East Iowa Plastics, Inc. Plaintiff- Appellee
PI, Inc. Defendant-Appellant
Submitted: March 13, 2018
from United States District Court for the Northern District
of Iowa - Waterloo
GRUENDER, BEAM, and KELLY, Circuit Judges.
trademark dispute returns to us after proceedings on remand.
In the previous appeal, E. Iowa Plastics, Inc. v. PI,
Inc., 832 F.3d 899 (8th Cir. 2016), we asked the
district court to address state-law questions pertaining to
the availability of attorney's fees and the ownership of
a contested trademark. Id. at 907-08. The district
court entered orders on those questions, and this appeal
underlying facts are more fully laid out in our first
opinion. Id. at 901-02. As relevant to the present
appeal, the parties in this case-East Iowa Plastics (EIP) and
PI-both purchased manufacturing equipment from a company
called KenTech. KenTech manufactured plastic goods for the
poultry industry using injection molding (hot liquid plastic
injected into a mold) and thermoforming (heated plastic sheet
pressed into a shape by a mold). KenTech's products
included chicken coops, egg baskets (used to make the
containers eggs are sold in at the grocery store), and egg
flats (used to transport eggs before they are packaged for
sale). KenTech's poultry products were branded with a
registered trademark: PAKSTER.
was getting out of the poultry business, and was looking to
sell its poultry products. First, EIP entered into a written
asset purchase agreement (APA) to buy KenTech's
thermoform production equipment. The APA also transferred
ownership of the PAKSTER mark to EIP, but KenTech retained an
irrevocable license to use the mark "in connection with
the production and sale of injection molded plastic
products." A short time later, KenTech sold its
injection molds for chicken coops and egg baskets to PI,
along with sundry completed products including egg flats.
There was no written contract of sale between KenTech and PI,
and KenTech did not expressly assign PI its PAKSTER license.
However, the injection molds that PI bought from KenTech were
inscribed with the PAKSTER mark. About a year after acquiring
KenTech's molds, PI bought injection molds for egg flats
from a different company.
years passed. During that time, EIP's registration of the
PAKSTER mark lapsed. Some time afterward, PI applied to
register "PAKSTER" with the United States Patent
and Trademark Office (PTO). As part of its application, PI
falsely certified that no other person or entity was using
the PAKSTER mark. PI and EIP maintained peaceful coexistence
for several years, which came to an end when a proposed deal
for EIP to acquire PI's injection molds fell through.
sued PI under the Lanham Act for trademark infringement and
unfair competition. See 15 U.S.C. § 1125(a).
EIP also sought a declaration that PI's registration of
the PAKSTER mark was invalid. PI counterclaimed for other
Lanham Act violations. After a trial, the district court
found that PI had defrauded the PTO by falsely certifying
that it was the only company using the PAKSTER mark. The
court also found that, although PI had acted in bad faith,
EIP had not proved any resulting damages. The district court
then cancelled PI's registration of the PAKSTER mark and
awarded EIP $585, 000 in attorney's fees under the Lanham
Act. See 15 U.S.C. § 1117(a).
first appeal, we concluded that EIP lacked standing to seek
cancellation of PI's mark because EIP had failed to
establish any damages. E. Iowa Plastics, 832 F.3d at
903-06. Accordingly, we vacated the cancellation.
Id. at 906. As to attorney's fees, we determined
that EIP's lack of standing on the cancellation issue
meant that it was not a "prevailing party, " and so
was not entitled to Lanham Act fees. See id. at
remanded two state-law questions to the district court. We
asked the district court to address EIP's claim that it
was entitled to attorney's fees under state law, and to
clarify the scope of the parties' interests in the
PAKSTER mark (a question of state contract law). Id.
remand, the parties agreed that Iowa law applied. The
district court determined that EIP was entitled to $400, 000
in Iowa common law attorney's fees. E. Iowa
Plastics, 2016 WL 7406705, at *2 (N.D. Iowa Dec. 9,
2016). The district court also found that EIP was
the owner of the PAKSTER mark, and that PI owned a license
"to use or sell only the product of the
[injection] molds, egg flats, [and] nothing more."
E. Iowa Plastics, 2016 WL 6650848, at *2 (N.D. Iowa
Nov. 9, 2016). PI appeals.