As an update to my post on October 22, 2019, the Supreme Court has issued a rare unanimous decision in the landmark Romag v. Fossil case (found here: https://www.supremecourt.gov/opinions/19pdf/18-1233_5he6.pdf)
The Supreme Court ruled that willfulness is not a requirement for an award of an infringer's profits in Lanham Act cases under 15 U.S.C. § 1117(a).
This means that courts in the First, Second, Eight, Ninth, and Tenth circuits, and the District of Columbia will no longer require willfulness as a threshold matter in awarding infringer's profits.
Look for this ruling to lead to more Lanham Act case filings and more awards of infringer's profits in those districts.
For a thorough discussion of the Romag case, and its unique procedural history, see: https://www.orrick.com/en/Insights/2020/04/Snapping-the-Circuit-Split-The-Supreme-Court-Brings-Back-Romag-Fasteners-Inc-v-Fossil-Inc-et-al#
As the Court expressly held that the alleged infringer’s mental state may be highly relevant, the trademark users should consider obtaining a clearance opinion from a qualified attorney if possible. This may help demonstrate good faith use of a trademark.
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