Incontestable Status of Mark Found Generic Does Not Prevent Exceptional Case Attorney Fees

REACTIVEGeoDynamics sued DynaEnergetics for trademark  infringement of GeoDynamics’ REACTIVE trademark. GeoDynamics owned U.S. Trademark Registration No. 3,496,381 for the REACTIVE mark. After a bench trial the court found that REACTIVE was generic for the goods of fracturing charges for use in oil and gas wells and ordered the registration cancelled.

The defendant moved for fees and the court agreed that GeoDynamic’s trademark case was exceptional based on the weakness of its case. GeoDynamic asserted that the case was not exceptional because, among other reasons, the REACTIVE mark had achieved incontestability status at the USPTO. The court rejected that view. The incontestability status was not a bar to finding the case was exceptional.

Incontestability is somewhat misleading because “incontestability” is only achieved with respect to some grounds on which the registration can be attacked. 15 U.S.C. §1065. But a registration can always be attacked based on the allegation that the mark is generic. 15 U.S.C. §1065(4); 15 U.S.C. §1064(3).

The court found that GeoDynamics trademark case was exceptional because (1) its witnesses admitted the phrases “reactive liner charge” and “reactive charge” was generic for goods in question (2) GeoDynamics did not provide a meaningful analysis of the likelihood of confusion factors, and (3) Geo Dynamics did not provide any evidence that the defendant used the mark since the lawsuit was filed in 2015. On the last point the court said, “Without such evidence of continued use [after the suit was filed], it was unreasonable for GeoDynamics to pursue its trademark claim solely for an injunction with such an objectively weak infringement position.”

Citation: GeoDynamics Inc., v. DynaEnergetics US, Inc., No. 2:15-CV-01546 (E.D. TX Dec. 21, 2017).