Tamko Roofing Products, Inc. v. Ideal Roofing Company, Ltd.

Tamko Roofing Products, Inc. (Tamko) (plaintiff) manufactured asphalt-roofing products. Tamko marketed its roofing products under the name “Heritage,” and registered 10 trademarks relating to the name Heritage with the United States Patent and Trademark Office. One of Tamko’s marks was “The American Heritage Series,” written in a cursive script. Ideal Roofing Company, Ltd. (Ideal) (defendant) manufactured metal-roofing products. Ideal developed a metal-roofing product that competed directly with Tamko’s asphalt-roofing product for steep-slope roofs. After attending a tradeshow where Tamko’s Heritage mark was displayed, Ideal decided to call its new product “Heritage Series.” Ideal’s Heritage Series mark was written in a cursive script very similar to the style of Tamko’s The American Heritage Series mark. Ideal instructed its attorneys to not conduct a trademark search before adopting the Heritage Series mark. Tamko sued Ideal for trademark infringement. Before trial, the district court issued a preliminary injunction that enjoined or prevented Ideal from using the Heritage Series mark. Despite the court’s order, Ideal continued to use the Heritage Series mark on brochures and on Ideal’s website, and Ideal was found in contempt of the preliminary-injunction order. At trial, the jury found for Tamko, finding that Ideal had willfully infringed Tamko’s trademarks. The district court: (1) awarded attorneys’ fees to Tamko and (2) issued a permanent injunction against Ideal’s use of the words Heritage, Heritage Series, H Series, or other names similar to Heritage. Ideal appealed. On appeal, Ideal argued that an award of attorneys’ fees under the Lanham Act was not appropriate absent evidence of deceitfulness.