Romag Fasteners, Inc. v. Fossil, Inc.
The Supreme Court ruled that trademark law does not require proof of intentional wrongdoing as an automatic threshold before a court can order an infringer to surrender its profits.
The decision resolves a split among the federal appeals courts and gives trademark owners a stronger path to recovering an infringer's profits, even when the infringement was not deliberate.
How it got here: A federal trial court denied a profits award because the jury found Fossil's infringement was not willful; the Federal Circuit affirmed; the Supreme Court agreed to hear the case to resolve a disagreement among the federal appeals courts.
The Case in Depth
What happened
Romag Fasteners licensed its magnetic snap fasteners to Fossil for use in Fossil's handbags and accessories. Romag later discovered that factories in China producing Fossil goods were secretly substituting counterfeit Romag fasteners, and that Fossil was doing little to stop it. A jury found Fossil had acted in "callous disregard" of Romag's rights but stopped short of finding the conduct "willful." When Romag sought to recover the profits Fossil made from the infringing sales, the courts refused because willfulness had not been proven.
The question before the Court
Must a trademark owner prove that a company infringed its trademark intentionally before a court can order that company to hand over the profits it made from the violation?
The Court's answer
No — the Lanham Act does not require proof of intentional infringement (called "willfulness") as an automatic gate that a trademark owner must pass through before a court can award the infringer's profits. The text of § 1117(a) simply does not include that condition for § 1125(a) trademark infringement claims, even though the same statute uses the word "willful" explicitly in other provisions. Courts do not add conditions Congress left out, especially when Congress used that exact word elsewhere in the same law.
A defendant's mental state still matters and remains a highly important factor in a court's decision of whether and how much to award. The ruling simply removes willfulness as a hard, threshold requirement that, if not met, automatically bars a profits award regardless of all other circumstances. The case is sent back to the lower courts to reconsider the appropriate remedy under this corrected standard.
Curious how the Court got there? See the step-by-step legal reasoning →
Why it matters
Businesses and brand owners who win trademark infringement suits can now seek an award of the infringer's profits without first clearing the hurdle of proving intentional misconduct. Companies that use others' trademarks — even carelessly rather than deliberately — face greater financial exposure, since courts retain broad discretion to order a profit hand-over based on all the circumstances.
What changes now
The case is sent back to the lower courts for further proceedings. Those courts must now reconsider whether Romag should receive a profits award, weighing Fossil's level of culpability — including the jury's finding of "callous disregard" — alongside other relevant factors, without treating the absence of a willfulness finding as an automatic bar. Going forward, trademark plaintiffs in all federal circuits can seek profits awards on the same footing, without the strict willfulness requirement some circuits had previously imposed.
What this does not decide
The ruling does not decide when courts should actually award profits, or how large such awards should be. Courts retain broad discretion to weigh a defendant's intent — knowing, reckless, or innocent — as a factor. The decision also does not disturb the separate rule that willfulness remains a required showing for trademark dilution claims under § 1125(c).
Concurrences and dissents
Concurrence — Justice Alito
Justice Alito agreed that willfulness is not an absolute precondition to a profits award, but wrote separately to emphasize what he saw as the proper basis for that conclusion: pre-Lanham Act case law shows that willfulness is a highly important factor in awarding profits, not a mandatory threshold. He declined to join parts of the majority's broader statutory analysis and stated he would hold more narrowly on that ground.
Concurrence — Justice Sotomayor
Justice Sotomayor agreed that § 1117(a) imposes no categorical willfulness requirement, but concurred only in the judgment because she believed the majority was too permissive. In her view, equity courts historically used 'willfulness' to cover a wide range of culpable conduct — including recklessness — but rarely if ever awarded profits for purely innocent or good-faith infringement. She argued that awarding profits for innocent infringement would not be consistent with the 'principles of equity' the statute references, and faulted the majority for being agnostic on that question.
How the Court got there
The legal reasoning, step by step
- The Court began with the text of the Lanham Act's remedies provision (15 U.S.C. § 1117(a)), which entitles a prevailing trademark plaintiff to the defendant's profits for violations under § 1125(a) — the general trademark infringement section — without any mention of willfulness as a threshold condition.
- The same statutory provision does require willfulness for one specific type of claim — trademark dilution under § 1125(c) — but not for § 1125(a) infringement. The Court applied the well-settled rule against reading requirements into a statute that Congress included elsewhere but deliberately left out of the provision in question.
- The Lanham Act is unusually attentive to mental-state language throughout, specifying 'willful,' 'intentional,' and 'bad faith' conditions in many different provisions. That pattern of careful drafting makes the omission of a willfulness requirement from the § 1125(a) profits provision especially significant — silence here is not accidental.
- Fossil argued that the phrase 'subject to the principles of equity' in § 1117(a) incorporates an old common-law rule that trademark courts always required willfulness before awarding profits. The Court rejected this, finding that 'principles of equity' most naturally refers to broad, cross-cutting legal rules — things like laches or estoppel — not a narrow mental-state rule specific to trademark remedies.
- Even taking Fossil's historical argument on its own terms, the Court found pre-Lanham Act cases too divided to establish a settled, universal willfulness rule. Some courts required it; others did not. The most that can be said is that a defendant's mental state was always a relevant consideration — which the Court fully acknowledged — but that is far from making it an absolute, categorical precondition.