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Supreme Court Gives Trademark Owners Powerful Tool to Pursue Infringers

October 6, 2020

In a unanimous decision the Supreme Court lowered the burden of proof for a trademark owner to obtain an infringer’s profits. In the matter of Romag Fasteners, Inc. v. Fossil, Inc., et al., 140 S.Ct. 1492 (2020) the Court held that proof of willful trademark infringement is not a precondition to a recovery of the infringer’s profits under 15 U.S.C. 1125(a) of the Lanham Act, resolving a Federal Circuit Court split. This is an important decision for trademark owners, because, as plaintiffs, they often have a difficult time proving other forms of damages.  Fossil, Inc. (“Fossil”) and Romag Fasteners, Inc. (“Romag”) entered into an agreement allowing Fossil to use Romag’s magnetic fasteners on its products. Romag discovered that the manufacturers Fossil had hired to make its products were using counterfeit Romag fasteners. Romag brought a trademark infringement claim under 15 U.S.C. 1125(a) against Fossil where a jury sided with Romag and found that Fossil acted with “callous disregard” in infringing Romag’s trademark and falsely representing its products as Romag’s. The jury, however, did not believe the infringement was done willfully, which was required for an award of the Fossil’s profits. The finding was affirmed by the Federal Circuit Court, and appealed to the Supreme Court. By comparing the relevant section of the federal Lanham Act with other sections where willfulness was explicitly required, the Court unanimously agreed that it should not “read into the statute words that aren’t there.” Because a willfulness standard makes relevant the defendant’s state of mind, the Court reasoned that the absence of such a mens rea requirement in the statute is particularly telling.Removing willfulness as a precondition to recovering a trademark infringer’s profits for an infringement claim under 15 U.S.C. 1125(a) is a win for trademark owners seeking damages. While willfulness is still an important consideration, it is no longer required. With trademarks owners having a duty to police and enforce their marks, having more easily provable damages can deter infringement.  If you believe someone is infringing your trademark, you should contact Shuttleworth & Ingersoll to determine whether action is appropriate.

Attorney Author

Elizabeth L. Souer


Betsy L. Souer represents companies and individuals in matters relating to intellectual property, real estate, and business as an Associate Attorney at Shuttleworth & Ingersoll. Betsy draws on her experience as an engineer in manufacturing and her real estate background.

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