In this week's post, we see differing outcomes in trademark infringement cases that deal with the disgorgement of a defendant’s profits before and after the adoption of the Lanham Act because the Lanham Act arguably requires a showing of willfulness on the part of the defendant. 

Also, an overview of Trademark Assignment.

Supreme Court to Decide on Willfulness Requirement for Disgorgement of Profits in Romag v Fossil

The Supreme Court is scheduled to hear arguments regarding disgorgement of profits in trademark infringement cases next week and whether a showing of willful conduct is required before such awards can be awarded.  

Next week the Supreme Court will hear arguments regarding remedies under the Lanham Act in relation to trademark infringement claims under 15. U.S.C. § 1125(a).  This section specifically deals with the illegal use of a mark, but arguably requires that the plaintiff prove that the defendant acted willfully in order for the court to award the plaintiff a portion of the defendant’s profits as opposed to winning a jury’s determination of damages instead.

In the case at hand, Fossil, Inc. (“Fossil”) had licensed from Romag Fasteners, Inc. (“Romag”) the right to use Romag’s patented magnetic fasteners on some of its handbags.  At the heart of the case is a contract, which Fossil and Romag entered into, that allegedly required Fossil’s manufacturer in China to purchase the Romag magnetic fasteners from Romag’s Chinese licensee.  The claim of trademark infringement arose, however, when Romag noticed that there were Fossil bags, using counterfeit magnetic fasteners, being sold at Macy’s.  After some investigation, Romag determined that Fossil’s Chinese manufacturer was instead using counterfeit fasteners from an unauthorized source to cut costs.

Read the full article here.

Trademark Assignment

A trademark assignment is a document used to transfer rights in a trademark (i.e. logo, name, or symbol) to new owner, a creditor, or even as part of settlement of some other contractual negotiation. An assignment can either carry all the rights associated with a trademark or may be limited in some form or another. 

There are two steps required in order to have an effective trademark assignment. First, you must have a signed trademark transfer agreement, which must include terms of the agreement, payment terms, the rights being assigned, the registration and/or application number of the trademark and any warranties or representations of the parties. The parties should ensure that there are no current or pending claims against the federal trademark, which would be included in the Seller’s representations.

The second step is to file the transfer agreement with the United States Patent and Trademark Office (USPTO). The USPTO has their own filing system where the assignment may be recorded. The UPSTO has their internal assignment system that makes the filing process even easier, which also includes forms for the transfer. The last part of the USPTO filing is to submit a $40 filing fee with the USPTO. 

Read more here.

Click to read the previous Weekly IP Buzz on Thriving Attorney.

For more posts, see our Intellectual Property Law Blog.

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In addition to Thriving Attorney, Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. Click to read more about Darin Klemchuk's practice as an intellectual property lawyer.