Experts in Trademark Damages

Trademarks

A trademark is a word, name, symbol, or device that is used in trade or commerce to indicate the source of goods, and to distingquish them from the goods of others. A service mark is the same as a trademark except a that service mark identifies and distinguishes the source of a service. The terms “trademark” and “mark” are commonly used to refer to both trademarks and service marks.

United States’ trademark law is governed by federal and state statutes, as well as common law. The U.S. Trademark Act, also known as the Lanham Act, is part of Title 15 of the U.S. Code and establishes remedies for trademark infringement, trademark dilution, and false advertising.

Trademark Damages

Plaintiffs are entitled to a wide range of monetary remedies under the Lanham Act, and are frequently awarded injunctions against further infringement or diluting use of the trademark.

Title 15 of the U.S. Code identifies monetary remedies:

“When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 43(a) or (d) [15 USC 1125(a) or (d)], or a willful violation under section 43(c) [15 USC 1125(c)], shall have been established in any civil action arising under this Act, the plaintiff shall be entitled to the provisions of sections 29 and 32, and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.”

Under the Lanham Act, a plaintiff can recover monetary remedies including: (1) the defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.¹ Further, the Lanham Act states that the plaintiff is required to prove only the defendant’s revenue – the defendant must “prove all elements of cost or deduction claimed.” ² In addition, “the court may enter judgment, according to the circumstances of the case, up to three times actual damages or profits.” ³

Courts are split regarding the calculation of defendant’s profits. Some courts limit an accounting of the defendant’s profits to an amount equal to the plaintiff’s actual damages. Other courts allow damage awards to include all of the defendant’s ill-gotten profit, plus the plaintiff's actual damages (as long as there is not a double recovery).

Notes

1. Title 15 Section 1117 (Lanham Act)
2. Ibid.
3. Ibid.