Whether willfulness is a prerequisite to an award of a defendant’s profits pursuant to Section 35(a) of the Lanham Act has divided courts for decades and created a confusing body of case law. A split exists not only among district courts of the Second Circuit but also among the circuits. The lack of uniformity in this area of trademark law fosters forum shopping and unpredictable results for trademark owners. By relying on recent Supreme Court intellectual property jurisprudence, the Second Circuit should join the U.S. Court of Appeals for the Third, Fourth, Fifth, Sixth, and Seventh Circuits. These circuits hold that willfulness is not a condition precedent to an accounting of profits, but rather, one of several equitable factors courts should consider.
The Lanham Act Amendments
Section 35(a) originally provided that:
