April 18, 2012 Articles

Willfulness and the Current State of Trademark Damages Law

It is time for appellate courts to weigh in and determine whether willfulness is a requirement for the recovery of a defendant's profits.

By Jonathan A. Menkes

In a trademark infringement lawsuit, a determination that a defendant intentionally violated the trademark holder's rights, or engaged in other forms of culpable conduct, can greatly influence the amount and type of damages that a court awards. For instance, where the infringement is willful, a court may award enhanced damages, attorney fees, and prejudgment interest. Because some circuits require willfulness as a predicate to recovering certain kinds of monetary relief, while others instead view it as a factor that a court must weigh, there is little consistency (or clarity) in how courts assess monetary damages.

Trademark Damages Generally
The Trademark Act of 1946 (the Lanham Act) protects against a number of trademark-related violations, including trademark and trade dress infringement, false advertising, dilution, and cyber-squatting. See 15 U.S.C. § 1114 (registered trademarks and trade dress); 15 U.S.C. § 1125 (unregistered trademarks and trade dress); § 1125(a)(1)(b) (false advertising); § 1125(c) (dilution); § 1125(d) (cyber-squatting). Once a plaintiff establishes liability for one or more of these causes of action, section 1117(a) allows a plaintiff to recover actual damages, defendant's profits, and the costs of bringing the action. 15 U.S.C. § 1117(a) (2006). For a dilution claim, however, a plaintiff cannot recover monetary damages unless the violation (a likelihood of dilution) is willful. Id.

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