It is time to take this problem seriously and reform the remedial rules of the Lanham Act. This article presents a specific proposal for reform that includes the following key changes:
- statutory damages are available as an alternative to actual damages, and this new remedy is available to prevailing trademark owners in all actions under the Lanham Act;
- the defendant's profits remedy is limited to those profits attributable to the infringement, but this remedy is available to prevailing trademark owners in all actions under the Lanham Act (i.e., proof of willful infringement or some other type of bad faith is not required to obtain a profits award);
- punitive damages may be awarded in appropriate cases;
- attorney fees may be awarded at the court's discretion (i.e., the exceptional case standard is eliminated);
- a rebuttable presumption of irreparable harm is codified; and
- state law claims are preempted if the allegedly infringing trademark is federally registered.
Thurmon, Mark A.
"Federal Trademark Remedies: A Proposal for Reform,"
Akron Intellectual Property Journal: Vol. 5
, Article 1.
Available at: https://ideaexchange.uakron.edu/akronintellectualproperty/vol5/iss2/1