She Take My Money When I’m in Need: Arguments in Favor of Retaining the Willfulness Requirement in the Lanham Act’s Monetary Relief Provision by G. Ian Peng

Introduction Section 35(a) of the Lanham Act[1] addresses monetary remedies for trademark infringement and false designation claims.[2] Before 1999, this section entitled the plaintiff-trademark owner to potentially receive the defendant’s profits, damages sustained by the plaintiff, and the costs of the action, if there is a violation under § 43(a) of the Lanham Act (concerning false designations and descriptions of goods or services),[3] subject to principles of equity.[4] Most jurisdictions followed the rule that the defendant’s conduct had to be willful for the plaintiff to receive a monetary award.[5] The Trademark Amendments Act of 1999 revised § 35(a) by replacing “a violation under section 43(a)” with “a violation under section 43(a), or a willful violation under section 43(c)” (which deals with trademark dilution and tarnishment) as qualifying for monetary awards.[6] By including the word “willful” for § 43(c)—but not for § 43(a)—courts were left divided on whether the amendment extinguished the willfulness requirement for infringement and false designation claims.[7] This note argues that willful deception should be a prerequisite to an award of profits or damages for trademark infringement and false designation claims.  It considers, in turn, the meaning of “willfulness”, the text and legislative history of the Trademark Amendments [read more]