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Bishop v. Equinox Int'l Corp.

United States Court of Appeals for the Tenth Circuit

September 4, 1998, Filed

No. 97-5161 & 97-5167


 [***1949]   [*1221]  LUCERO, Circuit Judge.

This appeal arises out of a trademark infringement and unfair competition action filed by James S. Bishop against Equinox International Corporation ("Equinox"), alleging a violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). We consider for this Circuit whether an accounting of profits pursuant to 15 U.S.C. § 1117(a) requires proof of actual damages.

Following a bench trial, the district court concluded that a likelihood of confusion existed and enjoined [**2]  Equinox from the use of [***1950]  Bishop's "Essence of Life" trademark. In addition, the district court determined that the circumstances of the case were exceptional, and awarded attorney fees to Bishop. Both parties are dissatisfied with the result. Bishop contends that he is entitled to an accounting of profits. Equinox, in contrast, asserts that Bishop abandoned his trademark and, alternatively, that the attorney fee award was an abuse of discretion. Because we conclude that an accounting of profits pursuant to § 1117(a) does not require a showing of actual damages, we reverse and remand.

James Bishop sells a product described as "a mineral electrolyte solution in both liquid and capsule form" under the name "Essence of Life." Appellant's App. at 37 (Dist. Ct. Findings of Fact, P 5). 1 In 1988, Bishop registered this name with the United States Patent and Trademark Office ("PTO"). He subsequently filed an Affidavit of Continuing Use with that office pursuant to 15 U.S.C. § 1058(a).

 [**3]  In 1995, Bishop discovered that Equinox was marketing a dietary supplement under the name "Equinox Master Formula Essence of Life Liquid Mineral Complex." He informed Equinox that it was infringing on his trademark and requested that it cease and desist from further infringement. In response, Equinox's attorney informed Bishop that it had "decided to replace the phrase 'Essence of Life' on its Equinox Master Formulas product." Appellant's App. at 61.

Equinox, however, continued its use of the mark. Bishop filed suit seeking injunctive relief, damages, an accounting of profits, and attorney fees. The district court granted Bishop's application for a permanent injunction against use of its "Essence of Life" mark by Equinox, but, finding no actual damages, denied his request for monetary relief. The trial court also concluded that Equinox's refusal to honor its cease and desist commitment justified an award of attorney fees.

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154 F.3d 1220 *; 1998 U.S. App. LEXIS 21614 **; 47 U.S.P.Q.2D (BNA) 1949 ***; 1998 Colo. J. C.A.R. 4790

JAMES S. BISHOP, d/b/a Essence of Life, Plaintiff - Appellant and Cross-Appellee, v. EQUINOX INTERNATIONAL CORP., a Nevada corporation, Defendant - Appellee and Cross-Appellant.

Prior History:  [**1]  Appeal from the United States District Court for the Northern District of Oklahoma. (D.C. No. 96-CV-6-E). D.C. Judge JAMES O. ELLISON.

Disposition: Denial of an award of profits REVERSED and REMANDED. District court's determination that Bishop did not abandon his trademark, as well as the award of attorney fees AFFIRMED.


profits, infringement, district court, trademark, actual damage, fact finding, abandonment, accounting, willful, attorney's fees, damages, cease, trademark infringement, deliberate, equitable, monetary

Antitrust & Trade Law, Clayton Act, Defenses, Trademark Law, Registration Procedures, Federal Registration, Federal Registration as Evidence, Robinson-Patman Act, Civil Procedure, Appeals, Standards of Review, Clearly Erroneous Review, Criminal Law & Procedure, Defenses, General Overview, Causes of Action Involving Trademarks, Infringement Actions, Abandonment, Business & Corporate Compliance, Intentional Abandonment, Intentional Nonuse, Remedies, Equitable Relief, Equitable Accountings, Damages, Copyright Law, Types of Damages, Infringement Profits, Profits, Abuse of Discretion, De Novo Review, Private Actions, Costs & Attorney Fees, Clayton Act, Attorney Fees & Expenses, Basis of Recovery, Statutory Awards, Costs & Attorney Fees