In many areas, the law of remedies can be as important as the law of rights. The strength of a particular right is often commensurate with the remedies a court is willing to grant for violations of that right. Trademark law is one area where that is particularly so. Often, courts award an injunction to stop infringing use of a trademark. Money damages, however, are harder to obtain—in most competitive markets it is quite difficult to prove the amount lost by the trademark owner due to a competitor’s use of a confusing mark. The traditional answer is to instead award disgorgement of the infringing defendant’s profits, either as a rough proxy of the trademark owner’s loss, or to disgorge unjust enrichment.
A recent Connecticut case, Romag Fasteners v. Fossil, 29 F. Supp. 3d 85 (D. Conn. 2015), aff’d, 817 F.3d 782 (Fed. Cir. 2016), presents the U.S. Supreme Court with an opportunity to resolve a longstanding dispute in trademark law: whether a prevailing trademark plaintiff must show willfulness to obtain disgorgement of the infringer’s profits. This issue has split federal courts for decades.
