The Supreme Court has definitively answered the question of whether a plaintiff in a trademark infringement suit is required to show, as a precondition to a profits award, that a defendant willfully infringed the plaintiff’s trademark. By a unanimous vote, the Supreme Court said NO.
In Romag Fasteners, Inc. v. Fossil Group, Inc., Romag, a manufacturer of magnetic snap fasteners for use in leather goods, brought suit against Fossil, alleging that Fossil was infringing Romag’s trademark by using counterfeit Romag fasteners on some of Fossil’s products. After a jury trial in which the jury agreed that Fossil had acted “in callous disregard” of Romag’s rights but had not acted “willfully,” the district court refused Romag’s request for Fossil’s profits. In doing so, the district court was relying on the then Second Circuit precedent that required a plaintiff seeking a profits award to prove the defendant’s violation was willful. Because not all circuits agreed with the Second Circuit’s precedent, the Supreme Court took the case to resolve the dispute. Continue Reading