Supreme Court harmonizes showing necessary for an award of profits, resolving circuit split in Romag Fasteners, Inc. v. Fossil, Inc.

Today, a unanimous Supreme Court resolved a circuit split in trademark law, holding that a finding of willfulness is not required for an award of a trademark infringer’s profits as damages. The opinion of the Court makes it easier to obtain an award of defendant’s profits in several Circuits, and eliminates the possibility of plaintiff’s forum shopping to seek an easier path to an award of profits. The Court did not fully discount the impact of defendant’s intent, stating: “a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate.”

For years, the nation’s courts have split as to whether a trademark plaintiff is required to prove an infringer “willfully” or intentionally infringed a trademark before awarding the defendant’s profits as a measure of damages. This is a particularly important point in Lanham Act litigation because an infringer’s profits are relatively easy to prove, are often larger than the plaintiff’s actual damages, and willfulness is frequently difficult to prove.

This decision overturns precedent in several circuits, among them the 2nd, 8th, 9th, and 10th Circuits, which had required proof that trademark infringement was “willful” before awarding profits. The decision harmonizes the requirements across the country for awarding profits as a measure of damages in trademark cases, and brings the analysis more in line with the 3rd-7th, and 11th Circuits, who consider (but do not require) willfulness before awarding profits.

Tom Polcyn is a member of Thompson Coburn’s Intellectual Property practice group.