Check Before Picking a Brand Name:

An “Innocent Trademark Infringer” Can be Compelled by a Court to Pay Lost Profits for Trademark Infringement:


Willfulness Is Not Required for an Award of Profits for Trademark Infringement


 The U.S. Supreme Court in a decision which was closely watched ruled on April 23, 2020 that a plaintiff does not have to show that a defendant willfully infringed the plaintiff’s trademark in order for the plaintiff to be awarded profits made by the infringer. Romag Fasteners, Inc. v. Fossil, Inc. et al., No. 18-1233 (April 23, 2020).

The district court and the Second Circuit court (the two lower courts) found that the plaintiff must show willfulness for the court to award profits to the plaintiff.  The Second Circuit court cited precedent in upholding the district court’s ruling. The plaintiff then appealed to the U.S. Supreme Court which ruled that willfulness is not required to award a plaintiff an award due to an infringer’s profits but a factor to be considered. Justice Gorsuch wrote, “We do not doubt that a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate. But acknowledging that much is a far cry from insisting on the inflexible precondition to recovery Fossil advances.” The ruling means that U.S. Courts do not have to entertain arguments of “innocent infringement” when awarding a plaintiff profits made by the defendant for infringing the plaintiff’s trademark.

In view of this ruling, as a manufacturer of goods, make sure you select a trademark or brand name that does not infringe someone’s trademark rights. Prudence should be followed in selecting a trademark that does not infringe, and, for enforcement purposes, one that can be registered with the U.S. Patent and Trademark Office to give you access to the federal courts if there is infringement of your trademark.


Article posted by our associate: George Likourezos, an IP attorney at Carter, DeLuca & Farrell, LLP at glikourezos@carterdeluca.com to help you search and select a brand name that does not infringe someone else’s trademark, and to also register your chosen brand name in the U.S. and worldwide.


We can Help you Ride the Turmoil and Plan Proactively for the after phase


Take advantage of our 35+ years of expertise in this field.


What is your Service Strategy?  Do you a Strategy for the nest phase?

We Understand Your Needs and Share Your Dreams


Contact Us to increase your Profits and Minimize your Risk