This article appeared in The Intellectual Property Strategist, an ALM/Law Journal Newsletters publication that provides a practical source of both business and litigation tactics in the fast-changing area of intellectual property law, including litigating IP rights, patent damages, venue and infringement issues, inter partes review, trademarks on social media – and more.

On April 23, 2020, the Supreme Court rendered a decision in Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. ___ (2020), settling a circuit split and holding that, although highly important, willfulness is not a prerequisite for a trademark infringement plaintiff to obtain a profits award. In a relatively short decision, Justice Gorsuch, writing for the majority and joined by Chief Justice Roberts and Justices Thomas, Ginsburg, Breyer, Alito, Kagan, and Kavanaugh, rejected the Second Circuit’s denial of disgorgement of profits after a jury found that a trademark infringer callously, but not willfully, infringed a business partner’s trademark. Relying in large part on a textual distinction within the Lanham Act’s damages provision, 15 U.S.C. Section 1117(a), the Court ruled that while there is a mens rea requirement to a profits award for trademark dilution under 15 U.S.C. 1125(c), Section 1125(a) has no such statutory language for trademark infringement, and reading in such language must be avoided. Justice Alito filed a one-paragraph concurring opinion, in which Justices Breyer and Kagan joined. Justice Sotomayor also filed a concurring opinion, agreeing only in the judgment that a plaintiff in a trademark infringement suit need not show that a defendant willfully infringed the plaintiff’s trademark to obtain a profits award.

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