The Supreme Court just slammed the hammer on a trademark infringement suit. How can your business benefit from this?
Unless you’re in the trademark community or just a legal nerd, the odds are this is the first time you even hear about Romag Fasteners, Inc.(Romag) v. Fossil, Inc. (Fossil). That is completely fine. The reason you hire an attorney anyway is for them to know about this kind of stuff. Even though we have you covered, there are some ways this can potentially affect your business, and we think you should know how.
First, let’s talk about what Romag v. Fossil even is. Romag v. Fossil is a case that was decided by the Supreme Court as recently as April 16, 2020. Romag makes the fasteners used by Fossil. However, some of Fossil’s manufacturers in China decided to use different fasteners. Fossil still promoted their fasteners as Romag fasteners, thereby infringing on Romag’s trademark. A jury agreed that Fossil had infringed on Romag’s trademark, but failed to award it the profits made by Fossil for these products because they did not believe that Fossil acted willfully. Up to this time, different courts have had different opinions on whether or not there was a willful requirement to award profits. Language in the Lanham act mentions a willfulness in certain areas but not in others. Ultimately on April 16, 2020, the Supreme Court unanimously agreed that there was no willfulness requirement for a plaintiff to be awarded profits. Romag was able to recoup the profits made by Fossil for their trademark infringement.
What does this have to do with your business?
Depending on your specific circumstances, this could be either a good thing or a bad thing for your business.
It’s a good thing if you believe someone is infringing on your trademark. Winning a lawsuit will do more than just force the infringing party to stop. Before the Romag V. Fossil decision, a plaintiff could win an infringement case, and their only real remedy could be that the other person had to stop using their mark. The only way to receive profits from the action was to show that the defendant acted willfully in using the marks. Forcing the infringer to cease the use of your trademark is very important and helps out the future of your business. However, it doesn’t do much to remedy the damage that is already done. In many ways, it acts more as a moral victory than an actual one. Injunctive relief was typically a result.
Now that the Romag v. Fossil decision has concluded, plaintiffs will enjoy a secondary benefit of winning a lawsuit without having to prove that defendants deliberately used the mark. They will not only cease the infringement by the defendant, but they will also recover whatever profits that defendant made off of their trademark. It gives plaintiffs and their attorneys more of a reason to file suit against potential infringers.
Now, it is a bad thing if you are the infringer. You can potentially lose all the profits you have made and possibly lose your business in the process. In the past, if you infringed on a trademark and were lucky enough that a jury believed the infringement was accidental, you could get away with just having to stop those acts of infringement. A jury could decide whether you needed to forfeit those profits. Now, however, whether a jury believes the act was deliberate or not is irrelevant. If you are found guilty of infringement, you will have to pay out those profits. It is a drastic change to what was the previous norm.
The best thing to do despite what situation you are in is to talk to an attorney. They can help you protect and enforce your marks. If you’re starting your own business, you will save thousands, if not more, by simply having an attorney conduct a trademark search and having him file your trademark. It’s money well spent now so you won’t have to worry about your pockets being emptied later.
On the other hand, if you feel like somebody is infringing on your trademark, then an attorney is the person to go to if you want to enforce your rights. They are your best option to protect your business. They can assist with cease and desist letters, negotiating with the other party’s attorney, or even filing suit against the infringing party.
This supreme court case is essentially stricter enforcement of a law that is already on the books. It makes knowing your legal rights and liabilities that much more critical.
*Disclaimer: The information provided on this website does not, and is not intended to, constitute legal advice; instead, all information, content, and materials available on this post are for general informational purposes only.