Romag Fasteners v. Fossil Group — Trademark Profits Award Does Not Require Willful Infringement

Background

Romag Fasteners makes magnetic snap fasteners used in leather goods and licensed Fossil Group to use its fasteners in Fossil-branded handbags and other accessories. Fossil’s manufacturers in China began using counterfeit Romag fasteners, and Romag sued Fossil for trademark infringement and false designation of origin under the Lanham Act.

After winning on liability, Romag sought an award of Fossil’s profits — a remedy available under §1117(a) of the Lanham Act. Fossil argued, and several circuits had held, that a profits award in a trademark case required proof of willful infringement. Other circuits disagreed, creating a clear split that the Supreme Court agreed to resolve.

The Court’s Holding

Justice Gorsuch, writing for a unanimous Court, held that willful infringement is not a prerequisite to a profits award under the Lanham Act. The Court’s analysis was straightforward: §1117(a) says courts may award profits “subject to the principles of equity” when a defendant violates certain Lanham Act provisions. The word “willfulness” does not appear as a threshold requirement in that provision, and courts generally cannot read in requirements that Congress chose not to include.

The Court contrasted other Lanham Act provisions — such as the dilution statute — that do explicitly require willfulness for a profits award. Congress clearly knew how to impose a willfulness requirement when it wanted to; the absence of such language in §1117(a) was meaningful. Courts still retain equitable discretion in deciding whether to award profits and in what amount — willfulness remains a relevant factor, but not a prerequisite.

Key Takeaways

• A trademark plaintiff may seek the infringer’s profits without proving willful infringement — willfulness is not a threshold requirement under §1117(a).
• Willfulness remains a relevant equitable factor courts may consider when deciding whether to award profits and in what amount.
• The decision resolved a longstanding circuit split and aligned trademark law with copyright law, which also does not require willfulness for a profits award.
• Innocent or negligent infringers now face greater monetary exposure — their profits may be subject to disgorgement even without intent to infringe.

Why It Matters

Before Romag, defendants in trademark cases in certain circuits had a built-in shield: if they could show their infringement was not willful, they were safe from a profits award. That shield is gone. Companies that unknowingly use infringing marks — through supply chain failures, inadequate vetting, or oversight — may now face disgorgement of profits they earned while the infringement occurred.

For trademark plaintiffs, the decision is a significant win. Proving willfulness is notoriously difficult — infringers rarely send “gotcha” emails. Removing willfulness as a prerequisite opens up the profits remedy to a much wider range of cases and increases the leverage plaintiffs have in settlement negotiations. Brand owners should factor this broader remedy into their enforcement strategies.