Romag Fasteners, Inc. v. Fossil, Inc.
Issues
Does Section 35 of the Lanham Act require willful infringement to award a prevailing plaintiff profits of an infringer who violated Section 43(a)?
This case asks the Supreme Court to determine whether a plaintiff must show that an entity willfully infringed on a trademark in order to be awarded the infringer’s profits for violating the Lanham Act. Romag Fasteners, Inc. argues that the plain text of Section 1117(a) and the structure of the Lanham Act omits a willfulness requirement, and the phrase “subject to the principles of equity” in Section 1117(a) does not justify such a requirement. Fossil, Inc. counters that the textual analysis of Section 1117(a) should incorporate traditional principles of equity that require willfulness for profits awards because the text expressly allows for consideration of equitable principles. The outcome of this case has important implications for the rights of trademark holders and awards of damages.
Questions as Framed for the Court by the Parties
Whether, under Section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of Section 43(a), 15 U.S.C. § 1125(a).
In 2002, Fossil, Inc., a company that designs and sells handbags, entered into a trade agreement with Romag, a company that has trademarked and patented magnetic snap fasteners used in handbags. Romag Fasteners, Inc. v. Fossil, Inc. at 2.
Edited by
Additional Resources
- Abhijit P. Adisesh: Supreme Court to Settle Standard for Obtaining Trademark Infringer’s Profits, The National Law Review (July 26, 2019).
- Lewis R. Clayton and Eric Alan Stone: Supreme Court to Decide Whether Trademark-Infringement Plaintiffs Must Prove Willful Infringement To Recover Infringer’s Profits, Law.com (Nov 12, 2019).