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:
Continue Reading U.S. Supreme Court Rules that Profits Available Even from Non-Willful Trademark Infringers
Lanham Act
Ninth Circuit Retires Fee-Award Standard, Imports Octane Fitness to Trademark Cases
By Laura Chapman on
Posted in Other, Trademarks and Trade Dress
This week, the U.S. Court of Appeals for the Ninth Circuit joined a majority of appellate courts that have rejected rigid tests for attorneys’-fees awards in favor of flexible discretion at the district court level. The Ninth Circuit’s pre-Octane Fitness rulings provided a safe-harbor for litigants: fees were only to be awarded in instances of “malicious, fraudulent, deliberate or willful” infringement or where a frivolous case was brought or maintained in bad faith. That standard has been discarded and replaced by a different, more general test that asks whether the case stands out in terms of its strength or unreasonableness in the way it was litigated.
Continue Reading Ninth Circuit Retires Fee-Award Standard, Imports Octane Fitness to Trademark Cases