Trademark Infringement: Accidents Will Happen
In April, the US Supreme Court ruled that a plaintiff in a trademark infringement lawsuit need not prove that the infringement was willful or purposeful.
In Romag Fasteners, Inc. v. Fossil Group, Inc., Justice Gorush, writing for a clear majority, ruled that the provisions of the Lanham Act ("Trademark Act") governing infringement rather than other causes of action under the Act, such as trademark dilution, do not require that the plaintiff show that the infringement was other than accidental.
This means that accidental infringement of another's registered trademark can still result in a judgment against you, regardless of whether you acted innocently or ignorantly in the use of a trademark.
Trademark Infringement: Does Willfulness Still Matter?
The Supreme Court did not dismiss the relevance of the willfulness of infringement, however. Justice Gorush wrote that a defendant's "mental state" remains relevant to the question of whether a money judgment is appropriate.
He described it as an important consideration, though this was tempered in a concurring opinion by Justices Alito, Breyer, and Kagan, who noted that the question of willfulness was not an "absolute precondition" to award of money damages in such a lawsuit.
Trademark Infringement: The Bottom Line
The bottom line is that this case underscores the need to retain an experienced trademark registration attorney when you seek to register your trademark.
One of the most important services an experienced attorney can provide is a proper pre-application clearance search which will uncover existing trademark registrations or other uses in commerce that pose a risk of eventual infringement allegations.
A "knock-out" Google or TESS search conducted by a lay-person will not necessarily expose the risks, and this may cause you and your brand serious problems later in the lifespan of your enterprise.
The Hilla Law Firm, PLLC offers free virtual consultations or virtually to trademark clients throughout the United States.
If you are interested in discussing the filing of an initial trademark application, please contact us to discuss your matter or click here to directly schedule your initial trademark consultation into our calendaring system.