Continuing to feed its appetite for trademark rulings, the U.S. Supreme Court has recently granted petitions for certiorari of two Second Circuit decisions implicating trademark law. The first case could change the burden of proof for recovering an infringer’s profits as damages in trademark disputes, while the second case may limit a defendant’s ability to invoke new defenses to trademark claims. Both cases have the potential to create seismic shifts in trademark jurisprudence.

In Romag Fasteners, Inc. v. Fossil Inc. the justices will decide on an issue splitting the circuit courts: whether awards of an infringer’s profits from trademark infringement require evidence that the infringer acted willfully. The Ninth Circuit—like the Second Circuit, where this appeal originated—predicates profits awards on the plaintiff’s ability to prove that any infringement is willful. But other circuit courts do not require a showing of willful infringement for damages to be awarded. Romag argues that the “willfulness requirement sets the bar too high” by forcing mark holders to prove that infringement of their trademark was intentional. This high burden arguably fails to adequately deter trademark infringement. Ninth Circuit precedent will be reversed if the high court rules in favor of Romag, eroding mark holders’ burden of proof, thus raising the likelihood of securing meaningful monetary relief from trademark infringement. The case should be closely monitored over the Court’s next term, since it could open the door for an increase in trademark suits. Continue Reading