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Course Details

Course Information
  • smart_display Format

    Live Online with Live Q&A

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, July 1, 2025

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$297.00
CLE
ALL

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

Faculty

Robert W. Payne
Attorney
Payne IP Law

Mr. Payne is the owner of Payne IP Law, located in the heart of Silicon Valley. With over 20 years’ experience, he practices trademark, patent and other intellectual property litigation and dispute resolution. Mr. Payne is former Chair of the California Bar’s IP Section Executive Committee and former Chair of the AIPLA’s Patent Litigation Committee. He has authored over 50 trademark and patent articles in various publications and is a frequent presenter on IP topics. 

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Description

In the past four years, the Supreme Court issued two decisions on trademark damages and profits, tugging in two different directions. Romag Fasteners v. Fossil Group held that proof of willful infringement is no longer required for trademark owners to recover infringers' profits. The second decision cut against plaintiffs. Abitron Austria GmbH v. Hetronic International restricted the trademark owner's damages for trademark infringement to sales occurring "within" the United States, excluding products having a substantial effect in the U.S. through intended resale.

These decisions raised a host of issues. If willfulness is not required for an award of profits, when is seeking actual damages preferable to seeking an award of the infringer's wrongful profits? What is the difference in standards, if any? How easy is it, now, to obtain an award of wrongful profits? If the Court rejects adverse, domestic effects as the basis for damages, what "indirect" foreign activities still provide a measure for damages? 

Robert Payne has delved into trademark remedies for over 15 years in numerous articles and presentations and is a seasoned trademark litigator. He is the former 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 monetary remedies that can be pursued in federal trademark infringement cases and addresses the inconsistencies that plague this important area of IP law.

Outline

I. Court treatment of monetary remedies

II. Monetary relief -- hurdles and opportunities

III. Actual damages and wrongful profits -- distinctions and requirements

V. Royalties -- a rarely used remedy

VI. Where are we now that there is no willfulness requirement?

VII. What "indirect" sales having an overseas element provide a basis for damages?

VII. Challenges of enhanced damages and attorneys' fees

VIII. How do these changes affect cease and desist and other prelitigation negotiations?

Benefits

The panelist will review these and other key issues:

  • Willfulness is no longer required for wrongful profits. What factors should parties consider when choosing between seeking actual damages and wrongful profits?
  • How have the lower courts adapted in their decisions to these two Supreme Court holdings?
  • How do these changes affect cease and desist negotiations?