## Facts

- James S. Bishop sold a mineral-electrolyte dietary supplement under the trademark “Essence of Life,” registered in 1988, and later filed an affidavit of continuing use under 15 U.S.C. § 1058(a).
- Equinox International Corporation marketed nutritional supplements, including a product labeled “Equinox Master Formula Essence of Life Liquid Mineral Complex.”
- After learning of Equinox’s use, Bishop demanded Equinox cease using “Essence of Life.”
- Equinox’s counsel stated Equinox had decided to replace the phrase, but Equinox continued using it.
- Bishop sued under Lanham Act § 43(a), seeking an injunction, damages, an accounting of profits, and attorney’s fees.
- After a bench trial, the district court found a likelihood of confusion and permanently enjoined Equinox, but denied all monetary relief (including profits) for lack of proof of actual damages; it also found the case “exceptional” and awarded Bishop attorney’s fees.

## Issues

1. Whether a prevailing trademark plaintiff must prove actual damages to obtain an accounting of the defendant’s profits under 15 U.S.C. § 1117(a).
2. Whether Bishop abandoned the “Essence of Life” mark, barring relief.
3. Whether the district court abused its discretion by finding the case “exceptional” and awarding attorney’s fees under § 1117(a).

## Decision

- The court reversed the denial of an accounting of profits and remanded for reconsideration under § 1117(a) consistent with equitable principles.
- The court rejected Equinox’s abandonment defense.
- The court affirmed the permanent injunction and affirmed the attorney’s fee award.

## Legal Principles

- Under 15 U.S.C. § 1117(a), “defendant’s profits” and “damages sustained by the plaintiff” are distinct remedies; profits are not categorically conditioned on proof of actual damages.
- A profits award under § 1117(a) is “subject to the principles of equity” and may serve to deter infringement, prevent unjust enrichment, and, where appropriate, compensate the plaintiff even when damages are not quantified.
- Abandonment requires nonuse coupled with intent not to resume; evidence of continued registration-related filings and ongoing commercial use may defeat an abandonment defense.
- Attorney’s fees may be awarded to the prevailing party in “exceptional cases” under § 1117(a); the determination is reviewed for abuse of discretion and may be supported by knowing or willful infringing conduct.

## Conclusion

The Tenth Circuit held that lack of proven actual damages does not bar disgorgement of an infringer’s profits under the Lanham Act; it remanded for an equitable assessment of profits while leaving the injunction and attorney’s fee award in place and rejecting the abandonment defense.


Bishop v. Equinox Int’l Corp., 154 F.3d 1220 (10th Cir. 1998)