U.S. Supreme Court Holds that “Willful” Infringement is not Required to Recover a Trademark Infringer’s Profits

The Lanham Act, 15 U.S.C. section 1125, is the U.S. law under which most federal trademark lawsuits are filed.  The typical lawsuit for trademark infringement arises for violations of section 1125(a).  Other trademark violations such as illegal importation, dilution, and cyberprivacy violations are covered by different subsections (b, c, & d, respectively).    Section 1117 sets forth… Continue Reading U.S. Supreme Court Holds that “Willful” Infringement is not Required to Recover a Trademark Infringer’s Profits

The Lanham Act, 15 U.S.C. section 1125, is the U.S. law under which most federal trademark lawsuits are filed.  The typical lawsuit for trademark infringement arises for violations of section 1125(a).  Other trademark violations such as illegal importation, dilution, and cyberprivacy violations are covered by different subsections (b, c, & d, respectively).   

Section 1117 sets forth the damages that a plaintiff can obtain in a lawsuit for trademark infringement.  Under section 1117(a), a prevailing plaintiff may recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.  However, this section states that and infringement must be “willful” to recover such damages for trademark dilution under section 1125(c).  In 2020, in the case of Romag Fastners, Inc. v. Fossil, Inc., 590 US ___ (2020), the U.S. Supreme Court answered the following question concerning trademark damages in lawsuits that are not for dilution: 

Does Section 35 of the Lanham Act require a showing of willful infringement for a plaintiff to be awarded an infringer’s profits for a violation of Section 43(a)?  

In a unanimous opinion drafted by Neil Gorsuch, the Supreme Court answered with an unequivocal “no.”  As a result, a prevailing plaintiff under section 1125(a) is entitled to recover the defendant’s profits without having to show a “willful violation.”  The only exception is that a prevailing party under section 1125(c) for trademark dilution must still prove a willful violation to obtain these damages.  

Leave a Reply