166 F.

3d 182
49 U.S.P.Q.2d 1444

SECURACOMM CONSULTING INC.

v.
SECURACOM INCORPORATED; Kuwam Corporation; Wirt
D. Walker, III,
v.
Ronald S. Libengood
Securacom Incorporated
v.
Ronald S. Libengood; Clifford J. Ingber Securacom
Incorporated; Kuwam Corporation; Wirt D. Walker,
III, Appellants
No. 97-5794.

United States Court of Appeals,

Third Circuit.
Argued June 26, 1998
Decided Jan. 20, 1999.

Arthur E. Newbold (ARGUED), Michael Doluisio Dechert, Price &

Rhoads, Philadelphia, PA, Attorney for Appellants.
Howard N. Aronson (ARGUED), Robert B. Golden, Lackenbach, Siegel,
Marzullo, Aronson & Greenspan, P.C. Scarsdale, New York, Attorneys
for Appellees.
Before: GREENBERG, ALITO, and MCKEE, Circuit Judges,
OPINION OF THE COURT
ALITO, Circuit Judge:

In this trademark infringement case, we are required to consider whether the

District Court erred when it awarded the plaintiffs a percentage of the profits of

the defendant corporation and then trebled that award and also assessed
attorneys' fees. Central to these awards was the District Court's finding that the
defendant corporation had willfully infringed the plaintiff's trademark. Because
we conclude that the evidence does not support a finding of willful
infringement, we reverse and remand for further proceedings.I.
2

In 1980, Ronald Libengood lost his job in the Westinghouse corporate security
department, and he then began a small company that he called SecuraComm
Associates. SecuraComm Associates was a security systems consulting firm
that consulted with clients, surveyed facilities, designed security systems,
managed projects, reviewed bids and evaluations, developed training programs,
and presented security-related workshops. The firm deliberately refrained from
arranging for the purchase and installation of equipment and from providing
maintenance and technical support. The firm took this approach because many
clients insisted on the separation of consulting from installation and support
services so that the advice given would not be affected by conflicts of interest.
Initially, most of SecuraComm Pennsylvania's business consisted of work for
Westinghouse in Western Pennsylvania, but Libengood subsequently developed
other clients in other areas.

Libengood formed the SecuraComm name from the terms "security" and
"communications." When he coined this name, he was unaware of any other
use of the word. All brochures, letters, and correspondence of his company bore
the name SecuraComm Associates.

After losing Westinghouse as a client in 1992, Libengood incorporated his firm

as SecuraComm Consulting, Inc. hereinafter ("SecuraComm Pennsylvania")
and continued to do business through the corporation. Libengood was and is the
president and major shareholder of SecuraComm Pennsylvania. After
incorporation, the business expanded, but SecuraComm Pennsylvania remained
a small company, with average annual revenues between 1992 and 1996 of
slightly more than $250,000 per year. Since its inception, SecuraComm
Pennsylvania has used the SecuraComm mark with Libengood's permission,
and on January 1, 1995, Libengood and SecuraComm Pennsylvania entered
into a formal licensing agreement.

In May 1993, Libengood applied for registration of the word "Securacomm"

without reference to capitalization or stylization. Although the application was
abandoned for a time, Libengood reinstated the application and received a
registration on May 20, 1997. The registration application indicated a first use
on January 1, 1980, and a first use in interstate commerce on September 3,
1981.

The predecessor of the defendant corporation, now called Securacom

Incorporated, was formed by Sebastian Cassetta, and in 1987 this company
became affiliated with the large engineering firm of Burns & Roe. The
company's name was then changed to "Burns & Roe Securacom." In that same
year, Libengood became aware of Burns & Roe Securacom as the result of a
chance event at a conference in Washington, D.C., Libengood saw Cassetta
throw into a fish bowl a business card bearing the name "Burns & Roe
Securacom." Libengood then spoke with Cassetta during lunch, and Cassetta
told him that he knew about Libengood's firm but that his attorneys had
informed him that the similarity in the companies' names would not cause
problems. Cassetta said that the use of "Securacom" preceded by the well
known name "Burns & Roe" was not likely to cause confusion. He also noted
that the two companies served different clienteles, since Burns & Roe
Securacom engaged in upgrading security at overseas embassies and performed
work in the nuclear field. Libengood took no action in response to this
encounter.

In 1992, Burns & Roe Securacom hired Ronald Thomas as its chief executive
officer, and within two days of Thomas's employment, Cassetta was fired. After
Cassetta left, the company he had founded became independent of Burns & Roe
when it received a substantial investment from entities including KuwAm
Corporation, a venture capital firm of which defendant Wirt D. Walker, III, is a
shareholder and officer. The new, independent company expanded its activities
into the full range of security services.

In October 1992, a certificate of amendment was filed in the Delaware

Secretary of State's Office, indicating that Burns & Roe Securacom had
changed its name to Securacom Incorporated (hereinafter "Securacom New
Jersey"). In November 1992, Securacom New Jersey filed a trademark
application with the Patent and Trademark Office for the term "Securacom,
Incorporated" for goods and/or services consisting of "large-scale security and
facility management for businesses and government." This application alleged
that the first use was in November 1992. Securacom New Jersey was denied
federal registration because two other companies--neither of which was
SecuraComm Pennsylvania--had filed applications to register names similar to
"Securacom."

In January 1993, Libengood learned about Securacom New Jersey's name

change, as well as its expanded business base. After consulting with an
attorney, Libengood mailed Securacom New Jersey a cease and desist letter.
Libengood and Thomas attempted to settle the controversy. Libengood
proposed that Securacom New Jersey either (1) change its name and

compensate SecuraComm Pennsylvania for the use of its mark, (2) purchase the
Securacom mark from SecuraComm Pennsylvania, or (3) license the name
from SecuraComm Pennsylvania. These negotiations continued for
approximately one and one-half years until Libengood set a deadline of the end
of 1994.
10

In November 1994, Libengood asked Thomas to share in the cost for appraising
the Securacom mark. Thomas did not respond, and Libengood then went
forward on his own. The appraiser estimated that the value of SecuraComm
Pennsylvania's mark, together with the cost of changing its name, was
$275,000. Libengood provided this appraisal to Thomas in May 1995.

11

In June 1995, Libengood informed Thomas that, since he had received no

response from Securacom New Jersey, he would institute legal proceedings
after 30 days. After some time, Thomas informed Libengood that he would
have to deal with Walker, then the chairman of the board of Securacom New
Jersey. When Libengood spoke with Walker, Walker became abusive and told
Libengood that if he filed suit Walker would bury him financially and take
everything he had.

12

Libengood filed suit against Securacom New Jersey in October 1995, alleging
(1) service mark infringement, in violation of the Lanham Act, 15 U.S.C.
1125; (2) false designation of origin, false description, and unfair competition,
in violation of the Lanham Act, 15 U.S.C. 1125; (3) common law
infringement and unfair competition; and (4) appropriation of name, good will,
and reputation, in violation of N.J.S.A. 56:4-1, 2. In November 1995,
Securacom New Jersey filed an answer and a third party complaint against
Libengood, and in December 1995, Libengood filed a third-party answer,
defenses, and third-party counterclaims. These counterclaims included the
same four causes of action that SecuraComm Pennsylvania had asserted, plus a
fifth count for libel.

13

At the same time, Securacom New Jersey's directors signed a document stating
that Libengood's suit was meritless. The document specifically stated that
Libengood was attempting to extort a payment of $275,000 from Securacom
New Jersey. In November 1995, Walker signed a letter directing Securacom
New Jersey's attorneys (1) to seek summary judgment and Rule 11 sanctions
against Libengood and his attorneys; (2) to file suit against Libengood and his
attorneys for extortion and RICO violations; and (3) to file complaints with
various bar associations against Libengood's attorneys for unethical behavior in
filing suit against Securacom New Jersey. Walker sent a copy of this letter to
Libengood and his attorneys.

14

Securacom New Jersey's attorneys filed suit against Libengood and his attorney
in New Jersey Superior Court in April 1996. This suit was removed to federal
court and consolidated with Libengood's trademark infringement case, and the
District Court dismissed the suit as frivolous. Securacom New Jersey also filed
a service mark infringement suit against SecuraComm Pennsylvania in the
District of Columbia Superior Court, but the District Court in New Jersey
enjoined that action. Finally, the District Court stayed Securacom New Jersey's
petition to cancel Libengood's trademark.

15

In May 1996, SecuraComm Pennsylvania and Libengood amended their

complaints to add KuwAm Corporation and Walker as defendants. In July
1996, SecuraComm Pennsylvania added a libel count to its complaint. In
August 1996, the new defendants filed an amended answer, counterclaims, and
a thirdparty complaint. In addition to alleging various Lanham Act violations
against SecuraComm Pennsylvania, the third-party complaint requested
cancellation of Libengood's trademark registration if such registration occurred.

16

In October 1997, this case was tried before the District Court. At the close of
trial, the Court enjoined Securacom New Jersey's use of the word "Securacom."
The Court found that confusion was likely because of the slight difference
between the companies' businesses, 984 F.Supp. at 298-301, and the Court
noted that this confusion was particularly problematic because it was crucial to
SecuraComm Pennsylvania's business that it refrain from providing the
integrated services that Securacom New Jersey furnished to its clients. Id. at
295-96. The Court also found that actual confusion had occurred on occasion
and that the confusion had prejudiced SecuraComm Pennsylvania. Id. at 296. In
addition, the Court extensively quoted Walker's unfavorable opinions about the
civil justice system. Id. at 291, 293, 293-94, 295.

17

The District Court declined to enter an amount of compensatory damages

because, while it was likely, according to the District Court, that SecuraComm
Pennsylvania had suffered damages, the damages "[could] [ ]not be measured
with reasonable precision." Id. at 303. Then, after finding that an award of
Securacom New Jersey's profits was necessary to "deter[ ] ... the kind of
conduct in which all three defendants ... engaged," the District Court awarded
the plaintiffs 10% of Securacom New Jersey's gross profits. 984 F.Supp. at 303.
The Court trebled this amount based on the "egregious circumstances" of the
case. Id. Finally, the Court awarded attorneys' fees on the ground that
Securacom New Jersey's conduct showed bad faith, fraud, malice, and knowing
infringement. Id. The defendants appealed.

II.

18

In this appeal, Securacom New Jersey does not challenge the District Court's
finding of infringement or the order of injunctive relief. However, Securacom
New Jersey strongly contests the District Court's finding that the infringement
was willful. In addition, Securacom New Jersey challenges (a) the District
Court's award of profits, which was based in large part on the finding of willful
infringement, (b) the trebling of the award of profits, and (c) the award of
attorneys' fees. Securacom New Jersey also argues that Libengood did not have
national trademark rights and that, therefore, the figures the District Court used
to calculate profits were too large. We agree with Securacom New Jersey that
the record does not support a finding of willful infringement, and we therefore
reverse the award of profits, the trebling of the award of profits, and the order
awarding attorneys' fees. We remand the issue of the attorneys' fees to the
District Court for further consideration.

19

Section 35 of the Lanham Act, 15 U.S.C. 1117 provides:

20
When
a violation of any right of the registrant of a mark registered in the Patent and
Trademark Office, or a violation under section 43(a), shall have been established in
any civil action arising under this Act, the plaintiff shall be entitled, subject to the
provisions of sections 29 and 32 and subject to the principles of equity, to recover
(1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs
of the action. The court shall assess such profits or cause the same to be assessed
under its direction. In assessing profits the plaintiff shall be required to prove
defendant's sales only; defendant must prove all elements of cost of reduction
claimed. In assessing damages the court may enter judgment, according to the
circumstances of the case, for any sum above the amount found as actual damages,
not exceeding three times such amount. If the court shall find that the amount of
recovery based on profits is either inadequate or excessive the court may in its
discretion enter judgment for such sum as the court shall find to be just, according to
the circumstances of the case. Such sum in either of the above circumstances shall
constitute compensation and not a penalty. The court in exceptional cases may
award reasonable attorney fees to the prevailing party.
21

Though the standards for (1) awarding profits; (2) determining whether such an
award should be enhanced; and (3) awarding attorneys' fees under the Lanham
Act differ somewhat, the issue of willful infringement is central to each. See
ALPO Petfoods, Inc. v. Ralston Purina Co., 913 F.2d 958, 968 (D.C.Cir.1990)
("an award based on defendant's profits requires proof that the defendant acted
willfully or in bad faith"); 5 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition 30.91 at 30-148 n.6 (4th Ed.1996) (willful
infringement provides usual basis for enhancing profits award) (collecting
cases); Ferrero U.S.A., Inc. v. Ozak Trading, Inc., 952 F.2d 44, 47 (3d

Cir.1991) (showing of bad faith, fraud, malice or willfulness necessary for

award of attorneys' fees).1 Therefore, we will first address the District Court's
finding that Securacom New Jersey willfully infringed SecuraComm
Pennsylvania's mark.
A. Willful Infringement
22

Knowing or willful infringement consists of more than the accidental

encroachment of another's rights. It involves an intent to infringe or a deliberate
disregard of a mark holder's rights. The Second Circuit has aptly described
willful infringement as involving "an aura of indifference to plaintiff's rights"
or a "deliberate[ ] and unnecessar[y] duplicating [of a] plaintiff's mark ... in a
way that was calculated to appropriate or otherwise benefit from the good will
the plaintiff had nurtured." W.E. Bassett Co. v. Revlon, Inc., 435 F.2d 656, 662
(2d Cir.1970) (citation omitted); see also Rolex Watch USA, Inc. v. Meece, 158
F.3d 816, 823 (5th Cir.1998) ("willful infringement carries a connotation of
deliberate intent to deceive.") (quoting Lindy Pen Co. v. Bic Pen Corp., 982
F.2d 1400, 1405 (9th Cir.), cert. denied, 510 U.S. 815, 114 S.Ct. 64, 126
L.Ed.2d 34 (1993)). We agree with Securacom New Jersey that the record in
this case cannot support a finding of willful infringement.2

23

First, we are constrained to conclude that the District Court committed clear
error when it found that "Walker and the company he dominated ... knowingly
infringed [SecuraComm Pennsylvania's] mark ... [f]or years before this action
was commenced." 984 F.Supp. at 303-04. There is no direct evidence in the
record that Securacom New Jersey knew about Libengood and his small firm
before Libengood's cease and desist letter was sent in 1993. Thomas testified
that he first learned about Libengood and his company at that time, and no
direct evidence to the contrary has been called to our attention. Moreover, there
is no circumstantial evidence from which it may reasonably be inferred that
Securacom New Jersey learned about SecuraComm Pennsylvania prior to the
cease and desist letter. It is true that Cassetta knew about Libengood and his
company in 1987, but it is unreasonable under the circumstances to infer that
Cassetta passed on this information to Securacom New Jersey's new
management either directly or indirectly.

24

It is apparent that in 1987 neither Cassetta nor Libengood attached much

significance to the similarities in the companies' names. Cassetta expressed the
opinion that this similarity would not cause problems because his company's
name included the name of the large firm "Burns & Roe" and because the
companies worked in unrelated areas. It is telling that Libengood made no
complaint about Cassetta's company for the next six years. Cassetta's attitude

and Libengood's inaction strongly suggest that neither man thought that the
matter was important. Thus, until at least 1992, Securacom New Jersey
reasonably believed the use of the Securacom mark did not infringe, and "
[i]nfringement is not willful if the defendant might have reasonably thought
that its proposed usage was not barred by the statute." Blockbuster Videos, Inc.
v. City of Tempe, 141 F.3d 1295, 1300 (9th Cir.1998) (internal quotation
omitted).
25

The similarity in the companies' names became potentially more significant in

1992. At that time, Libengood changed the name of his company from
"SecuraComm Associates" to "SecuraComm Consulting Inc." and expanded its
client base. There is no evidence, however, that Cassetta or anyone else at
Securacom New Jersey took notice of these changes. Also in 1992, "Burns &
Roe Securacomm" changed its name to "Securacom Inc.," and the company
expanded its business into new fields, but these events occurred after Cassetta
left. Cassetta was fired two days after Thomas took over, and there is nothing to
suggest that during these final two days Cassetta told Thomas or anyone else
who remained with the firm about Libengood and his company--a matter that,
as noted, had not previously been regarded as troublesome. Under these
circumstances, we see no reasonable basis for inferring that Cassetta directly or
indirectly informed Securacom New Jersey's management about Libengood and
his company.

26

Relying upon the general principle that the knowledge of a corporate officer is
imputed to the corporation, the plaintiffs argue that Cassetta's knowledge of the
existence of SecuraComm Pennsylvania should be imputed to Securacom New
Jersey and that therefore Securacom New Jersey's use of its mark after the
critical events of 1992 cannot be regarded as having been done in good faith.
We reject this argument because we find it inconsistent with the equitable
principles that make the question of willfulness important. Whether Securacom
New Jersey engaged in willful infringement is significant because courts,
looking to "the principles of equity," 15 U.S.C. 1117, have held that a finding
of willfulness or bad faith is important in determining whether to award profits,
enhance damages, and award attorneys fees. See page 186, supra. Under the
circumstances here, plaintiffs' argument regarding imputed knowledge is
inconsistent with the equitable basis of these doctrines. As we have noted,
neither Cassetta nor Libengood seemed concerned about the similarity between
the names of their two companies when Cassetta's company was called "Burns
& Roe Securacom" and the companies served different clienteles. As of the
date of Cassetta's termination, neither of these factors had changed. The
plaintiffs would have us combine what Cassetta knew (but, as far as the record
shows, never passed on to the new management that fired him) with what new

management subsequently knew regarding the company's change in name and

range of services. The plaintiffs cite no direct supporting authority for this
argument, and we find it inequitable under the circumstances present here.
27

Second, we conclude that Securacom New Jersey's failure to conduct a

trademark search is not sufficient to support the finding of willful infringement.
In ISCYRA v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749 (2d Cir.1996), the
Second Circuit stated that an alleged infringer's failure to conduct a full
trademark search after its attorneys advise that such a search is warranted may
evidence willful ignorance akin to willful infringement. But the Second Circuit
emphasized in that case that the infringer's attorneys had specifically advised it
to conduct a full search and that the infringer was aware when it adopted the
mark that it was copying "authentic details" from the plaintiff's design. Id. at
753. In the present case, by contrast, SecuraComm Pennsylvania did not
establish that Securacom New Jersey knew that it was copying SecuraComm's
name. Similarly, there was no evidence that Securacom New Jersey's attorneys
had advised Securacom to conduct a full trademark search. In the absence of
these key details, it is unreasonable to conclude that Securacom New Jersey's
failure to conduct a trademark search established willful ignorance akin to
willful infringement. Rather, as far as the record reflects, Securacom New
Jersey's failure to conduct a search was at most careless. See Fisons
Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 480 (3d Cir.1994);
Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir.1983). And
carelessness is not the same as deliberate indifference with respect to another's
rights in a mark or a calculated attempt to benefit from another's goodwill. See
W.E. Bassett, 435 F.2d at 662. Therefore, Securacom New Jersey's failure to
conduct a trademark search is insufficient to establish that its infringement was
willful or intentional.

28

Third, Securacom New Jersey's failure to stop its use of the Securacomm mark
after receiving Libengood's cease and desist letter does not demonstrate willful
infringement. A defendant's refusal to cease using a mark upon demand is not
necessarily indicative of bad faith. Sands, Taylor & Wood Co. v. Quaker Oats
Co., 978 F.2d 947, 962 (7th Cir.1992), cert. denied, 507 U.S. 1042, 113 S.Ct.
1879, 123 L.Ed.2d 497 (1993). This is particularly true when the trademark at
issue is not registered. Charles Jacquin Et Cie, Inc. v. Destileria Serralles, Inc.,
921 F.2d 467, 472 (3d Cir.1990). When Libengood sent the cease and desist
letter, he did not have a federally registered mark. Libengood instructed
Securacom New Jersey to cease using the Securacomm mark in early 1993,
only ten days after he first filed to register his mark. The registration was not
complete until May 20, 1997. In addition, since Securacom New Jersey had
already been denied a trademark registration for the word "Securacom" because

two other companies had attempted to register similar words, Securacom New
Jersey had a reasonable ground for believing that SecuraComm Pennsylvania
would also be unable to obtain federal registration in the name "Securacomm."
29

In addition to the absence of a federally registered trademark, Securacom New

Jersey had other reasons to believe that it had a legal right to use Securacom.
First, Securacom New Jersey had a reasonable basis for concluding that
Libengood did not have nationwide trademark rights in the mark due to the
localized nature of his business. Additionally, Securacom New Jersey had a
plausible basis for believing that its use of its name was not likely to cause
confusion. As a result, Securacom New Jersey's failure to stop using the
Securacomm mark after receiving Libengood's cease and desist letter does not
support a finding of willful infringement.

30

Finally, we agree with SecuraComm Pennsylvania that neither Walker's views

regarding the civil justice system nor Securacom New Jersey's litigation tactics
support the finding that Securacom New Jersey willfully infringed upon
Libengood's Securacomm mark. See SecuraComm Pennsylvania's Br. at 21 n.
6. There are other, appropriate remedies for abusive litigation tactics. Viewing
all of the evidence together, we conclude that the record is insufficient to show
that Securacom New Jersey willfully infringed upon SecuraComm
Pennsylvania's mark and that the District Court's contrary finding was clearly
erroneous.

B. Defendant's Profits 3
31

Securacom New Jersey argues that the District Court abused its discretion when
it awarded a portion of Securacom New Jersey's profits to SecuraComm
Pennsylvania and then trebled this award.4 The District Court concluded that an
award of 10% of Securacom New Jersey's profits for the years in question was
appropriate to deter a willful infringer such as Securacom New Jersey from
such acts in the future. 984 F.Supp. at 303. The District Court then trebled the
damages because of the "egregious circumstances of this case." Id.

32

Since the evidence does not support a finding that Securacom New Jersey
willfully infringed Libengood's trademark rights, we conclude that the award of
profits was not appropriate in the present case. The Lanham Act permits courts
to award monetary damages to trademark owners as compensation where it is
equitable to do so regardless of the willfulness of the defendant's infringement.
See 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition
30.75 at 30-128 (4th Ed.1996) ("Unlike recovery of defendant's profits,
attorney fees and treble damages, no wrongful intent or state of mind is needed

for the recovery of actual damages [under 15 U.S.C. 1117(a).]"). In this case,
however, the District Court awarded profits to deter defendant's assertedly
egregious misconduct; a plaintiff must prove that an infringer acted willfully
before the infringer's profits are recoverable. George Basch Co. v. Blue Coral,
Inc., 968 F.2d 1532, 1537 (2d Cir.), cert. denied, 506 U.S. 991, 113 S.Ct. 510,
121 L.Ed.2d 445 (1992); see also, 5 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition 30:62, at 30-102 (4th ed.1996).
33

Once monetary damages have been awarded, the Lanham Act permits courts,
under certain circumstances, to enhance the damages. 15 U.S.C. 1117(a)
(1994); see also 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition, 30:90 at 30-146 (4th Ed.1996). Since the evidence at trial did
not support a finding of willful infringement, the award of profits was not
warranted, and trebling the damages was likewise inappropriate. See Caesar's
World, Inc. v. Venus Lounge, Inc., 520 F.2d 269, 273 (3d Cir.1975) (holding
that enhanced damages award was inappropriate where no evidence of actual
damages was adduced; "[t]hree times zero is zero."). We therefore reverse the
award of profits and treble profits.5

C. Attorneys' Fees
34

Securacom New Jersey contends that the District Court improperly exercised its
discretion in awarding attorneys' fees.6 The Lanham Act provides that a court
may award reasonable attorneys' fees to the prevailing party when "exceptional
circumstances" exist. 15 U.S.C. 1117(a). Our Court has interpreted
"exceptional circumstances" to include culpable conduct on the part of the
losing party, such as bad faith, fraud, malice or knowing infringement. Ferrero
U.S.A., Inc. v. Ozak Trading, Inc., 952 F.2d 44, 47 (3d Cir.1991). In this case,
the District Court awarded attorneys' fees to SecuraComm Pennsylvania
because Securacom New Jersey exhibited bad faith, fraud, malice, and knowing
infringement. 984 F.Supp. at 303-04. Since the District Court's finding of
willful infringement appears to be a substantial basis for the award of attorneys'
fees, we are required to reverse and remand on the issue of whether exceptional
circumstances, other than willful infringement, exist warranting an attorneys'
fees award.

III.
35

Because the evidence in the record does not support the finding of willful
infringement, we reverse the award of profits and attorneys' fees. We remand
the issue of attorneys' fees for further consideration.

Willful infringement has a central role in the availability of each of these kinds
of relief because of the relevance of equitable factors in determining their
appropriateness on a given set of facts. See 15 U.S.C. 1117 (1994) (collection
of defendant's profits and award of enhanced damages "subject to principles of
equity"); Champion Spark Plug Co. v. Sanders, 331 U.S. 125, 131, 67 S.Ct.
1136, 91 L.Ed. 1386 (1947) (denying accounting of defendant's profits based
on "equities of the case"); BASF Corp. v. Old World Trading Co., Inc., 41 F.3d
1081, 1096 (7th Cir.1993) (discussing availability of enhanced damages under
heading "equitable remedies"); Rolex Watch USA, Inc. v. Meece, 158 F.3d
816, 826 (5th Cir.1998) (award of enhanced damages limited by "equitable
considerations"); Levi Strauss & Co. v. Shilon, 121 F.3d 1309, 1314 (9th
Cir.1997) (citing to 15 U.S.C. 1117(b) (court may award attorney fees in
"exceptional cases") and noting that "equitable considerations" limit award of
attorney fees)

We review the District Court's finding of willful infringement for clear error.
See ISCYRA v. Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749, 752 (2d Cir.1996);
Ferrero U.S.A., Inc. v. Ozak Trading, Inc., 952 F.2d 44, 48 (3d Cir.1991).
Under this standard, a finding is "clearly erroneous when the reviewing court
on the entire evidence is left with the definite and firm conviction that a
mistake has been committed." Newark Branch, NAACP v. City of Bayonne,
134 F.3d 113, 120 (3d Cir.1997). We do not review the evidence de novo, but
we do consider whether there is enough evidence in the record to support the
District Court's factual findings. Id

When we refer to the District Court's award of profits in this case, we refer to
its award of the defendant corporation's profits, in distinction to an award of
plaintiff's lost profits. The District Court awarded defendant's profits not
plaintiff's profits. See 5 J. Thomas McCarthy, McCarthy on Trademarks and
Unfair Competition 30.57 at 30-95 (noting "semantic confusion" in opinions
discussing monetary recovery under 1117: "the word profits is often used
without revealing whose profits--plaintiff's or infringer's--are being discussed")

The District Court, at one time, described this award as a "royalty" without
engaging in the analysis required to grant such an award. See A & H
Sportswear Co. v. Victoria's Secret Stores, Inc., 967 F.Supp. 1457, 1479
(E.D.Pa.1997). Both parties agree that the District Court's use of the word
"royalty" was likely a shorthand description of Securacom New Jersey's profits.
See Securacom New Jersey's Br. at 37; SecuraComm Pennsylvania's Br. at 30
n. 10

Securacom New Jersey argues that the District Court erred in awarding profits

based on its national profits because Libengood did not have national trademark
rights prior to the federal registration of his mark on May 20, 1997. Because we
conclude that profits were not properly awarded in the present case, we need
not reach this issue
6

The Lanham Act gives the District Court the discretionary power to award
attorneys' fees. 15 U.S.C. 1117(a) (1994). We review the district court's
award of attorneys' fees for abuse of discretion. Ferrero U.S.A., Inc. v. Ozak
Trading, Inc., 952 F.2d 44, 48 (3d Cir.1991)