Practical Implications of Supreme Court’s Romag v. Fossil Decision: Avoiding Forfeiture of Hard-Earned Profits in Trademark Infringement LawsuitsOn September 21, 2020 by Schnader in News
UPDATE: This article was re-published in The Licensing Journal in its August 2020 edition.
W. Drew Kastner and Robert B. Kaplan published a client alert, “Practical Implications of Supreme Court’s Romag v. Fossil Decision: Avoiding Forfeiture of Hard-Earned Profits in Trademark Infringement Lawsuits.”
In Romag Fasteners, Inc. v. Fossil Group, Inc., et al, the U.S. Supreme Court recently clarified a longstanding split among the Circuit Courts, in holding that the Lanham Act does not require a finding of intentional or willful trademark infringement for an award of profits to plaintiff.
Romag Fasteners Inc. (“Romag”) sells magnetic clips for purses and wallets under its registered trademark, ROMAG. Fossil Inc. (“Fossil”) is a fashion accessory company that designs, markets, and sells, among other things, small leather goods.
Fossil and Romag entered into an agreement that permitted Fossil to use Romag’s magnetic fasteners on its handbags and other products. After Romag realized that the Chinese factories Fossil hired to make its products were using counterfeit Romag fasteners, Romag sued Fossil for trademark infringement alleging that Fossil failed to safeguard against this practice.