X

Thank you for sharing!

Your article was successfully shared with the contacts you provided.

trademark symbolSection 35 of the Lanham Act, 15 U.S.C. §1117(a), provides a remedy in false advertising, trademark infringement and dilution cases allowing for a plaintiff’s recovery of illicit profits earned by a defendant that are attributable to its wrongful conduct. For more than two decades, Lanham Act plaintiffs in the Second Circuit have been required to make a showing that the defendant engaged in willful misconduct as a prerequisite to a disgorgement award. While this approach is consistent with that of the First, Eighth, Ninth, Tenth, and District of Columbia Circuits, no such requirement exists in the Third, Fourth, Fifth, Seventh, or Eleventh Circuits, which allow disgorgement as a remedy without requiring a threshold showing of willfulness. Rather, the defendant’s intent is merely one factor in an analysis under “principles of equity” in those circuits. See 15 U.S.C. §1117(a).

The U.S. Supreme Court recently agreed to resolve this circuit split, granting certiorari in Romag Fasteners v. Fossil. In the underlying action, the U.S. Court of Appeals for the Federal Circuit applied the Second Circuit’s willfulness requirement to deny the plaintiff any opportunity to recover the defendants’ profits on account of the plaintiff’s failure to show that the defendants’ infringement of magnetic snap fasteners for handbags and other leather goods was willful. See Petition for Writ of Certiorari, Romag Fasteners v. Fossil, (U.S. March 22, 2019), cert. granted, (June 28, 2019) (No. 18-1233). The Supreme Court’s long-anticipated resolution of this question that has divided the circuit courts of appeal has the potential to alter significantly false advertising and trademark litigation practice.

Want to continue reading?
Become a Free ALM Digital Reader.

Benefits of a Digital Membership:

  • Free access to 3 articles* every 30 days
  • Access to the entire ALM network of websites
  • Unlimited access to the ALM suite of newsletters
  • Build custom alerts on any search topic of your choosing
  • Search by a wide range of topics

*May exclude premium content
Already have an account?

 
 

ALM Legal Publication Newsletters

Sign Up Today and Never Miss Another Story.

As part of your digital membership, you can sign up for an unlimited number of a wide range of complimentary newsletters. Visit your My Account page to make your selections. Get the timely legal news and critical analysis you cannot afford to miss. Tailored just for you. In your inbox. Every day.

Copyright © 2020 ALM Media Properties, LLC. All Rights Reserved.