Article · Intellectual Property
Rebutting Willful Trademark Infringement: Clearance Searches, Opinions of Counsel, and USPTO Approval
- Type
- Article
- Jurisdiction
- National
- Date
- 2024-08-13
- Topic
- Intellectual Property
A defendant's state of mind, not the closeness of the two marks, often decides whether a trademark case ends in a modest royalty or a company-ending judgment. This article explains what willful infringement means under the Lanham Act, why willfulness controls the enhanced remedies at 15 U.S.C. 1117 -- disgorgement of profits, treble damages, and fees in exceptional cases -- and how Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020), demoted willfulness from an absolute precondition to the single most important equitable factor. It then shows how three layers of pre-adoption diligence build a provable good-faith record: a comprehensive clearance search, a candid opinion of counsel, and USPTO examination and registration. Along the way it maps the equitable factors courts weigh before ordering disgorgement, the privilege waiver that comes with an advice-of-counsel defense, the Tea Rose-Rectanus good-faith junior user doctrine, and the willful-blindness and post-notice limits that keep the defense honest. Two invented worked examples and a build-the-record checklist connect the doctrine to practice for brand owners and their counsel.
The full text of this document is available to Executive subscribers and above. See plans.