Later this month, the US Supreme Court will hear a long-awaited case regarding the ability of the prevailing party in a trademark infringement suit to be awarded the profits earned by the infringer.
While injunctive relief (i.e., a court-order to stop the infringing act) is the most common remedy and actual money damages sustained (where provable) may be included, before awarding profits, many circuit courts interpret the Lanham Act as requiring a showing of willful infringement. When the high court takes up Romag Fasteners, Inc. v. Fossil, Inc. on January 14th, we expect this split to be resolved. The Supreme Court could follow the precedent from copyright and patent law, as well as status quo in Ohio’s Sixth Circuit—that an infringer’s profits MAY be awarded to a harmed trademark owner, even if no bad faith or intent to infringe is shown. While the Lanham Act is not intended to provide windfalls or be punitive, there are many cases where actual damages are difficult to prove, which arguably makes an award of profits the best alternative.