Supreme Court to Consider Willfulness in Trademark Damage Awards

On June 28, 2019, the Supreme Court granted certiorari in a trademark dispute between Romag Fastener and Fossil to decide whether an award of an infringer’s profits requires a trademark owner to provide evidence the infringer acted willfully, a matter that has split the circuit courts.

Romag, a manufacturer of magnetic fasteners for watches and wallets, brought trademark and patent action against Fossil on November 22, 2010, in the U.S. District Court District of Connecticut. In 2014, Romag won a jury verdict that Fossil infringed its trademarks. However, the jury denied Romag a $6.8 million award of Fossil’s profits because Romag failed to prove Fossil acted willfully.

The U.S. District Court District of Connecticut denied Romag an accounting of Fossil’s profits because the Second Circuit, where the case was filed, requires evidence of willful infringement before awarding infringers profits as a remedy.

In March 2019, Romag filed a petition for writ of certiorari with the United States Supreme Court and argued the circuit courts are sharply divided on the issue of whether a trademark owner must show willfulness to obtain an award of a defendant’s profits.

Fossil replied in opposition in May 2019, urging the Supreme Court to deny Romag’s petition because “there is no meaningful conflict among the Courts of Appeals” on whether willfulness is a prerequisite to an award of a defendant’s profits.