Trademark Infringement Need Not Be Willful Says Supreme Court


Trademark Infringement: Accidents Will Happen

In April, the US Supreme Court ruled that a plaintiff in a trademark infringement lawsuit need not prove that the infringement was willful or purposeful. 

In Romag Fasteners, Inc. v. Fossil Group, Inc., Justice Gorush, writing for a clear majority, ruled that the provisions of the Lanham Act (“Trademark Act”) governing infringement rather than other causes of action under the Act, such as trademark dilution, do not require that the plaintiff show that the infringement was other than accidental. 

This means that accidental infringement of another’s registered trademark can still result in a judgment against you, regardless of whether you acted innocently or ignorantly in the use of a trademark. 

Trademark Infringement: Does Willfulness Still Matter? 

The Supreme Court did not dismiss the relevance of the willfulness of infringement, however. Justice Gorush wrote that a defendant’s “mental state” remains relevant to the question of whether a money judgment is appropriate. 

He described it as an important consideration, though this was tempered in a concurring opinion by Justices Alito, Breyer, and Kagan, who noted that the question of willfulness was not an “absolute precondition” to award of money damages in such a lawsuit

Trademark Infringement: The Bottom Line

The bottom line is that this case underscores the need to retain an experienced trademark registration attorney when you seek to register your trademark. 

One of the most important services an experienced attorney can provide is a proper pre-application clearance search which will uncover existing trademark registrations or other uses in commerce that pose a risk of eventual infringement allegations

A “knock-out” Google or TESS search conducted by a lay-person will not necessarily expose the risks, and this may cause you and your brand serious problems later in the lifespan of your enterprise. 

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting enterprises in every industry with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.

Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.