May 4, 2020
The Supreme Court has just ruled that a trademark owner can recover profits made by an infringer without needing to prove that the trademark infringer acted willfully. Combined with the courts’ relatively recent clarification that trademark claimants, like patent owners, can recover attorneys’ fees incurred pursuing infringers in “exceptional” cases, this ruling is good news for those seeking to enforce their IP rights.
Defensively, these developments make it critical to conduct trademark clearance searches before adopting new trademarks or brands, in order to avoid inadvertently infringing and incurring liability. This ruling is also timely, given the reported increase in counterfeiting and other infringing activity since the COVID-19 pandemic forced many to rely on unfamiliar online suppliers.
The Supreme Court’s April 23, 2020, decision resolves a longstanding split among the federal appellate courts. As a result, in many parts of the country it will now be easier for a trademark owner to recover an infringer’s profits in addition to being compensated for any non-overlapping damages that the trademark owner may have suffered.
Moses & Singer regularly advises clients on trademark, copyright, entertainment and media law issues, and is available to consult on the impact of these developments and other issues in those areas. Please contact Toby Butterfield at (212) 554-7860/tbutterfield@MosesSinger.com or Deborah Shapiro at (212) firstname.lastname@example.org, or any other member of Moses & Singer’s IP practice.