Willfulness: Holding Trademark Companies Accountable

By: Rachel Reid

On March 22, 2019, the Supreme Court granted a writ of certiorari in the case of Romag Fasteners Inc. v. Fossil Inc., and on April 23, 2020, the Court issued its opinion.[1] 

Romag and Fossil signed a contract allowing Romag’s fasteners in Fossil’s leather goods.  The lawsuit was initiated when Romag discovered that Fossil factories in China were making Fossil products using counterfeit Romag fasteners.  Romag sued Fossil for trademark infringement pursuant to 15 U.S.C. 1125(a) because Fossil willfully infringed on Romag’s trademark.  The district court rejected Romag’s argument and request for an award of profits. Although they found that Fossil had acted callously, the court did not find that Fossil had acted willfully.[2]

Under the Lanham Act, if a defendant is found to have infringed on a plaintiff’s trademark, the plaintiff is allowed to recover the defendant’s profits.  Under §1117(a) of the Lanham Act, which governs remedies for trademark violations, a plaintiff must show that the defendant acted willfully to receive a profitable award under §1125(c).  However, under §1125(a) of the Lanham Act, willfulness is not a required element but is only one factor.[3]

The question before the Court was whether a plaintiff should recover from a defendant when the infringement was unintentional.  Similar to Optimum Techs., Inc. v. Home Depot U.S.A., Inc., the Court found that willfulness was not necessary to prove infringement and recover an award.  However, did the Court get its decision right under the statute?[4]

On appeal, the Second Circuit applied its longstanding willfulness requirement and affirmed a judgment barring recovery of profits from Fossil. In its respondent brief, Fossil argued that “no meaningful conflict exists.” Additionally, Fossil argued that the majority of trademark cases heard often require the willfulness element and even in circuits treating willfulness as a factor, it is rare for a plaintiff to recover in its absence.[5]

On the other hand, Romag argued that under §1117(a), stating “when a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d)of this title, or a willful violation under section 1125(c) of this title, shall have been established . . ., the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.”  Romag argued that Fossil violated 1125(a), a provision establishing a cause of action for the false or misleading use of trademarks.[6]

The Supreme Court vacated and remanded the appeals siding with Romag Fasteners and answered the question whether “willfulness” was a requirement for infringement. What was once a split amongst the lower circuit courts has now been answered, and the answer is “no.”  This decision will have a great effect on many because the ruling may lead to an increase in trademark suits where damages were once not available. However, this ruling will now force other companies like Fossil to be accountable for their actions with third parties.[7]


[1] See Romag Fasteners, Inc v. Fossil, Inc., 140 S. Ct. 1492 (2020).

[2] See id.

[3] See 15 U.S. Code §1117.

[4] See Romag Fasteners, 140 S. Ct. at 206.

[5] See Romag Fasteners, Inc. v. Fossil, Inc., 817 F.3d 782 (Fed. Cir. 2016), cert. granted, judgment vacated, 137 S. Ct. 1373, 197 L. Ed. 2d 550 (2017).

[6] See Romag Fasteners, Inc v. Fossil, Inc., 140 S. Ct. 1492 (2020).

[7] See id.