Willfulness Not Required for Award of Profits in Trademark Infringement

The Supreme Court of the United States issued a ruling that a plaintiff alleging trademark infringement does not have to prove willfulness to recover an award of profits. This ruling came down in the case of Romag Fasteners Inc. (“Romag”), versus Fossil Group, Inc. FKA Fossil, Inc. et. al (“Fossil”).

In this case, Romag and Fossil entered into an agreement to use Romag’s fasteners on Fossil’s leather goods. Romag claimed factories in China were making Fossil’s leather goods using counterfeit Romag fasteners. As such, Romag sued Fossil, among other defendants, for trademark infringement, which can trigger an award of a defendant’s profits.

Justice Neil M.Gorsuch delivered the opinion for the court noting that while willfulness is a precondition for a profits award for trademark dilution, the Lanham Act does not have the same precondition for trademark infringement. While Fossil argued that “courts historically required a showing of willfulness before authorizing a profits remedy in trademark disputes,” the court rejected that argument stating “this suggestion relies on the curious assumption that Congress intended to incorporate a willfulness requirement here obliquely while it prescribed mens rea conditions expressly elsewhere throughout the Act.”

This case was assigned US Supreme Court Case No. 18-1233 and was decided on April 23, 2020. Justice Neil M. Gorsuch delivered the opinion. Concurring Opinions were filed by Justices Roberts, Thomas, Ginsburg, Breyer, Alito, Kagan and Kavanuagh.


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