By command of the U.S. Supreme Court, regardless of U.S. jurisdiction, infringers may now be required to turn over their ill-gotten gains to a brand owner even where it cannot be proven that the defendant knew or intended to infringe. This pronouncement came in a decision issued on April 23 in Romag Fasteners v. Fossil, No. 18-1233, ushering a big win for Romag and for brand owners across the country.

Prior to the Romag decision, brand owners who brought a federal trademark infringement or false designation of origin suit within the U.S. Courts of Appeals for the First, Second, Sixth, Eighth, Ninth, Tenth and D.C. faced the rigid application of the willfulness precondition to an award of an infringer’s ill-gotten profits. Proof of willful infringement in many cases can be nearly impossible to prove, leaving the brand-owners, in some cases, inadequate remedies for infringement, even if the facts otherwise warranted a profits award. Going forward, all trial courts will have flexibility to award profits where appropriate based on the equities of an individual case.

The ‘Romag’ Facts