Sometime this term, the Supreme Court is set to settle whether willfulness is required for an award of infringer's profits in common Lanham Act cases under Section 35.  Currently, the federal circuits are split on this issue, where only the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits allow the infringer's profits remedy without requiring a threshold showing of willfulness.  The remaining six geographic circuits have reached the opposite conclusion.  Willful infringement of a trademark occurs when the user of a mark knows or should have known that the mark was already being used by another. 

The American Bar Association (ABA), the American Intellectual Property Law Association (AIPLA), the International Trademark Association (INTA), and the Intellectual Property Law Association of Chicago (IPLAC) have argued, in part and to varying extents, that the language of the statute and Congressional intent suggest that proof of willfulness is not required, but may be considered among other equitable factors, in determining whether to award a trademark infringer’s profits. The Intellectual Property Owners Association (IPO) has argued for the willfulness standard.

Should the Supreme Court follow the arguments of the majority of advocating associations calling for the elimination of the willfulness requirement, we can expect to see an uptick in trademark litigation and other litigation under the Lanham Act as plaintiffs in the six districts currently requiring a showing of willfulness will have a lower burden to obtain the infringer's profits remedy, which can often result in the largest monetary awards.

Follow this issue in depth at