The opinion of the court was delivered by: Norma L. Shapiro, S.J.
Plaintiff The Ritz Hotel, Ltd. ("RHL"), filed for declaratory relief against Shen Manufacturing Co., Inc. ("Shen") for trademark infringement under the Lanham Trade-Mark Act ("Lanham Act"). Shen filed counterclaims against RHL for trademark infringement and fraud the Lanham Act together with supplemental state-law claims for fraud and trademark violations. Shen's Motion for Reconsideration of the court's grant of summary judgment on count III of Shen's amended counterclaim under § 38 of the Lanham Act, 15 U.S.C. § 1120, for use of a fraudulently procured trademark, will be granted in part and denied in part.
Count III of Shen's amended counterclaim, under § 38 of the Lanham Trademark Act ("Lanham Act"), 15 U.S.C. § 1120,*fn1 is for damages arising from RHL's alleged fraudulent procurement of five United States trademark registrations: 1,980,522--RITZ for cutlery ("the '522 mark"); 2,669,712--RITZ ESCOFFIER for food products ("the '712 mark"); 2,788,043--RITZ PARIS for cosmetics ("the '043 mark"); 2,728,529--RITZ PARIS with crest design for fabrics ("the '529 mark"); and 2,895,080--RITZ PARIS for linoleum and wall coverings ("the '080 mark"). The court's memorandum and order of March 9, 2009, (paper no.78) ("Memorandum") granted summary judgment on count III of Shen's amended counterclaim. Shen's § 38 claims against the '522, '712, and '043 marks were found time-barred, and its claims against the '529 and '080 marks were held moot because RHL had voluntarily withdrawn those registrations.*fn2
Before the court is Shen's timely motion for reconsideration of the denial of its § 38 claims.
II. MOTION FOR RECONSIDERATION
Reconsideration serves to correct manifest errors of law or fact. Harsco Corp. v. Zlotnicki, 779 F.2d 906 (3rd Cir. 1985). A court should grant a motion for reconsideration only if there is: 1) newly available evidence; 2) an intervening change in controlling law; or 3) a need to correct a clear error of fact or to prevent manifest injustice. Haymond v. Lundy, 205 F. Supp. 2d 390, 395 (E.D. Pa. 2002). "Motions for reconsideration are not to be used to reargue or relitigate matters already decided." Id.
Shen asserts two material errors of fact in the Memorandum: 1) the court erroneously assumed that RHL's withdrawal of the '529 and '080 marks mooted Shen's § 38*fn3 claims regarding those registrations; and 2) the court failed to address Shen's claim under § 38 for damages resulting from RHL's allegedly fraudulent renewal of the § 522 mark in 2006. Shen also asserts two material errors of law: 1) the court was wrong both as a matter of statutory interpretation and fairness in holding that under § 22, 15 U.S.C. § 1072,*fn4 the statute of limitations for a § 38 claim regarding an allegedly fraudulently procured registration runs from the day the PTO issues that registration, even when the registration was issued to a foreign registrant under § 44, 15 U.S.C. § 1126, solely on the basis of an intent to introduce the associated goods into United States commerce at a later date; and 2) the statute of limitations for a § 38 claim relating to an allegedly fraudulent procurement governed by Pennsylvania law was six years, not two.*fn5
A. Shen's § 38 Claim for Damages From the 2006 Renewal of the '522 Mark
The Memorandum dismissed Shen's § 38 claim regarding the '522 mark as time-barred without addressing damages Shen claims from RHL's allegedly fraudulent renewal of the '522 mark in 2006. Shen is correct that "procure[ment]" within § 38 includes maintaining a registration under § 8, 15 U.S.C. § 1058, or renewing a registration for another 10-year period under § 9, 15 U.S.C. § 1059; the '522 mark's renewal in 2006 could give rise to a viable § 38 claim if the United States Patent and Trademark Office ("PTO") had renewed the registration as a result of a false or fraudulent § 9 filing by RHL.
However, Shen's § 38 claims remain insufficient for lack of recoverable damages. Litigation costs and attorneys' fees are not available as damages under § 38. There is no precedent on point in the Third Circuit, but every other circuit that has addressed the issue has denied that § 38 allows an award of litigation costs and attorneys' fees as part of recoverable damages. Exxon Corp. v. Exxene Corp., 696 F.2d 544, 550-51 (7th Cir. 1982); Wrist-Rocket Mfg. Co., Inc. v. Saunders Archery Co., 578 F.2d 727, 734 (8th Cir. 1978); Blue Bell, Inc. v. Jaymar-Ruby, Inc., 497 F.2d 433, 439 (2nd Cir. 1974).*fn6
The only other damages Shen pleaded in its § 38 claims stem from its alleged inability to obtain a RITZ trademark registration for cookware and the consequent loss of projected revenue from not being able to market RITZ-branded cookware. This injury is too speculative for an award of damages in a fraud claim. See Steamfitters Local Union No. 420 Welfare Fund v. Philip Morris, Inc., 171 F.3d 912, 935 (3rd Cir. 1999); Crawford v. Pituch, 84 A.2d 204, 207 (Pa. 1951) ("The damages recoverable are only such as can be said to have been the immediate and proximate consequences of the deceit practiced upon the plaintiffs.")
The court wrongfully dismissed Shen's § 38 claim regarding the '522 mark as entirely time-barred; Shen's claim concerning RHL's 2006 renewal of the mark was timely. However, the error was not material as Shen has neither ...