Obtaining damages in a trademark case no longer requires the infringement to be willful, according to a unanimous U.S. Supreme Court decision issued April 23, 2020. Before the decision, a common approach to trademark litigation in some jurisdictions was that a trademark owner should be satisfied if a court stops the infringement. The added benefit of the plaintiff receiving damages based on the infringer’s profits was only likely if the defendant was a willful infringer. While the infringer’s state of mind still will be relevant in the damages calculation, the recent case, Romag Fasteners, Inc. v. Fossil, Inc., lowers the threshold for a trademark owner to receive compensation. This decision creates a greater incentive for trademark owners to take action against infringers, it may cause defendants to settle cases more quickly, and it may make would-be infringers more careful in coming too close to misusing another’s trademark. Procedurally, the damages portion of a case can no longer be dismissed on summary judgment, because, as the Supreme Court said, willfulness is no longer an “inflexible precondition” to trademark damages.
Ned T. Himmelrich
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