News & Analysis as of

Lanham Act Vacated Trademark Infringement

McDermott Will & Emery

When Analyzing Likelihood of Confusion, It’s Not Just Location, Location, Location

The US Court of Appeals for the Fourth Circuit vacated a district court’s decision finding no infringement that focused on only the geographic distance between the physical locations of the two users without considering the...more

Jones Day

Affiliates (Currently) Off the Hook: Supreme Court Vacates $43M Trademark Infringement Award

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The Supreme Court vacates a decision treating a company and its affiliates as "one and the same" for purposes of disgorging profits for trademark infringement under the Lanham Act, but leaves many questions unaddressed....more

Fox Rothschild LLP

The U.S. Supreme Court Unanimously Rules That Successful Trademark Plaintiffs Cannot Recover Profits From Named Defendants’...

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On February 26, 2025, the U.S. Supreme Court unanimously vacated a nearly $43 million award in a trademark dispute that raised the question of whether a defendant’s affiliates could be held liable for payment of a disgorged...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Supreme Court Overturns Nearly $43 Million Trademark Infringement Award Based on Section 35 of the Lanham Act

The U.S. Supreme Court’s opinion in the Dewberry Group, Inc. v. Dewberry Engineers Inc. case was released Wednesday. In a unanimous opinion, the Court found that Section 35 of the Lanham Act, which provides that a plaintiff...more

McDermott Will & Emery

David-Versus-Goliath Trademark Victory Isn’t “Exceptional”

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The US Court of Appeals for the Third Circuit vacated an award of attorneys’ fees for reanalysis, explaining that the district court’s finding that the case was “exceptional” under the Lanham Act was based on policy...more

McDermott Will & Emery

Burst That Bubble: Specific Knowledge Necessary to Prove Contributory Trademark Infringement

The US Court of Appeals for the Ninth Circuit addressed contributory trademark infringement for the first time, finding that specific knowledge is required for liability to attach. Y.Y.G.M. SA, DBA Brandy Melville v....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - June 2023

Thank you for reading the June 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we begin a three-part series that closely examines ways to lose trademark rights; share an article that examines the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Supreme Court Vacates and Remands 10th Circuit's Decision in "Abitron"

The US Supreme Court ruled today in the closely watched Abitron Austria GmbH v. Hetronic International, Inc. case, which considered whether a party could recover in US courts for trademark infringement that occurred outside...more

McDermott Will & Emery

First Sale Defense Bars Trademark Infringement Where Trademarked Component Is Adequately Disclosed

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A US Court of Appeals for the Ninth Circuit panel vacated a grant of summary judgment in favor of the plaintiff, holding that the first sale doctrine applies when a trademarked product is incorporated into a new product....more

Jones Day

Second Circuit Vacates Tiffany's $21 Million Win Over Costco

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The Second Circuit vacates Tiffany's summary judgment win over Costco and remands for a trial over the use of the word "Tiffany" in advertising for engagement rings. On August 17, 2020, in Tiffany & Co. v. Costco Wholesale...more

Troutman Pepper Locke

Diamonds are Forever, but Tiffany’s $21M Trademark Win is Not

Troutman Pepper Locke on

A federal appeals court issued its opinion on August 17th in Tiffany & Co. v. Costco Wholesale Corp., vacating a $21 million judgment against Costco Wholesale Corp. Costco had marketed unbranded diamond engagement rings...more

International Lawyers Network

Supreme Court Unanimously Rules That Willfulness Is Not Required to Recover Profits

The U.S. Supreme Court resolved a circuit split on April 23, 2020, by unanimously holding in Romag Fasteners, Inc. v. Fossil Group, Inc., et al. that a brand owner is not required to prove that a trademark infringer acted...more

McDermott Will & Emery

GOOGLES Wins Right to Sue Google

The US Court of Appeals for the Second Circuit vacated and remanded a district court’s dismissal of a trademark dispute for lack of subject matter jurisdiction, noting that the dispute arose under contractual standing, which...more

Sunstein LLP

Trademark Infringement Remedies Just Got Snappier? United States Supreme Court Says Proving Willfulness Is Not Required For...

Sunstein LLP on

In U.S. trademark litigation, the focus is typically on injunctive relief: The plaintiff wants the defendant to cease use of the infringing mark before the plaintiff’s reputation is harmed or the strength of the mark is...more

Greenberg Glusker LLP

Supreme Court Unanimously Holds that Willfulness is Not a Prerequisite for an Award Disgorging Trademark Infringer’s Profits

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On April 23, 2020, the United States Supreme Court unanimously held that the Lanham Act does not require a showing of willful infringement to justify an award of defendant’s profits to the plaintiff. Romag Fasteners, Inc. v....more

Lowenstein Sandler LLP

Romag Fasteners: SCOTUS Holds That Plaintiffs in Trademark Suits Need Not Show "Willful Intent" of Infringement to Recover Damages...

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In a recent unanimous decision in Romag Fasteners, Inc. v. Fossil, Inc., the U.S. Supreme Court brought some welcome clarity to the question of whether willfulness is required in order to recover an infringer’s profits under...more

WilmerHale

Supreme Court Holds that Willfulness is Not a Requirement to an Award of an Infringer’s Profits

WilmerHale on

On April 23, the US Supreme Court resolved a six-six circuit split over whether a defendant must have willfully infringed a trademark for a plaintiff to obtain as a remedy the infringer’s profits. In Romag Fasteners, Inc. v....more

Miles & Stockbridge P.C.

Willfulness no Longer Required for Trademark Owners to be Awarded an Infringer’s Profits

In a decision some believe may generate more trademark infringement litigation, the U.S. Supreme Court recently ruled that a trademark owner does not have to prove a defendant acted willfully to receive a profits remedy in...more

Baker Donelson

Supreme Court Clears an Obstacle to Profit Awards for Trademark Owners, But Doesn't Completely Flush "Willfulness"

Baker Donelson on

On April 23, 2020, the United States Supreme Court's unanimous decision in Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. ___ (2020), resolved a circuit court split by confirming that a plaintiff in a trademark infringement...more

White & Case LLP

Supreme Court clarifies rules for remedies in trademark litigation

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White & Case Technology Newsflash - Willful infringement is no longer required for trademark owners to recover infringers' profits. In Romag Fasteners v. Fossil Group, the Supreme Court resolved a longstanding circuit...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - April 2020: Two Takeaways from Romag Fasteners, Inc. v. Fossil, Inc.

On April 23, 2020, Justice Neil Gorsuch delivered a unanimous opinion in Romag Fasteners, Inc. v. Fossil, Inc., clarifying that a Lanham Act provision does not require a plaintiff to prove that acts of infringement are...more

Smith Anderson

Supreme Court Holds Willfulness Not Required for Recovery of Trademark Infringer’s Profits

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On April 21, 2020, the U.S. Supreme Court resolved a long-unsettled issue in trademark law, holding that Section 43(a) of the Lanham Act enables a trademark owner to recover the profits earned by an infringer without proving...more

Latham & Watkins LLP

Supreme Court: Willfulness Not Required for Profits Awards in Trademark Infringement Actions

Latham & Watkins LLP on

Decision clarifies prior conflicting authority and holds that willfulness is not a prerequisite to recovering an infringer’s profits. Key Points: ..A finding of willfulness is not a prerequisite to a disgorgement of...more

K&L Gates LLP

Supreme Court Raises the Stakes Against Unauthorized Resellers: Willfulness No Longer Required for Manufacturers to Obtain Profits...

K&L Gates LLP on

Last week, the Supreme Court issued its decision in Romag Fasteners, Inc. v. Fossil Group, Inc., No. 18-1233,[1] in which it held that the plaintiff in a trademark infringement action need not prove that the defendant acted...more

Dickinson Wright

Romag Fasteners V. Fossil: Unfastening the Circuit Split on Profit Awards for Trademark Infringement

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Romag Fasteners, Inc. v. Fossil Grp., Inc., No. 18-1233 (April 23, 2020) - In a landmark decision issued by the Supreme Court of the United States of America in the matter of Romag Fasteners, Inc. v. Fossil Grp., Inc., No....more

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