Trademark Remedies: Willfulness Requirement, Lessons From Romag v. Fossil, Implications for Trademark Strategies

Maximizing Monetary and Non-Monetary Remedies in Trademark Litigation

Recording of a 90-minute premium CLE webinar with Q&A


Conducted on Tuesday, June 23, 2020

Recorded event now available

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Program Materials

This CLE webinar will guide IP counsel on the monetary and non-monetary remedies available for trademark infringement. The panel will examine the Supreme Court's recent decision in Romag Fasteners v. Fossil, the willfulness requirement, and the decision's potential impact. The panel will discuss non-monetary equitable remedies and other monetary remedies in trademark infringement cases and offer best practices for maximizing (or minimizing) remedies.

Description

The Supreme Court in Romag Fasteners. v. Fossil (Apr. 23, 2020) unanimously held that a plaintiff does not need to demonstrate a defendant acted willfully to be awarded disgorgement in a trademark infringement case. This decision puts to rest a circuit court split on how much weight willfulness should be given in determining damages. However, the Court noted that a defendant's intent is "a highly important consideration in determining whether an award of profits is appropriate."

The Court's decision increases the number of cases in which a plaintiff may be awarded the defendant's profits. Counsel must carefully navigate the court treatment to make the best case for protecting a company's brands and recovering remedies for trademark infringement and dilution of the brand.

Listen as our authoritative panel of IP attorneys examines trademark remedies with a focus on the Supreme Court's recent decision in Romag. The panel will discuss the willfulness requirement in trademark litigation and the potential impact of the decision. The panel will discuss non-monetary equitable remedies and other monetary remedies in trademark infringement cases. The panel will offer best practices for navigating remedies issues and maximizing (or minimizing) remedies.

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Outline

  1. Romag Fasteners v. Fossil and its implications
    1. Background
    2. Impact on trademark litigation
    3. Impact on other Lanham Act litigation?
    4. Impact on trademark clearance and opinions of counsel
  2. Monetary remedy strategies
    1. Defendant’s profits
    2. Actual damages
      1. Lost profits
      2. Price erosion
      3. Harm to mark
      4. Corrective advertising
    3. Reasonable royalty
    4. Enhanced damages
    5. Attorney’s fees
    6. Punitive damages
  3. Non-monetary remedy strategies
    1. Injunction
      1. Irreparable harm
      2. Being specific/enforceability
      3. Safe distance rule
    2. Seizure/destruction
  4. Right to a jury trial

Benefits

The panel will review these and other key issues:

  • What impact will the Supreme Court's decision in Romag Fasteners have in the awarding of damages?
  • What relief and remedies are available for infringement and unfair competition?
  • When may attorneys' fees be obtained in trademark infringement litigation?

Faculty

Bowler, John
John M. Bowler

Partner
Troutman Sanders

Mr. Bowler focuses on intellectual property litigation. He has over 23 years of experience in major cases in federal...  |  Read More

Shire, Howard
Howard J. Shire

Partner
Pepper Hamilton

Mr. Shire has over 30 years of experience in protecting and defending his clients’ products and IP rights against...  |  Read More

Wagner, Ben
Ben L. Wagner

Partner
Troutman Sanders

Mr. Wagner is a seasoned intellectual property and complex commercial litigator who has handled hundreds of disputes...  |  Read More

Mitchell Henner, Lindsay
Lindsay Mitchell Henner

Attorney
Troutman Sanders

Ms. Mitchell Henner regularly serves as the lead associate on diverse litigation matters, managing complex intellectual...  |  Read More

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