Trademark Remedies: Willfulness Requirement, Lessons From Romag v. Fossil, Implications for Trademark Strategies
Maximizing Monetary and Non-Monetary Remedies in Trademark Litigation
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will guide IP counsel on the monetary and non-monetary remedies available for trademark infringement. The panel will examine the Supreme Court's recent decision in Romag Fasteners v. Fossil, the willfulness requirement, and the decision's potential impact. The panel will discuss non-monetary equitable remedies and other monetary remedies in trademark infringement cases and offer best practices for maximizing (or minimizing) remedies.
Outline
- Romag Fasteners v. Fossil and its implications
- Background
- Impact on trademark litigation
- Impact on other Lanham Act litigation?
- Impact on trademark clearance and opinions of counsel
- Monetary remedy strategies
- Defendant’s profits
- Actual damages
- Lost profits
- Price erosion
- Harm to mark
- Corrective advertising
- Reasonable royalty
- Enhanced damages
- Attorney’s fees
- Punitive damages
- Non-monetary remedy strategies
- Injunction
- Irreparable harm
- Being specific/enforceability
- Safe distance rule
- Seizure/destruction
- Injunction
- Right to a jury trial
Benefits
The panel will review these and other key issues:
- What impact will the Supreme Court's decision in Romag Fasteners have in the awarding of damages?
- What relief and remedies are available for infringement and unfair competition?
- When may attorneys' fees be obtained in trademark infringement litigation?
Faculty
John M. Bowler
Partner
Troutman Sanders
Mr. Bowler focuses on intellectual property litigation. He has over 23 years of experience in major cases in federal... | Read More
Mr. Bowler focuses on intellectual property litigation. He has over 23 years of experience in major cases in federal and state trial and appellate courts. He has represented a variety of corporations, and is a veteran of litigation and strategic counseling involving a wide range of substantive issues. His practice touches almost every aspect of intellectual property. He also has extensive experience with opposition and cancellation proceedings before the Trademark Trial and Appeal Board, as well as all aspects of domain name and ICANN’s Uniform Dispute Resolution Policy practice before administrative panels and other tribunals. He represents clients in a wide range of diverse injuries.
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Howard J. Shire
Partner
Pepper Hamilton
Mr. Shire has over 30 years of experience in protecting and defending his clients’ products and IP rights against... | Read More
Mr. Shire has over 30 years of experience in protecting and defending his clients’ products and IP rights against infringement. He has represented major corporations in trademark infringement and dilution cases, trademark and copyright counterfeiting cases, trade dress litigation, and all manner of IP enforcement cases. He has also handled patent litigations. He also has an active counseling and prosecution practice, and he develops and implements worldwide trademark registration programs. He coordinates major corporate acquisitions involving the worldwide transfer of patents, trademarks and copyrights and negotiates intellectual property agreements. He counsels clients on IP matters relating to internet issues and the selection of new trademarks and domain names, and he has experience in litigating actions to obtain domain names under ICANN’s dispute resolution procedure.
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Ben L. Wagner
Partner
Troutman Sanders
Mr. Wagner is a seasoned intellectual property and complex commercial litigator who has handled hundreds of disputes... | Read More
Mr. Wagner is a seasoned intellectual property and complex commercial litigator who has handled hundreds of disputes for clients ranging from start-ups to established multi-nationals in a diverse range of industries, including apparel, consumer goods, life sciences, medical devices, real estate development and professional sports. He has pursued and defended claims in state and federal courts across the country, international arbitration involving South America, Asia, the Middle East and Western Europe and proceedings before the Trademark Trial & Appeal Board.
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Lindsay Mitchell Henner
Attorney
Troutman Sanders
Ms. Mitchell Henner regularly serves as the lead associate on diverse litigation matters, managing complex intellectual... | Read More
Ms. Mitchell Henner regularly serves as the lead associate on diverse litigation matters, managing complex intellectual property and business disputes for clients of all sizes while maintaining a business-first mindset. Her practice includes extensive experience in federal district and appeals courts, and in proceedings before the Trademark and Patent Trial and Appeal Boards. She has successfully represented clients in five trials involving patent infringement, copyright infringement, trademark infringement, unfair competition, domain name cybersquatting (WIPO, UDRP), and contract claims.
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