The U.S. Supreme Court unanimously held today (April 23, 2020) that a brand owner is not required to prove a defendant’s trademark infringement was willful as a precondition to an award of the defendant’s profits. The Court’s decision – Romag Fasteners, Inc. v. Fossil Group, Inc.[1] – vacated the decision of the Federal Circuit, which held that, under Second Circuit law, an award of profits could not be sustained for Romag’s failure to establish Fossil’s infringement was willful.[2] The Court’s decision resolves a Circuit split regarding the interpretation of Section 1117(a) of the Lanham Act, which states in pertinent part:
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Supreme Court Update – Hana Financial v. Hana Bank
Sheppard Mullin’s intellectual property group prevailed before the United States Supreme Court in the trademark matter entitled Hana Financial v. Hana Bank. 574 U.S. ___ (2015). Justice Sotomayor, writing for a unanimous court, affirmed a Ninth Circuit ruling that the doctrine of trademark tacking presents a question of fact appropriate for jury determination. 735 F.3d 1158 (9th Cir. 2013). This was the first substantive trademark decision by the U.S. Supreme Court in nearly a decade. Partner Carlo Van den Bosch argued the case before the Supreme Court. With him on the briefs were Bob Rose, Michelle Wisniewski, and Gazal Pour-Moezzi. Karin Vogel and Robert Stumpf from the appellate group also contributed.
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