Romag Fasteners, Inc. v. Fossil, Inc.
The Supreme Court ruled unanimously that trademark owners do not have to prove intentional wrongdoing to seek a share of an infringer's profits — a requirement several federal appeals courts had imposed but that the Court found no basis for in federal trademark law.
The decision resolves a long-running split among lower courts and clarifies that while an infringer's state of mind still matters in deciding how much a court should award, it is not an absolute barrier to asking for profits in the first place.
“we do not doubt that a trademark defendant's mental state is a highly important consideration in determining whether an award of profits is appropriate. But acknowledging that much is a far cry from insisting on the inflexible precondition to recovery Fossil advances.”
The Court drawing a line between mental state as a relevant factor versus an absolute threshold for receiving a profits award.
How it got here: After a trial in which the jury found trademark infringement but not willfulness, a federal district court denied Romag's request for Fossil's profits; the Second Circuit affirmed, and the Supreme Court agreed to hear the case to resolve a split among the appeals courts.
The Case in Depth
What happened
Romag makes small magnetic snap fasteners used in leather handbags and accessories. Fossil, a major fashion brand, had a contract to use Romag's fasteners in its products. Romag eventually discovered that the Chinese factories Fossil hired were secretly substituting counterfeit Romag fasteners, and that Fossil was doing little to stop the practice. After a trial, a jury found that Fossil had acted in "callous disregard" of Romag's trademark rights — but stopped short of finding the violation was willful under the definition the trial court gave the jury.
The question before the Court
Must a company prove that a trademark infringer acted intentionally before it can win a share of the infringer's profits?
The Court's answer
No — a trademark owner does not need to prove the infringer acted intentionally to pursue the infringer's profits as a remedy. The relevant provision of the Lanham Act, the federal trademark law, explicitly requires willfulness only for one specific type of claim — trademark dilution — but makes no such demand for the ordinary false-use claim Romag brought. Because Congress knew how to write a willfulness requirement and did so selectively throughout the same statute, the Court refused to add one where Congress left it out.
Fossil argued that a historical "principles of equity" tradition in trademark law filled the gap, but the Court found that phrase refers to broad, general principles — like defenses of laches or estoppel — not narrow, domain-specific rules. And even on its own terms, Fossil's historical argument failed: the pre-Lanham Act cases were too divided to establish any universal willfulness requirement. A defendant's mental state remains a highly relevant factor in a court's discretion to award profits, but it cannot serve as an absolute gateway that blocks even considering such an award.
Curious how the Court got there? See the step-by-step legal reasoning →
Why it matters
Businesses that discover their trademarks have been infringed — even by supply-chain partners acting carelessly rather than with proven intent — can now seek a share of the infringer's profits in every federal court, not just those outside the Second Circuit. Companies on the other side face broader financial exposure in trademark disputes, even when the infringement was not shown to be deliberate.
What changes now
The Second Circuit's judgment is undone, and the case goes back to the lower courts to reconsider whether Romag should receive a share of Fossil's profits — this time without the requirement that Fossil's infringement be proven willful. The district court retains wide discretion to weigh Fossil's mental state (including the jury's finding of "callous disregard") alongside other equitable factors in deciding whether and how much to award.
What this does not decide
The ruling does not mean trademark owners are automatically entitled to profits whenever infringement is proven. Courts still have broad discretion to weigh an infringer's state of mind — including whether it acted innocently — when deciding whether an award is equitable. The case also does not address willfulness requirements under trademark dilution claims, which the statute expressly preserves.
Concurrences and dissents
Concurrence — Justice Alito
Justice Alito, joined by Justices Breyer and Kagan, agreed that willfulness is not an absolute prerequisite for a profits award under § 1117(a). He wrote separately to emphasize that pre-Lanham Act case law shows willfulness is a highly important — though not mandatory — consideration when courts decide whether to award profits, and would have stated that holding more explicitly than the majority did.
Concurrence in part — Justice Sotomayor
Justice Sotomayor agreed that § 1117(a) does not impose a strict willfulness requirement, but concurred only in the judgment. She argued the majority misread the historical record: equity courts historically used 'willfulness' to cover a broad range of culpable mental states — including recklessness — and profits were 'hardly, if ever' awarded for truly innocent or good-faith infringement. In her view, awarding profits for innocent infringement would itself be inconsistent with the equitable principles the statute references, and she would have said so explicitly.
How the Court got there
The legal reasoning, step by step
- The Lanham Act's central remedies provision, § 1117(a), lays out when a plaintiff can recover a defendant's profits, damages, and costs. Critically, it requires willfulness as an express condition only for trademark dilution claims under § 1125(c) — a separate cause of action added to the statute later. Romag's claim was for false or misleading use of trademarks under § 1125(a), which carries no such explicit condition.
- The Court applied a basic canon of statutory reading: courts do not add words Congress chose to omit, and that caution is especially strong when Congress included the omitted word elsewhere in the very same statute. The Lanham Act mentions willfulness and other mental-state requirements in numerous other sections — mandatory fee-shifting, higher damages caps, destruction of infringing goods — making the absence of a willfulness condition in the § 1125(a) profits provision a clear, deliberate choice rather than an oversight.
- Fossil's fallback argument was that the phrase 'subject to the principles of equity' in § 1117(a) quietly imported a willfulness rule from the history of trademark cases in equity courts. The Court rejected this, finding that 'principles of equity' naturally refers to broad, cross-cutting rules — doctrines like laches, estoppel, modes of proof, and general standards for crafting remedies — not a narrow, trademark-specific rule about profits. The Court's own prior cases and equity treatises used the phrase that same broad way.
- Even accepting Fossil's premise that the phrase could reference historical trademark practice, the Court found the pre-Lanham Act record too muddled to establish a clear and universal willfulness requirement. Some old courts required willfulness before awarding profits; others explicitly rejected that rule; still others did not address it. The most the Court could say with confidence is that a defendant's state of mind was always a relevant factor — not that it was ever a categorical bar.
- The Court acknowledged that a defendant's mental state is 'a highly important consideration' in deciding whether and how much profits to award, consistent with longstanding equity practice of tailoring remedies to the full circumstances of the case. But treating willfulness as relevant to the size or appropriateness of a profits award is fundamentally different from making it a threshold requirement a plaintiff must clear before a court will even consider the remedy.
- Fossil's final argument was a policy appeal — that a strict willfulness bar is needed to deter meritless trademark suits. The Court declined to resolve that policy question, noting it was the legislature's role to balance competing goals, and that the statutory text as written left no room for courts to impose a categorical rule Congress chose not to enact.