In its unanimous April 23, 2020 opinion in Romag Fasteners v. Fossil, Inc., the Supreme Court made clear once and for all that a successful trademark plaintiff is not required to establish that the defendant’s infringement was willful to be entitled to an award of the infringer’s profits. In other words, profits may be disgorged for less than willful infringement of a trademark.

Prior to the Supreme Court’s decision, federal courts were split on the issue of whether willfulness was a prerequisite to an award of the infringer’s profits. Romag gave the high court the perfect opportunity to resolve this split. By way of background, Romag Fasteners, Inc. and Fossil, Inc. had signed an agreement to allow Fossil to use Romag’s fasteners in Fossil’s handbags and other leather goods. When Romag discovered that factories in China making Fossil products were using counterfeit Romag fasteners, Romag sued Fossil and certain retailers of Fossil products for trademark infringement pursuant to the Lanham Act, 15 U. S. C. §1125(a). While the jury determined that Romag had sufficiently demonstrated infringement, the U.S. District Court for the District of Connecticut, relying on Second Circuit precedent, refused to grant Romag an award of profits on the basis that Romag had failed to demonstrate that Fossil acted willfully. After the district court’s decision was upheld by the Court of Appeals for the Federal Circuit, the Supreme Court granted certiorari and heard the case on appeal. Continue Reading