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Trademark Infringement Monetary Remedies: Protecting IP Rights and Overcoming Challenges

A live 90-minute premium CLE video webinar with interactive Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Tuesday, July 1, 2025

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, June 6, 2025

or call 1-800-926-7926
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This CLE course will provide guidance to IP counsel on the monetary remedies available for trademark infringement. The speaker will address navigating through inconsistent court rulings on trademark infringement remedies.

Description

In the past four years, the Supreme Court issued two decisions on trademark damages and profits, tugging in two different directions. Romag Fasteners v. Fossil Group held that proof of willful infringement is no longer required for trademark owners to recover infringers' profits. The second decision cut against plaintiffs. Abitron Austria GmbH v. Hetronic International restricted the trademark owner's damages for trademark infringement to sales occurring "within" the United States, excluding products having a substantial effect in the U.S. through intended resale.

These decisions raised a host of issues. If willfulness is not required for an award of profits, when is seeking actual damages preferable to seeking an award of the infringer's wrongful profits? What is the difference in standards, if any? How easy is it, now, to obtain an award of wrongful profits? If the Court rejects adverse, domestic effects as the basis for damages, what "indirect" foreign activities still provide a measure for damages?

Robert Payne has delved into trademark remedies for over 15 years in numerous articles and presentations and is a seasoned trademark litigator. He is the former chair of the Trademark Committee for the California Lawyer's Intellectual Property Section and former Chair of the Section's Executive Committee. Listen as he examines monetary remedies that can be pursued in federal trademark infringement cases and addresses the inconsistencies that plague this important area of IP law.

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Outline

  1. Court treatment of monetary remedies
  2. Monetary relief -- hurdles and opportunities
  3. Actual damages and wrongful profits -- distinctions and requirements
  4. Royalties -- a rarely used remedy
  5. Where are we now that there is no willfulness requirement?
  6. What "indirect" sales having an overseas element provide a basis for damages?
  7. Challenges of enhanced damages and attorneys' fees
  8. How do these changes affect cease and desist and other prelitigation negotiations?

Benefits

The panelist will review these and other key issues:

  • Willfulness is no longer required for wrongful profits. What factors should parties consider when choosing between seeking actual damages and wrongful profits?
  • How have the lower courts adapted in their decisions to these two Supreme Court holdings?
  • How do these changes affect cease and desist negotiations?

Faculty

Payne, Robert
Robert W. Payne, Esq.
Attorney
Payne IP Law

Mr. Payne is the owner of Payne IP Law, located in the heart of Silicon Valley. With over 20 years’ experience,...  |  Read More

Attend on July 1

Early Discount (through 06/06/25)

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Early Discount (through 06/06/25)

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

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