Supreme Court Clarifies Requirements for Obtaining Trademark Infringer’s Profits

In a rare trademark infringement case considered by the United States Supreme Court, the Court held, in a unanimous decision, that willfulness was not a prerequisite to obtaining an infringer’s profits pursuant to 15 U.S.C. § 1125(a). The opinion resolved a split of the Circuit Courts of Appeal and made clear that although an infringer’s state of mind is relevant to the determination of whether a court should award an infringer’s profits, such an award is permissible even in the absence of a finding of willfulness. 

In Romag Fasteners, Inc. v. Fossil, Inc., Case No. 18-1233, a case that originated in the United States District Court for the District of Connecticut, the Court overturned the District Court’s refusal to award the infringer’s profits to the plaintiff because the jury had not made a finding of willfulness, a decision that had been affirmed by the United States Court of Appeals for the Federal Circuit. The District Court had held that, in accordance with precedent from the United States Court of Appeals for the Second Circuit, an award of an infringer’s profits pursuant to 15 U.S.C. § 1125(a) required a finding of willfulness as set forth in 15 U.S.C. § 1117(a). Several other Circuit Courts of Appeal, including the Tenth Circuit, similarly required a finding of willfulness, while some others, including the Third and Fifth Circuit, have held that willfulness should be considered as a factor but is not a requirement to an award of an infringer’s profits. 

The Supreme Court parsed the language of 15 U.S.C. § 1117(a) and held that while willfulness is a requirement to an award of an infringer’s profits pursuant to 15 U.S.C. § 1125(c), which prohibits the dilution of another’s trademark, the language of 15 U.S.C. § 1117(a) does not require such a finding to award an infringer’s profits pursuant to 15 U.S.C. § 1125(a), which prohibits the false or misleading use of another’s trademark. The Supreme Court did make clear that an infringer’s state of mind is “a highly important consideration in determining whether an award of profits is appropriate,” but it stopped short of reading a willfulness requirement into 15 U.S.C. § 1117(a). 

The Supreme Court’s decision is unlikely to cause a seismic shift in the landscape of trademark infringement litigation. District courts within the circuits that had previously required a finding of willfulness may still place greater weight on the infringer’s state of mind, resting on the Supreme Court’s statement that such a factor is “highly important.” However, the Supreme Court has now given trademark owners another arrow in their quiver as they attempt to protect their intellectual property now that infringer’s can no longer feel safe that their “innocent infringement” will protect them from a court awarding the trademark owner the infringer’s profits as damages. 

Adam B. Marks is a shareholder and member of the firm’s Intellectual Property practice area. He focuses his practice on protecting clients’ intellectual property, including trademarks, through proceedings before the United States Patent and Trademark Office and courts throughout the country. He can be reached at (860) 548-2663 or amarks@uks.com. 

Disclaimer: The information contained in this material is not intended to be considered legal advice and should not be acted upon as such. Because of the fact specific nature of this material, the information provided may not be applicable in all situations and should not be acted upon without legal advice based on the specific factual circumstances.