Trademark Remedies: Willfulness Requirement, Lessons From Romag v. Fossil, Implications for Trademark Strategies

The Supreme Court in Romag Fasteners. v. Fossil (Apr. 23, 2020) unanimously held that a plaintiff does not need to demonstrate a defendant acted willfully to be awarded disgorgement in a trademark infringement case. This decision puts to rest a circuit court split on how much weight willfulness should be given in determining damages. However, the Court noted that a defendant's intent is "a highly important consideration in determining whether an award of profits is appropriate."

The Court's decision increases the number of cases in which a plaintiff may be awarded the defendant's profits. Counsel must carefully navigate the court treatment to make the best case for protecting a company's brands and recovering remedies for trademark infringement and dilution of the brand.

Listen as our authoritative panel of IP attorneys examines trademark remedies with a focus on the Supreme Court's recent decision in Romag. The panel will discuss the willfulness requirement in trademark litigation and the potential impact of the decision. The panel will discuss non-monetary equitable remedies and other monetary remedies in trademark infringement cases. The panel will offer best practices for navigating remedies issues and maximizing (or minimizing) remedies.

1. Romag Fasteners v. Fossil and its implications
   1. Background
   2. Impact on trademark litigation
   3. Impact on other Lanham Act litigation?
   4. Impact on trademark clearance and opinions of counsel
2. Monetary remedy strategies
   1. Defendant’s profits
   2. Actual damages
      1. Lost profits
      2. Price erosion
      3. Harm to mark
      4. Corrective advertising
   3. Reasonable royalty
   4. Enhanced damages
   5. Attorney’s fees
   6. Punitive damages
3. Non-monetary remedy strategies
   1. Injunction
      1. Irreparable harm
      2. Being specific/enforceability
      3. Safe distance rule
   2. Seizure/destruction
4. Right to a jury trial

The panel will review these and other key issues:

• What impact will the Supreme Court's decision in Romag Fasteners have in the awarding of damages?
• What relief and remedies are available for infringement and unfair competition?
• When may attorneys' fees be obtained in trademark infringement litigation?