With the Supreme Court's October 2018 term closing on a somewhat subdued note for trademark and copyright cases, intellectual property practitioners are expecting a far more impactful 2019 term.
One giant case looming is Romag Fasteners Inc. v. Fossil Inc., which will settle a longstanding circuit split over when courts can order trademark infringers to turn over their profits to a brand owner. In certain circuits, courts only award profits if a trademark owner can prove the infringer acted willfully, a difficult standard. In others, courts will weigh whether an infringer acted willfully, but only as one part of a broader analysis.
Speaking with Law360, Dyan Finguerra-DuCharme, a partner in Pryor Cashman's Intellectual Property Group, said the Supreme Court's eventual ruling in Romag will have "a profound impact on trademark law."
"Monetary awards for trademark infringement are not common because it is often hard to prove the amount lost by a brand owner due to an infringer's use of a confusingly similar mark," Finguerra-DuCharme said. "Having clarification from the court as to whether willfulness is a prerequisite to an award of monetary damages will finally put an end to a frustrating split among the circuits."
Read the full recap in Law360.
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