Greenspoon Marder Intellectual Property Blog: Profit Awards in Trademark Cases: Supreme Court to Decide Whether Willfulness Is Required

Intellectual Property Blog Jul 1, 2019 Scottsdale, AZ

On June 28, 2019, the United States Supreme Court granted certiorari to Romag Fasteners, Inc. v. Fossil, Inc., a case involving the question of whether profit awards in trademark cases require evidence that the infringer acted “willfully.”

Romag, a manufacturer of magnetic snaps and fasteners, first sued Fossil, a fashion accessory brand, in 2010 for patent and trademark infringement in the United States District Court for the District of Connecticut. Following trial, the jury found Fossil liable for patent and trademark infringement, but did not find that Fossil acted “willfully.” The jury awarded Romag $156,000 for patent infringement and $6.7 million of Fossil’s profits for trademark infringement, but the district court judge reversed the profits award, holding that “willfulness” was required for an award of profits. The Federal Circuit Court of Appeals affirmed.

Now, Romag has petitioned the Supreme Court to decide the question of whether willful infringement is a prerequisite for an award of infringer’s profits under the Lanham Act. As Romag noted in its petition, there is a split among the circuit courts on this issue, making this issue appropriate for the Supreme Court to decide.

This is a particularly important question because the Lanham Act does not have a “state-of-mind” provision, allowing a profits award irrespective of the infringer’s intent.

About Greenspoon Marder

Greenspoon Marder LLP is a full-service law firm with over 225 attorneys and more than 20 office locations across the United States. With operations from Miami to New York and from Denver to Los Angeles, our firm attracts some of the nation’s top talent in key markets and innovation hubs. Our core practice areas include Real Estate, Litigation, and Transactional Services, complemented by the capabilities of a full-service firm. Greenspoon Marder has maintained a spot on The American Lawyer’s Am Law 200 as one of the top law firms in the U.S. since 2015, and our goal is to provide exceptional client service by developing a thorough understanding of each client’s business needs and objectives in order to provide strategic, cost-effective solutions.

MEDIA CONTACT

Natalie Villanueva, Director of Marketing
954.333.4308 | [email protected]

This Greenspoon Marder LLP Client Alert is issued for informational purposes only and is not intended to be construed or used as general legal advice nor a solicitation of any type. Please contact the author(s) or your Greenspoon Marder LLP contact if you have any questions regarding the currency of this information. The hiring of a lawyer is an important decision. Before you decide, ask for written information about the lawyer’s legal qualifications and experience.

Previous Next

Intellectual Property Blog

Greenspoon Marder Intellectual Property Blog: Profit Awards in Trademark Cases: Supreme Court to Decide Whether Willfulness Is Required

Share

News & Events

News & Events