Remedying Trademark Infringement: The Role of Bad Faith in Awarding an Accounting of Defendant’s Profits

Abstract

The Trademark Act of 1946 (“Lanham Act”) has a recent history as a federal law enacted to protect the power of a trademark from infringement. One of the remedies for infringement under the Lanham Act is disgorging the defendant’s profits. Unfortunately, federal courts have muddied the waters in determining when a trademark owner will be entitled to an accounting of defendant’s profits as a remedy for trademark infringement. The judicially created limitation on the accounting of profits remedy appears in the form of a bad faith requirement. Although the Supreme Court appeared to render the definitive answer regarding whether bad faith is required for this remedy, nearly five decades of circuit and district court decisions have resulted in a schizophrenic view of the remedy of an accounting of profits and the bad faith requirement. This article proposes that Congress did not intend a bad faith requirement be met before an owner of an infringed mark is able to recover a defendant’s profits collected on the back of the infringed mark. This thesis, although seemingly simplistic, must travel a circuitous route through judicial precedent, statutory construction, and general empirical data to be proved.