Suing for Trademark Infringement Part II: Calculating Damages

By Andrew D. Randol - November 16, 2019 - Technology & IP

In Suing for Trademark Infringement Part I, our Columbus business litigation attorney discussed the elements a plaintiff must prove to win a trademark infringement case. In Suing for Trademark Infringement Part II, our Columbus commercial litigation attorney discusses the monetary awards a plaintiff is entitled to for winning a trademark infringement suit.

A plaintiff who wins a trademark infringement suit is typically entitled to 1) the defendant’s profits; 2) any damages sustained by the plaintiff; and (3) the costs of the action.

Defendant’s Profits

To establish damages equal to Defendant’s profits, all a plaintiff needs to do is prove the defendant’s sales. This usually can be done pretty easily; a defendant is going to have to turn over this information during the discovery process. It is then up to the defendant to prove costs and deductions.

For example, in Ducks Unlimited, Inc. v. Boondux, LLC et al., 2017 WL 3579215 (W.D. TN 2017) the plaintiff Ducks Unlimited, a non-profit corporation dedicated to waterfowl and wetlands conservation, sued Boondux for copyright and trademark infringement when Boondux began selling merchandise bearing a similar duck logo as Duck Unlimited had used for years.

Ducks Unlimited, Inc. v. Boondux, LLC

The two trademarks are strikingly similar, except the Boondux logo is made up of a fishing hook and deer antlers. Needless to say, the court found that Boondux committed trademark infringement. Apart from the similarity of the logos, Ducks Unlimited and Boondux were both selling similar merchandise, such as t-shirts and outdoor gear, and both marketed their products toward people interested in the outdoors and hunting.

At trial, Duck Unlimited established that Boondux had sold $404,116.04 in Boondux branded products. Boondux presented several tax returns showing $145,197 in expenses and costs. Thus, Ducks unlimited was awarded $258,919.04 in damages for defendant’s profits.

The logic in awarding defendant’s profits to plaintiff is to deter future infringement by making trademark infringement unprofitable.

Officers of a Corporation Can Be Personally Liable for a Company’s Trademark infringement

Corporate officers can be liable for trademark infringement if they personally take part in the infringing activity or direct others to do so.[1] Also, a corporate officer who is the sole shareholder, officer, and director of the corporate infringer is personally liable. This makes trademark infringement one of the few areas of the law which holds business owners and officers personally liable for their conduct.

Injunctive Relief

In addition to monetary damages, a plaintiff can also obtain a permanent injunction against a defendant. An injunction is a court ordering a defendant to do or refrain from doing something. The Lanham Act specifically authorizes courts to grant injunctions for trademark infringement claims upon terms as the court may deem reasonable to prevent violations of a trademark holder’s rights. The purpose of granting an injunction for trademark infringement is to restore control of the mark to the rightful owner and prevent confusion of the defendant’s goods or services with plaintiff’s.

Most interestingly, the Lanham Act permits a court to order that all existing infringing articles be destroyed. For instance, in the Ducks Unlimited case, the court ordered that all infringing articles still in the possession of Boondux LLC be destroyed; this would have included all t-shirts and other gear with the infringing Boondux logo. In addition, Boondux was permanently enjoined from using the infringing mark ever again.

Our Columbus Business Litigation Law Firm is Here to Help

Whether you’re attempting to establish a trademark for your business, looking to hold someone else liable for infringing upon your trademark, or you are accused of trademark infringement, our business litigation law firm can assist you with your legal needs. Going it alone can simply be to

[1] Simmons v. Cook, 701 F. Supp. 2d 965, 989–90 (S.D. Ohio 2010).

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