Romag Fasteners, Inc. v. Fossil, Inc.
Headline: Trademark profits rule clarified: Court limits willfulness requirement, allowing trademark owners to seek defendants’ ill-gotten profits without proving willful infringement, affecting remedies for brands and sellers nationwide.
Holding: The Court held that a plaintiff seeking a defendant’s profits for trademark infringement under the federal rule against false or misleading trademark use need not prove the defendant acted willfully, though mental state remains an important factor courts may consider.
- Allows trademark owners to seek defendants' profits without proving willfulness.
- Courts can still consider bad faith, recklessness, or other mental states when awarding profits.
- Leaves policy choices about deterrence and damages to Congress and policymakers.
Summary
Background
Romag, a maker of magnetic snap fasteners, and Fossil, a fashion company, had an agreement for Romag fasteners to be used in Fossil products. Romag discovered counterfeit Romag fasteners in factories making Fossil items and sued Fossil and some retailers for false or misleading use of its trademark. A jury found Fossil acted in “callous disregard” but did not find willfulness, and the trial court denied a profits award based on circuit precedent requiring willfulness.
Reasoning
The Court asked whether federal trademark law requires a showing of willfulness before a plaintiff can recover a defendant’s profits. The Justices examined the statute’s text and structure and noted that Congress expressly required willfulness in other trademark provisions but not for the false-or-misleading-use provision. The majority concluded the statute does not impose a categorical willfulness prerequisite, though it said a defendant’s mental state remains a relevant consideration under general equitable principles.
Real world impact
The decision means trademark plaintiffs may seek a defendant’s profits even when a jury does not find deliberate, knowing infringement. Trial courts must still use equitable judgment and may consider bad faith, recklessness, or other mental states when deciding remedies. Because the Court left policy tradeoffs unresolved, Congress or regulators can still change how profits awards should operate.
Dissents or concurrances
Justices Alito (joined by Breyer and Kagan) agreed willfulness is important but not an absolute bar. Justice Sotomayor stressed equity historically rarely awarded profits for innocent infringement and cautioned courts about awarding profits absent culpable conduct.
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