• Paul Peter Nicolai

Supreme Court Says Willful Infringement Not Required to Award Profits In Trademark Cases

The U.S. Supreme Court ruled a trademark infringement plaintiff does not have to show willful infringement by the defendant to get an award of profits. It said the law’s wording does not require willfulness in suits for false or misleading use of trademarks.

The plaintiff made magnetic fasteners for purses and wallets. It alleged that factories in China were making handbags and other products using counterfeit fasteners and the company buying the products incorporating the counterfeit fasteners was doing little to stop it.

The lower court had dropped a $6.7 million profit award because jurors did not find willful infringement.

The Supreme Court said a defendant’s mental state is an important consideration in determining whether an award of profits is appropriate but not an absolute requirement.

WHY THIS IS IMPORTANT...Before this decision, trademark owners had to prove both that there was infringement and that the infringement was willful, a more difficult standard to meet. If they could not prove the infringement was willful, they could not be awarded the profits the infringer made by misusing the trademark. Attorney Nicolai was part of the ABA committee supporting this position before the US Supreme Court.

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