United States District Court, D. Massachusetts
MEMORANDUM AND ORDER ON PLAINTIFF'S MOTION FOR
DENNIS SAYLOR IV, District Judge.
a motion for attorneys' fees, arising out of a protracted
trademark infringement action against a pro se
defendant. Plaintiff CrossFit, Inc., a fitness-training
company, filed suit against defendant Donny Mustapha, who
runs the CrossTrain Sports Club in North Chelmsford,
Massachusetts. The complaint asserted four claims:
(1) trademark infringement under the Lanham Act; (2) false
designation of origin under the Lanham Act; (3) trademark
dilution under the Lanham Act; and (4) violation of Mass.
Gen. Laws ch. 93A.
September 2013, the Court entered a preliminary injunction
enjoining Mustapha from using the "CrossFit" mark
and any substantially similar variation. In July and August
2014, both parties moved for summary judgment. CrossFit moved
for summary judgment on its trademark infringement claim,
contending that Mustapha's use of the marks
"CrossFit, " "CrossBox, "
"CrossKick, " and "CrossTrain" infringed
on its trademark as a matter of law. It also moved for
summary judgment on its Chapter 93A claim. Mustapha moved for
summary judgment solely on the ground that CrossFit's
claims were barred by the doctrine of unclean hands.
Court denied Mustapha's motion for summary judgment. It
granted CrossFit's motion for summary judgment as to its
infringement claim for Mustapha's use of the
"CrossFit" mark. However, the Court, denied
CrossFit's motion as to its infringement claims for the
"CrossBox", "CrossKick", and
"CrossTrain" marks (the "new marks"),
concluding that CrossFit had not established a likelihood of
confusion as a matter of law. The Court granted summary
judgment for CrossFit on its Chapter 93A claim, but concluded
that a trial was necessary for damages purposes to determine
whether Mustapha acted willfully.
then moved for an entry of judgment, stating that it intended
to proceed before the Trademark Trial and Appeal Board
("TTAB") in order to oppose Mustapha's
application for the "CrossBox" mark. Specifically,
CrossFit requested that the Court (1) enter judgment on the
trademark infringement claim for the "CrossFit"
mark (Count One) and the Chapter 93A claim (Count Four), (2)
convert the existing preliminary injunction into a permanent
injunction, and (3) award CrossFit statutory damages pursuant
to 15 U.S.C. § 1117(c). CrossFit agreed to dismiss its claims
for trademark infringement as to the new marks, its claim for
treble damages under Chapter 93A, and its claims for Lanham
Act false designation (Count Two) and trademark dilution
Court granted that motion and entered judgment against
Mustapha on CrossFit's Chapter 93A claim and its
trademark infringement claim for the "CrossFit"
mark. The Court also converted the preliminary injunction
into a permanent injunction and awarded CrossFit $10, 000 in
statutory damages under the Lanham Act for partially
prevailing on its trademark infringement claim. The Court
dismissed Counts Two and Three, as well as the trademark
infringement claim concerning the new marks.
has now moved to recover the fees and costs that it incurred
in prosecuting its Chapter 93A claim and its related
trademark infringement claim. Specifically, CrossFit is
seeking attorneys' fees in the amount of $510, 846.85,
and costs in the amount of $24, 016.45, for the two law firms
and eighteen attorneys that litigated the case. For the
following reasons, CrossFit's motion will be granted in
the amount of $253, 897.53 ($229, 881.08 in attorneys'
fees and $24, 016.45 in costs), and otherwise denied.
relevant facts are set forth in the Court's November 16,
2015 summary judgment order and its February 11, 2016 order
entering judgment. The following background is provided only
for summary purposes.
Inc., is a fitness-training company. The trademark for the
"CrossFit" trade name and service mark used in
connection with fitness-training services, Registration No.
3, 007, 458, was issued on October 18, 2005.
CrossTrain Sports Club is a fitness facility in Chelmsford
that is owned by Donny Mustapha. In May 2012, Mustapha
contacted CrossFit to determine the process for becoming an
affiliate. At some point between June and October 2012,
Mustapha's club began offering "CrossFit"
classes, although it was not in fact affiliated with
CrossFit. After discovering Mustapha was using the
"CrossFit" mark in 2012, CrossFit sent Mustapha
multiple cease-anddesist letters demanding that he remove all
references to "CrossFit" on the club's website
and promotional materials. In January 2013, CrossFit
discovered that Mustapha was still using the
"CrossFit" mark. CrossFit again demanded that he
immediately cease any use of the name. Mustapha responded by
promising to remove all references to "CrossFit"
from the club's website and advertising materials.
2013, CrossFit discovered that Mustapha had begun to use the
term "CrossFit" again. CrossFit filed this action
on June 21, 2013. The complaint asserted claims for (1)
trademark infringement in violation of the Lanham Act, 15
U.S.C. § 1114(1); (2) false designation of origin in
violation of the Lanham Act, 15 U.S.C. § 1125(a)(1); (3)
trademark dilution in violation of the Lanham Act, 15 U.S.C.
§ 1125(c); and (4) unfair and deceptive trade practices in
violation of Mass. Gen. Laws ch. 93A.
September 2013, the Court granted CrossFit's motion for a
preliminary injunction, enjoining Mustapha from using the
"CrossFit" mark, including any substantially
similar variation, in connection with his fitness-training
the Court entered the preliminary injunction, Mustapha
changed the name of his club from the "Chelmsford Sports
Club" to the "CrossTrain Sports Club." He also
began promoting fitness-training classes that he referred to
as "CrossBox, " "CrossKick, " and
"CrossTrain." He also started using the slogan,
"Fitness isn't a sport it's a lifestyle"- a
takeoff on ...