Greenspoon Marder Intellectual Property Blog: Profit Awards in Trademark Cases: Supreme Court to Decide Whether Willfulness Is Required
Intellectual Property Blog
Jul 1, 2019
Sharon Urias, Esq.
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.
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