Fenwick & West LLP

A petition for writ of certiorari pending before the U.S. Supreme Court asks the Court to decide whether a plaintiff must prove willful infringement to obtain an award of a trademark infringer’s profits for a violation of 15 U.S.C. § 1125(a). A Supreme Court ruling on the issue would resolve a long-standing divide among the circuit courts and significantly impact the damages landscape for trademark litigants.

In Romag Fasteners v. Fossil, Romag Fasteners — a magnetic snap fastener seller — sued fashion design and manufacturing company Fossil for trademark and patent infringement in 2010, alleging that Fossil was selling handbags with counterfeit snaps bearing the Romag mark. Romag prevailed in a jury trial in 2014, with the jury finding Fossil infringed Romag’s trademark but that the infringement was not willful. After a subsequent two-day bench trial, the trial court held that “Romag [wa]s not entitled to any award of profits as a result of Plaintiff’s failure to prove that Fossil’s trademark infringement was willful.” After post-trial motions, Romag appealed. The case reached the Supreme Court in 2016 on both the willfulness question and a second question as to whether laches barred in whole or in part the patent infringement award. The Court remanded on the second question, leaving the trademark damages question unanswered until now, when it has made its way back up to the justices.

The cert petition asserts that the circuit courts are “sharply divided” on the question the petition raises. On the one hand, the Third, Fourth, Fifth, Sixth, Seventh and Eleventh Circuits do not require a showing of willfulness for a plaintiff to recover an award of an infringer’s profits for violation of § 43(a). On the other hand, the Second, Eighth, Ninth, Tenth and D.C. Circuits require that a plaintiff proves willful infringement in order to recover an infringer’s profits. The Federal Circuit also required a willfulness finding in its decision in this case, which is the subject of Romag’s petition. Finally, the First Circuit also requires a showing of willfulness, but only where the parties do not directly compete.

Romag points out in its petition that “[c]ourts, academics, and commentators widely acknowledge the square conflict this case presents,” arguing that this “state of affairs is intolerable for a federal statute that should apply uniformly across the country” and that “[o]nly this Court can break the impasse.”

If the Supreme Court grants the petition and again takes the case, its ruling will likely have a significant impact on litigation of trademark damages going forward, including by shifting the state of the law in several circuits.