Monetary relief is a measure of protection that is provided by the Lanham Act for trademark owners.

Monetary Relief Definition

Monetary relief encompasses the following:

  • Damages that can be proven
  • Fees related to attorney services
  • Costs associated with corrective advertising
  • Lost profits for either party involved in a case
  • Pre-judgment interest
  • Punitive damages
  • Reasonable royalty
  • Treble damages

Rewards associated with monetary relief can generally be pursued in cases that involve infringement of some sort. The court system has a wide range of discretion, according to equity principles, to determine if monetary relief should be granted or denied. The courts will normally require adequate proof that intentional infringement has taken place before rewarding monetary relief.

Standards for Monetary Relief Under the Lanham Act

According to section 35 of the Lanham Act, rewarding monetary relief is permitted in cases that fall under the act, including:

  • Profits owed to the defendant
  • Damages owed to the plaintiff
  • The winning party's court costs and attorney fees

The circuit courts of appeal, however, have been known to apply inconsistent rules, standards, and tests in terms of deciding whether to award monetary relief in cases related to trademark infringement. Particularly, the courts are in disagreement on the following:

  • Whether a plaintiff has to prove intentional infringement has occurred
  • Whether the plaintiff is required to prove that actual confusion has happened
  • Whether the winning party is required to prove bad faith on the part of the losing party

Section 35 of the Lanham Act states that the court can award the defendant's profits, which resulted from infringement to the plaintiff. In most cases, before the Lanham Act was amended by Congress in 1999, the plaintiff was required to prove that willful and intentional infringement had occurred before he or she would be allowed to claim these profits. A number of courts, however, interpret two of the amendments made in 1999 as an elimination of the requirement that intentional infringement has occurred. This has resulted in division among circuit courts in regard to the significance surrounding the intentions of the defendant. Some courts:

  • Require proof of intentional infringement in every case
  • Require proof of intentional infringement, except in certain circumstances
  • Award the defendant's profits to the plaintiff without any proof at all if the award can be considered otherwise equitable

The courts are also in disagreement regarding the role that actual confusion should play when determining whether to award the defendant's profits. While plaintiffs are not usually required to show proof of actual confusion to recover the defendant's profits, the United States Court of Appeals for the Second Circuit requires proof of such confusion in most cases. In fact, some courts, take actual confusion into account while making decisions regarding an award of profits.

According to the Lanham Act, plaintiffs are entitled to recover any sustained damages if they can prove:

  • Actual harm was suffered.
  • The harm that has been experienced was caused by infringement on the defendant's part.
  • The harm in question is not speculative or remote.

However, just as they are in terms of awarding the defendant's profits, the courts are not unified in deciding whether, or when, the plaintiff is required to prove that actual confusion has occurred. Some courts:

  • Reject actual confusion requirements altogether.
  • Use a general rule that the plaintiff is required to provide proof of actual confusion.

In many cases, when the plaintiff is required to offer proof, there are varying exceptions or presumptions that may also come into play.

The Lanham Act also allows the winning party to recover his or her attorney fees in some cases. This normally happens when the losing party is found to have engaged in intentional infringement or bad faith conduct. Recently, however, the United States Court of Appeals for the Fifth Circuit joined in with the Third and Fourth circuits regarding the Supreme Court decision in the case of Octane Fitness, LLC vs. Icon Health and Fitness, Inc. This alignment relaxes the standards related to awarding attorney fees to the winning party. These circuits don't require proof of bad faith to be provided and will typically award attorney fees if either of the following is true:

  • The case in question is exceptional when compared to other similar cases.
  • The losing party has litigated the case in a manner that can be considered unreasonable.

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