement).
verdict

was

See De La Torre Bueno, 2004

WL 1724950, at *2 (finding fraud and bad faith where corporate
president’s

assertion

letter

contradicted

was

that
by

he
a

did

not

multitude

receive
of

a

particular

other

evidence).

Accordingly, Defendant is entitled to attorneys’ fees.
In support of its motion, however, Defendant submitted
only

a

memorandum

of

law;

the

Declaration

of

Kathleen

E.

McCarthy; and a list of the time-keepers, their position, their
year of graduation from law school, their hourly rate, the hours
billed, and the total amount of fees requested.
24

(See Docket

Entry 102.)

Although Defendant apparently provided Plaintiff

with its contemporaneous time records (see Docket Entry 112), it
did

not

submit

such

records

to

the

Court.

See

Gen.

Star

Indemnity Co. v. Custom Editions Upholstery Corp., 940 F. Supp.
645, 652 (S.D.N.Y. 1996) (“The rule in this Circuit is that
attorneys

may

not

contemporaneous

be

awarded

records.”).

fees

The

without

Court

presenting

notes

that

a

transcription of hours and tasks based upon contemporaneous time
records

is

sometimes

sufficient.

See

Moore

v.

Diversified

Collection Servs., Inc., No. 07-CV-0397, 2013 WL 1622949, at *4
(E.D.N.Y. Mar. 19, 2013) (“Attorneys seeking fees may submit a
typed listing of hours from computer records, where they made
contemporaneous entries as the work was completed, and their
billing was based on these contemporaneous records.”), adopted
by 2013 WL 1622713 (E.D.N.Y. Apr. 15, 2013); Nimkoff Rosenfeld &
Schecter,
8955840,

LLP
at

v.

*4

RKO

Props.,

(S.D.N.Y.

Ltd.,

No.

7,

2011)

Apr.

07-CV-7983,

2011

WL

(“Transcriptions

of

contemporaneous time records containing [for each attorney, the
date, the hours expended, and the nature of the work done] have
been found to satisfy this requirement.”), adopted by 2012 WL
3871394 (S.D.N.Y. Sept. 6, 2012).
theoretically,

reduce

Defendant’s

Furthermore, the Court could,
fees.

See

Moore,

2013

WL

1622949, at *4-5 (reducing fees by ten percent where submission
lacked detail); Handschu v. Special Servs. Div., 727 F. Supp. 2d
25

239,

251

(S.D.N.Y.

2010)

(reducing

fees

by

ten

percent

for

failure to support them with contemporaneous time records).
In the context of this case, though, the absence of
contemporaneous time records and the cursory arguments that both
parties have presented on this issue prevent the Court from
determining a reasonable amount of fees.

See RCB Equities No.

3, LLC v. Skyline Woods Realty, LLC, No. 10-CV-1182, 2013 WL
2468845, at *1 (N.D.N.Y. June 7, 2013) (court had insufficient
information to award a reasonable amount for attorneys’ fees and
costs

because

declaration

in

support

did

not

include

“information regarding counsel’s background and experience and
the customary fees and/or hourly rate charged for similar legal
services”); Alejo v. Darna Restaurant, No. 09-CV-5436, 2010 WL
5249383, at *6 (S.D.N.Y. Dec. 17, 2010) (noting that the court
gave plaintiff another chance to submit records and that, upon
second motion, spreadsheet listing categories was insufficient),
adopted as modified by 2011 WL 165413 (S.D.N.Y. Jan. 18, 2011);
Tran

v.

Tran,

166

F.

Supp.

2d

793,

801

(S.D.N.Y.

2001)

(“[R]ecords should specify, for each attorney, the date, the
hours expended, and the nature of the work done.” (internal
quotation marks and citation omitted)).
Additionally, Defendant requests fees as high as $865
per hour.

(See generally Docket Entry 102.)

However, Defendant

has provided no case law to support imposition of such fees nor
26

has it explained the level of experience of each of the timekeepers in the particular field of trademark infringement, the
schools

from

which

the

time-keepers

graduated,

or

any

other

insight into why fees at the requested rates are justified.
Defendant also has not supported its argument for imposition of
fees for time-keepers other than attorneys and paralegals.
Accordingly, and while the Court finds that this is an
“exceptional case” that would entitle Defendant to fees, the
Court cannot make any determination as to the amount of fees at
this juncture.

[BOTTOM OF PAGE INTENTIONALLY LEFT BLANK]

27

CONCLUSION
For

the

foregoing

reasons,

Plaintiff’s

motion

for

judgment as a matter of law, a new trial, and/or to set aside
the verdict is DENIED.

Defendant’s motion for attorneys’ fees

is GRANTED IN PART, but the Court cannot make a determination as
to amount.

If Defendant intends to proceed on this issue, it

must file a motion for attorneys’ fees on the docket, supported
by appropriate case law and the contemporaneous time records,
within
Order.

thirty

(30)

days

of

the

date

of

this

Memorandum

Plaintiff’s opposition will be due fourteen (14) days

thereafter.

Defendant’s reply, if any, may be filed within

seven (7) days of the opposition.

SO ORDERED.

/s/ JOANNA SEYBERT______
Joanna Seybert, U.S.D.J.
Dated:

and

August
2 , 2013
Central Islip, NY

28