Trademark Infringement Remedies: Protecting IP Rights and Overcoming Challenges

This CLE course will provide guidance to IP counsel on the monetary and non-monetary remedies available for trademark infringement. The speaker will address navigating through inconsistent court rulings on trademark infringement remedies.

In 2020, the Supreme Court resolved a longstanding circuit split with its decision in Romag Fasteners v. Fossil Group. As a result, proof of willful infringement is no longer required for trademark owners to recover infringers' profits. The decision makes it easier for trademark owners to recover infringers' profits and increase the damages awards.

While the Court's decision brings some consistency to court treatment on remedies, it raises new issues. If willfulness is not required, when is seeking actual damages preferable to seeking an award of the infringer's wrongful profits? Moreover, the enactment of the Trademark Modernization Act took effect in December. As a result, a rebuttable presumption of irreparable harm once again applies to any permanent injunction and preliminary injunction decision. How will that change current practice?

Robert Payne has delved into trademark remedies for over 10 years in numerous articles and presentations, is the incoming chair of the Trademark Committee for the California Lawyer’s Intellectual Property Section, and former Chair of the Section’s Executive Committee. Listen as he examines non-monetary equitable remedies as well as monetary remedies that can be pursued in federal trademark infringement cases and addresses the inconsistencies which plague this important area of IP law.