## Facts

- Tamko Roofing Products, Inc. manufactured asphalt roofing products and used the “Heritage” mark since 1975, developing and registering multiple “Heritage”-family marks in the United States and Canada.
- Ideal Roofing Company, Ltd., a Canadian manufacturer of metal roofing and siding sold in Canada and the United States, selected “Heritage Series” in 1997 for a new product line.
- Ideal’s “Heritage Series” presentation used cursive script similar to Tamko’s “The American Heritage Series” mark.
- Tamko objected and pursued enforcement, including cease-and-desist demands and Lanham Act litigation.
- The district court entered a preliminary injunction barring Ideal’s use of “Heritage”; Ideal continued distributing materials bearing the mark, resulting in a contempt order.
- After a six-day jury trial, the jury found (i) trademark infringement, (ii) willful infringement by clear and convincing evidence, and (iii) direct competition between the parties’ roofing products.
- The district court awarded Tamko an accounting of Ideal’s profits, attorneys’ fees under 15 U.S.C. § 1117(a), and a permanent injunction barring use of “Heritage,” “Heritage Series,” “H Series,” or confusingly similar marks.

## Issues

1. Whether attorneys’ fees under 15 U.S.C. § 1117(a) require proof of bad faith or fraud, or whether willful infringement may suffice to render a case “exceptional.”
2. Whether the district court erred in awarding an accounting of Ideal’s profits and in applying § 1117(a) standards, including burdens regarding sales and deductions.
3. Whether the district court abused its discretion by denying a mistrial after references at trial to the preliminary injunction and contempt order.
4. Whether the permanent injunction was impermissibly broad, including by reaching beyond Tamko’s registered marks, and whether the “safe distance” rule justified its scope.

## Decision

- The First Circuit affirmed the judgment in all respects.
- The court held that willful infringement may support an “exceptional case” fee award under § 1117(a) when the trial court considers the full equities; bad faith or fraud is not a categorical prerequisite.
- The court upheld the profits award, rejecting limitations that would materially restrict profit accountings as a Lanham Act remedy.
- The court found no abuse of discretion in denying a mistrial based on trial references to the preliminary injunction and contempt, including because Ideal contributed to the admission of some of that evidence.
- The court upheld the breadth of the permanent injunction, including restrictions extending to confusingly similar variations, under the “safe distance” rule.

## Legal Principles

- Under 15 U.S.C. § 1117(a), a case may be “exceptional” for attorneys’ fees based on willful infringement when the court evaluates all facts and equitable considerations; proof of bad faith or fraud is not invariably required.
- For a profits accounting under § 1117(a), the plaintiff bears the burden to prove the defendant’s sales; the defendant bears the burden to prove costs and deductions.
- When the defendant controls the most reliable sales evidence and fails to produce adequate corroboration, the factfinder may accept a reasoned sales basis supported by the record, including discovery responses.
- A trial court’s mistrial ruling based on allegedly prejudicial evidence is reviewed for abuse of discretion; “door-opening” by the moving party and limiting management of prejudice support denial.
- An adjudicated trademark infringer may be enjoined under a “safe distance” approach that bars not only the specific infringing mark but also confusingly similar variations to prevent recurrence and consumer confusion.

## Conclusion

The First Circuit sustained Lanham Act remedies for willful trademark infringement, confirming that willfulness can justify an “exceptional case” fee award, that profits accountings follow the statutory burden allocation for sales and deductions, that mistrial relief is discretionary, and that broad “safe distance” injunctions may bar confusingly similar mark variants after proven infringement and noncompliance.


Tamko Roofing Prods., Inc. v. Ideal Roofing Co., 282 F.3d 23 (1st Cir. 2002)