ROMAG FASTENERS, INC. V. FOSSIL GRP., INC.: STRICT INTERPRETATION GIVES WAY TO FLEXIBLE CULPABILITY IN TRADEMARK DISPUTES

By: Kieron L. Oliver

I. INTRODUCTION

II. FACTS AND HOLDING

A. The Litigants

B. The Claims

III. BACKGROUND

A. The Lanham Act

B. Second Circuit Precedent

C. Circuit Split

IV. THE SUPREME COURT’S DECISION

A. Statutory Interpretation

B. Applicability of “Principles of Equity”

C. Policy Argument

D. Concurring Opinions

V. ANALYSIS

A. Implications

1. Increased Litigation Incentive for Trademark Owners

2. Potential of Windfalls to Chill Commerce

3. A Trend Towards Textualism in I.P. Law

B. Future Uncertainty: Mens Rea Necessary to Recover Profits 15

VI. CONCLUSION 15

I. INTRODUCTION

In the midst of a global pandemic and social upheavals against police brutality, the Supreme Court has made headlines of its own for decisions concerning a number of divisive issues. However, one intellectual property case, Romag Fasteners, Inc. v. Fossil Group, Inc., seems to have missed its spot in the limelight despite its sweeping ramifications. Despite the failure of the lower courts in reaching a consensus, Justice Gorsuch delivered the unanimous opinion of the court with great brevity, detangling in a mere seven pages the issue which all twelve regional U.S. Circuit Courts of Appeals were evenly split for years. Perhaps commentators have overlooked the importance of this case because of this efficient resolution, or its lack of relevance to agendas on either side of the aisle. One blog described Romag Fasteners as the “least earth-shattering decision of the year.”[1] Despite this lack of enthusiastic coverage, Romag Fasteners carries great weight for domestic and global commerce and evidences a shift towards textualist interpretation in intellectual property law.

At the heart of the issue is the divergence of the role of culpability in trademark law between equitable and textual approaches. Culpability, known formally as mens rea, is a legal concept familiar to anyone with an interest in criminal law. But many may not realize the same spectrum of culpability is equally important in assessing infringement of intellectual property rights. Romag Fasteners deals particularly with the importance of culpability in trademark infringement. Traditionally, courts have held that some degree of bad faith is required to disgorge profits enjoyed by trademark infringers, even allowing reckless infringement to satisfy the need for that particular redress.[2] This requirement, where it has been imposed, is historically backed by the policy that businesses should not be punished for infringing in good faith.[3] However, not every jurisdiction in the United States has agreed, with some treating good faith infringement as a lack of due diligence that does not absolve the infringer of its wrongdoing.[4] The instant case sought to settle whether a bright-line level of intent was necessary, or if the culpability requirement should remain flexible.

II. FACTS AND HOLDING

A. The Litigants

Romag Fasteners, Inc., was founded in 1997 when Howard Reiter invented the company’s signature magnetic fastening snap to fill the demand for wholesale closures that did not require moving mechanisms.[5] The fasteners utilize a unique “magnet system” that uses steel to keep the magnetic force of the snap contained within the metal fastener, creating a strong seal in a smaller size.[6] Romag offers a wide catalog of stock and customized fasteners across industries such as fashion, automotive, and aerospace, and does business on an international scale.[7]

Fossil Group, Inc., known as Fossil, Inc. prior to 2013, is a developer and distributor of consumer fashion accessories such as watches, leather goods, belts, handbags, and sunglasses.[8] Fossil Group offers its products under a wide variety of sixteen proprietary and licensed brands and owns over 200 retail stores internationally.[9] Fossil has posted gross profits around $1 billion over the last five years.[10]

B. The Claims

From 2002 to 2006, Romag sold its snap fasteners to Fossil for use in Fossil’s handbags.[11] However, fastener orders at the end of this period took a decline.[12] In late 2010, Howard Reiter, President of Romag and inventor of the Romag snap fastener purchased four Fossil Handbags at Macy’s in Milford, Connecticut after inspecting the fasteners used in their manufacturing, suspecting that they were counterfeit.[13] Reiter was no stranger to “serendipitous” discovery of his product being infringed upon and subsequent legal action, having filed suit over counterfeit Romag snaps at a JC Penney store in the very same town years earlier.[14] Reiter purchased twelve more bags containing supposed Romag snaps from a Fossil retail store in Clinton, Connecticut.[15] Reiter’s suspicions were confirmed upon close inspection of the snaps used in the bags, which did not meet the dimensions of the true Romag fasteners and contained a period following the phrase “USA Pat” inscribed on the fastener, which Reiter knew should not have been there.[16] After sending a cease-and-desist letter, Fossil and Macy’s did not agree to stop selling the bags containing the counterfeit snaps, spurring this legal action.[17]

In 2010, the U.S. District Court for the District of Connecticut heard the case filed by Romag against Fossil, Inc., Fossil Stores, Inc., Macy’s Inc., and Macy’s Retail Holdings, Inc, alleging patent infringement pursuant to 35 U.S.C. § 271, as well as trademark infringement and unfair trade practices pursuant to the Lanham Act, 15 U.S.C. §§ 1114(1) and 1125(a).[18] The district court ultimately granted a temporary restraining order[19] and later approved a stipulation to convert that ruling into a preliminary injunction.[20] Fossil and Macy’s answered with affirmative defenses, and Fossil raised several counterclaims, seeking declaratory judgment of noninfringement, invalidity, and false patent marking.[21] The district court determined the validity of Romag’s patent and denied the Defendants’ motions for partial summary judgment, but remained uncertain on the issue of willfulness as a necessary precondition to awarding a profits award under a theory of deterring future trademark infringement.[22] A jury found Fossil liable for $90,759.36 under theories of unjust enrichment and deterrence, but the bench disagreed, deciding to uphold the Second Circuit precedent that required the common law precondition of willfulness to disgorge Defendant’s profits.[23] In 2016, the United States Court of Appeals for the Federal Circuit tackled the issue of willfulness as a precondition to disgorging profits, and ultimately followed the Second Circuit precedent as well.[24] In January 2020, the case finally found itself before the Supreme Court.[25] The Court, however, decided to ignore the precedent establishing a precondition of willfulness in trademark infringement, and instead shot down the requirement.[26]

III. BACKGROUND

A. The Lanham Act

The Trademark Act, better known as the Lanham Act (“Act”), was adopted in 1946 in order “to regulate commerce . . . by making actionable the deceptive and misleading use of marks in such commerce.”[27] The Lanham Act has been amended many times since its inception, most notably in 1996 and 1999.[28] The prima facie case established by the statute as well as standing case law, requires (1) proof of a protectible ownership interest in the mark (implying the mark is, in fact, registered), and (2) that the defendant’s use of the mark is likely to cause consumer confusion.[29] Alternatively, a loss of distinctiveness, or dilution, is another basis for a trademark infringement claim where confusion is not necessarily a result.[30] The part of the Act in contention between Romag and Fossil lies in the remedies offered by the statute in § 1117(a), which stipulates that “a violation” pursuant to § 1125(a) and (d) or “a willful violation” pursuant to §1125(c), subject to §§1111 and 1114, and “subject to the principles of equity,” entitles the Plaintiff to recover profits, damages sustained, and costs.[31] It is important to note that the addition of the word “willful” was a part of the 1996 amendments to the Lanham Act, and is a textual choice independent of the 1976 wording in § 1125(a).[32]

B. Second Circuit Precedent

The seminal case on this issue in the Second Circuit, where Romag originated, is George Basch Co. v. Blue Coral, Inc. In this case, the Second Circuit Court of Appeals held that willfulness was a prerequisite to a profits award under theories of unjust enrichment and deterrence because willfulness “expressly define[d]” the deterrence rationale for such an award, and that its necessity had always been the case in the development of trademark law in the Second Circuit.[33] The holding in George Basch was recently upheld in Merck Eprova AG v. Gnosis S.p.A. in 2014, which found that disgorging profits was a proper remedy in a case of willful infringement.[34] However, that court failed to analyze the way culpability affects the appropriateness of a profits award, and simply accepted the precondition as valid by virtue of standing case law.[35]

C. Circuit Split

In addition to the Second Circuit, several other circuits have held the willfulness requirement in trademark disputes to be valid.[36] The Eighth Circuit in particular relies on Second Circuit precedent to espouse the willfulness requirement, and goes further to say that profit awards may not even be considered where injunctions (the “preferred remedy of the Lanham Act”) have not been assessed.[37] The Tenth Circuit follows a similar train of thought and also uses the “principles of equity” to require willfulness because profit disgorgement as provided by the Act is “truly an extraordinary remedy and should be tightly cabined.”[38] The D.C. Circuit invokes a policy justification as well, stating that “deterrence is too weak and too easily invoked a justification for the severe and often cumbersome remedy of a profits award”[39] and that profit disgorgement should serve to “deter the Defendant, yet not be a windfall to the Plaintiff nor amount to punitive damages”[40]

Interestingly, the Ninth Circuit, in 2017, utilized a more holistic interpretation of the statute itself, rather than its jurisdictional counterparts’ policy-driven analyses, to arrive at the opposite conclusion of the Supreme Court.[41] The court held it was improper to negate its longstanding interpretation of willfulness within the “the principles of equity” language found in §1117(a) of the Act simply because the 1996 amendments to the Act introduced the word “willful” under §1125(c) to the statute, citing secondary authority by noted textualist, Justice Antonin Scalia.[42]

The remaining circuits have all held that willfulness is not a precondition to collecting a profits award.[43] In 1988, the Eleventh Circuit held that profit disgorgement was not “dependent on a higher showing of culpability on the part of [the] defendant.”[44] A year later, the Seventh Circuit dispelled the need for willfulness, citing a lack of express requirement, the first to hint at a textualist understanding.[45] The Fifth Circuit later chose not to adopt a bright-line willfulness rule and instead adopted a factor-based approach in determining the appropriateness of a profits award, citing the plain language of §1117(a) of the Act, a reasoning borrowed by the Third Circuit two years later, and the Fourth Circuit, four years later.[46] The Sixth Circuit also adopted this factor-based test, which measures the intent of the infringing party, rather than applying a bright-line rule.[47] The First Circuit took a unique approach, requiring willfulness in infringement where the parties are not direct competitors, but easing that restriction where the parties met that definition.[48] The logic behind this approach is that entities who directly compete can realistically assume they lose actual profit to one another, regardless of intention, while those with indirectly competing products need to show that the infringement was actually intended to cut into the adverse party’s profits.[49]

IV. THE SUPREME COURT’S DECISION

Justice Gorsuch, joined by seven fellow Justices, delivered the Court’s opinion in a matter-of-fact tone, acknowledging that the law has been interpreted differently around the United States, and diving into the statutory language right away.[50]

A. Statutory Interpretation

Hardly two pages into the opinion, Justice Gorsuch pointed out that under §1117(a) of the Act, the statute leaves out the descriptor “willful” in regards to claims arising under §§1125(a) and (d), despite the 1996 amendments injecting the word regarding the §1125(c) dilution claim.[51] The issue is reconciled quickly because the mens rea term exists within the statutory provision in limited places, which the Court used as a foundation to assume the drafters did not intend for the precondition to apply where it does not appear.[52] The Court also relied on a structural interpretation of the Act as a whole, pointing out the presence of more mens rea terms in neighboring sections, such as the increase in statutory damages under §1117(c) for willful violations.[53] The Court posited that the presence of these terms throughout is “all the more telling” in regards to the intent of the drafters.[54]

B. Applicability of “Principles of Equity”

Next, the Court addressed the phrase “principles of equity” found in §1125(a), which Fossil claimed to traditionally contain a showing of willfulness in trademark cases.[55] The Court accepted that to interpret this phrase as such doesn’t directly contradict the language or structure of the statute, despite the presence of other mens rea language.[56] However, the Court continued by unraveling the phrase “principles of equity”, interpreting it as a trans-substantive concept which applies across many topics in law, and isn’t meant to possess some special meaning in the realm of trademark law.[57] The Court cited a number of authorities that have defined the “principles of equity” in the past to show that the idea simply refers to broad, fundamental concepts in law that provide foundation to other law.[58]

The Court also assessed the validity of the willfulness requirement under the pretense that the phrase “principles of equity” may allow the bright-line rule after an interpretation of pre-Lanham Act trademark law.[59] However, the Court quickly dispelled this theory as well by demonstrating that the pertinent case law and secondary authority on the topic was equally confusing and inconclusive prior to the 1946 Act.[60] The Court did accept that the mens rea as it relates to proper remedy is rooted in equitable practices, but ultimately asserted that this relationship is not sufficient to establish a bright-line rule for awarding a profits remedy.[61]

C. Policy Argument

The last bit of wind in Fossil’s litigative sails, per se, is the argument that allowing the precondition to remain flexible and free to interpretation by the circuit court has the potential to open the floodgates on “baseless” claims, and maintaining the willfulness requirement would deter such claims.[62] Romag countered with its own policy argument, alleging that without the inflexible precondition which many jurisdictions have maintained, players in global commerce and manufacturing will be more prudent in regards to trademark infringement.[63] The Court, after its not-so-exhaustive analysis on the subject, took a back seat at the bottom of the seventh page of its opinion, and stated that “each side has a point,” but those arguments should be heard by lawmakers, and not the Court, whose only job is to “read and apply” the law as it stands.[64]

 D. Concurring Opinions

Justice Alito, joined by Justices Breyer and Kagan, trimmed the fat from Justice Gorsuch’s already-slim opinion in a concurrence which agreed that willfulness is a “highly important consideration” in determining a proper remedy, but dispelled the requirement for mens rea, citing the inconsistency of all relevant cases, namely pre-Lanham cases.[65]

Justice Sotomayor, in another concurring opinion, actually read the “principles of equity” as contained in §1117(a) in a way that favors Fossil.[66] She asserted that the relevant case law shows less of a likelihood for a profits award in cases of innocent infringers than the majority opinion claims, and that the “principles of equity” do play a role in determining if profit disgorgement is proper.[67] However, Justice Sotomayor ultimately does agree with the judgment rendered because the majority does not actually prescribe a mens rea for determining proper remedy, leaving her interpretation on the table for lower courts.[68]

V. ANALYSIS

A. Implications

  1. Increased Litigation Incentive for Trademark Owners

Perhaps the most obvious implication of the Court’s decision to lower the necessary mens rea required to disgorge Defendant profits is its potential to create a surge of trademark litigation. Trademark owners with less to prove about an infringer’s mindset will likely be more attracted to litigation, knowing that they may still disgorge profits associated with their mark. These mark owners may find a new option in the playbook that some amici have characterized as “strategic and abusive litigation practices,” depending on the way lower courts choose to interpret the ruling.[69] The lack of a willfulness precondition gives potential plaintiffs an extremely powerful tool to leverage mere allegations of infringement into windfalls from manufacturing partners and clients, even where those allegations are baseless.[70]

2. Potential of Windfalls to Chill Commerce

Legal scholars agree that trademark protections exist to deter malicious conduct on the part of potential infringers, to protect mark owners’ brand equity, and to protect the public from confusion.[71] However, these policies’ needs must not overpower the need for a natural flow of commerce.[72] If trademark owners possess a litigation strategy (or settlement strategy) that gives them massive leverage, it may create a chilling effect on commerce, where large businesses will play it safe by abstaining from dealings with suppliers. This is especially true for industries, like the automobile industry, where independently trademarked and contracted-for components are commonplace, and extensive to a point of risky codependence on suppliers.[73]

So, while the outcome of this case at first glance may seem like a win for the “little guy” everywhere, it actually may hurt smaller businesses over the long-term as large-scale manufacturers transition to producing components in-house, free of supplier marks and, therefore, free of the danger of costly settlements. This is especially true for businesses that operate on an international scale with many facilities, such as Fossil, that likely have difficulties overseeing every aspect of their procurement and manufacturing. Commerce between suppliers and manufacturers may be further hindered where actual profits derived from the infringing component may be difficult to evaluate, and thus a profits award has the potential of far-exceeding any realistic enrichment.[74]

Additionally, potential plaintiffs may further game their litigation strategy to ensure maximum awards.[75] Depending on the nature of the goods incorporating an infringing component, trademark owners may rely on seasonality to plan their attack, or simply hold out as long as possible to boost profit awards.[76] In fact, larger, legally savvy trademark owners, or “trademark bullies” (who have fought to control things as simple as words, shapes, and colors)[77] will now find it easier to troll smaller defendants who either will be forced to accept costly settlements, or get caught in an expensive vortex of litigation, regardless of their intent to infringe.[78]

While these litigation strategies and settlement shakedowns do raise some concern, the Lanham Act does provide a safety net, of sorts. The statute itself allows the court to “enter judgment for such sum as the court shall find to be just, according to the circumstances of the case.”[79]

3. A Trend Towards Textualism in Intellectual Property Law

The outcome of this case will certainly shake up the state of commerce. However, it also represents the emergence of a trend towards textualism in the world of intellectual property law that flips decades of precedent and academic understanding on its head. In their Brief of Amici Curiae presented to the Court, one group of Intellectual Property Lawyers expressed concern with such a rigid textualist understanding of the Lanham Act. Their brief alleges that a decision not to uphold the bright line willfulness requirement would actively ignore centuries of Trademark jurisprudence, which was developed to award profits only after a showing of fraudulent intent.[80] In fact, this brief raises the compelling point that § 1117(a) was the first time Congress explicitly used the “principles of equity” phrase in regards to trademark, evidencing that the 1946 legislature intended for that phrase to mean something, i.e. acknowledging the evolution of the law to require willfulness on part of the infringer, and not serve as a generic placeholder, referring to nothing in particular.[81]

In Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, another recent intellectual property case heard by the Supreme Court, Justice Ginsburg delivered the opinion for the unanimous Court, which reasoned that the phrase “registration . . . has been made,” contained in 17 U.S.C. § 411(a), simply meant the moment the Copyright Register actually registered a copyright, and not the moment of filing an application with the Register, a definition the petitioner proposed through a series of arguments based in grammatical acrobatics and alleged legislative intent, as evidenced by amendment language.[82] In Star Athletica, L.L.C. v. Varisty Brands Inc., the Court again struck down widespread jurisprudence in determining the copyrightability of components of useful articles,[83] which previously required the ability to physically or conceptually separate an artistic component of a useful article, leaving the useful article intact, in order to grant protection. The Court held that applied art need not be mutually exclusive from the utility aspect of an article to be protectable under copyright, and the necessity for conceptual separability was not a part of the plain language of the statute, citing a number of dictionary entries.[84]

This emergence of strict textualism in the interpretation of intellectual property law poses somewhat of a danger to practicing lawyers, law students, and legal scholars alike. The Supreme Court, in Romag, has shown no qualms with overturning an entire area of jurisprudence at common law. Should this trend continue, as statutory contentions like the one in Romag arise amid periodic legislative amendment sessions and changing practices in the global economy, everyone involved in intellectual property law will need to be ready for industry practices to become moot by way of textualist interpretation.

B. Future Uncertainty: Mens Rea Necessary to Recover Profits

It is important to remember that the Court’s decision here does not do away with the effects of mens rea on trademark infringement case remedies. Intent is a highly relevant part of calculating awards in every circuit,[85] and the lower courts will need to decide where they want to draw the line, if they draw a line at all. Justice Sotomayor’s concurrence may serve as a good guidepost for district courts, emphasizing the trends in the common law that often required some showing of bad faith, stooping as low as recklessness, but generally choosing not to punish for good faith or negligence.[86] However, there remains the possibility that some federal districts may choose to ignore this guidance, and allow disgorgement at any level of infringer culpability, which further creates the potential for forum shopping for those with trademark infringement claims. This open-ended decision in Romag may very well create a stalemate between the federal circuits, as each court waits to see how the rest will proceed in trademark infringement cases.

VI. CONCLUSION

The decision in Romag presents an interesting paradox. While it does present itself as a win for one small business, who may otherwise be “bullied” by the big players in global commerce, this ruling presents an equal opportunity for these same large companies to go after the small fish. It isn’t difficult to imagine a small retailer being financially ruined by a supplier savvier to recent changes in trademark law at the district level.

Romag’s policy argument, which stipulates that producers of goods with counterfeits in their supply chain ought to be more wary, may be viewed as the winning side in this case, assuming counterfeiters will not get better at what they do. However, these niche businesses may be losers as well, because the case has also shown the entire intellectual property law community that the Supreme Court is not afraid to ignore centuries of developing jurisprudence. The fact that such foundational principles can be overturned in a “Scorched Earth” manner such as this might not bode well for suppliers like Romag, who may not have the resources to pivot their litigation strategies or business operations as easily as conglomerates like Fossil Group.

At the same time, the emerging trend of textualism in interpreting intellectual property law may not represent doomsday, either. The body of law tackled in this case had certainly become messy despite its clear foundations in the English common law, evidenced, ultimately, by a circuit split across federal jurisdictions. Perhaps “hitting reset” on these rules is not such a bad thing, especially in cases like Romag, which despite their open-endedness, do at least solve one portion of the puzzle. Nevertheless, it will be just as interesting as the decision itself to see where the federal district courts take the future of trademark remedy, and whether the Supreme Court will continue its penchant for the plain text of intellectual property statute.

  1. Ronald Mann, Opinion analysis: Justices reject “willfulness” requirement for requiring trademark infringers to disgorge profits, SCOTUSblog (Apr. 23, 2020, 12:43 PM), https://www.scotusblog.com/2020/04/opinion-analysis-justices-reject-willfulness-requirement-for-requiring-trademark-infringers-to-disgorge-profits/.

  2. Brief of Amici Curiae Intellectual Property Law Professors in Support of Respondents at 2-3, Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492 (2020).

  3. See Saxlehner v. Siegel-Cooper Co., 179 U.S. 42, 42-43 (1900).

  4. Lawrence-Williams Co. v. Societe Enfants Gombault et Cie, 52 F.2d 774, 778 (6th Cir. 1931).

  5. The ROMAG Magnetic Snap, Romag, https://www.romag.com/The-ROMAG-Magnetic-Snap.aspx (last visited Dec. 1, 2020).

  6. Id.

  7. Id.

  8. Fossil Group, Inc. (FOSL), Yahoo Finance (Oct. 1, 2020), https://finance.yahoo.com/quote/FOSL/profile?p=FOSL.

  9. Id.

  10. Id.

  11. Id.

  12. Id.

  13. Romag Fasteners, Inc. v. Fossil, Inc., 3:10-CV-1827 CFD, 2010 WL 4929267, at *2 (D. Conn. Nov. 30, 2010).

  14. Romag Fasteners, Inc. v. J.C. Penney Corp., No. 07-cv-1667 (JBA), 2007 U.S. Dist. LEXIS 87261, at *1 (D. Conn. Nov. 27, 2007).

  15. Id.

  16. Id.

  17. Id.

  18. Romag Fasteners, Inc., 2010 WL 4929267, at *1.

  19. Id. at *4.

  20. Romag Fasteners, Inc. v. Fossil, Inc., 979 F. Supp. 2d 264, 267 (D. Conn. 2013).

  21. Id.

  22. Romag Fasteners, Inc. v. Fossil, Inc., 979 F. Supp. 2d 264, 283 (D. Conn. 2013).

  23. Romag Fasteners, Inc. v. Fossil, Inc., 29 F.Supp. 3d 85, 107-9 (D. Conn. 2014).

  24. Romag Fasteners, Inc. v. Fossil, Inc., 817 F.3d 782, 791 (Fed. Cir. 2016).

  25. Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492 (2020).

  26. See id. at 1495.

  27. 15 U.S.C. § 1127.

  28. 15 U.S.C. § 1125.

  29. See id; see also Dep’t of Parks & Recreation for State of California v. Bazaar Del Mundo Inc., 448 F.3d 1118, 1124 (9th Cir. 2006).

  30. 15 U.S.C. § 1125(c).

  31. 15 U.S.C. § 1117 (emphasis added).

  32. Federal Trademark Dilution Act of 1995, PL 104–98, Sec. 3(a), § 43(c), 109 Stat 985 (1996).

  33. See George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532, 1537 (2d Cir. 1992) (citing Burndy Corp. v. Teledyne Industries, Inc., 748 F.2d 767, 772 (2d Cir. 1984)).

  34. Merck Eprova AG v. Gnosis S.p.A., 760 F.3d 247, 261-62 (2d Cir. 2014).

  35. See id. at 262.

  36. See, e.g., Minn. Pet Breeders, Inc. v. Schell & Kampeter, Inc., 41 F.3d 1242, 1247 (8th Cir. 1994); Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426, 439-41 (9th Cir. 2017); W. Diversified Serv., Inc. v. Hyundai Motor Am., Inc., 427 F.3d 1269, 1272-73 (10th Cir. 2005); ALPO Petfoods, Inc. v. Ralston Purina Co., 913 F.2d 958, 968 (D.C. Cir. 1990).

  37. See Minn. Pet Breeders, Inc. v. Schell & Kampeter, Inc., 41 F.3d 1242, 1247 (8th Cir. 1994) (citing Banff, Ltd. v. Colberts, Inc., 996 F.2d 33, 35 (2d Cir. 1993)).

  38. See W. Diversified Serv., Inc. v. Hyundai Motor Am., Inc., 427 F.3d 1269, 1274 (10th Cir. 2005).

  39. Alpo Petfoods, 913 F.2d at 969.

  40. See id. (citing Foxtrap, Inc. v. Foxtrap, Inc., 671 F.2d 636, 642 (D.C. Cir. 1982).

  41. See Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426, 442 (9th Cir. 2017).

  42. See id. at 442 (citing Antonin Scalia & Bryan A. Garner, Reading Law: The Interpretation of Legal Texts 331 (2012)).

  43. See, e.g., La Quinta Corp. v. Heartland Props. LLC, 603 F.3d 327, 343 (6th Cir. 2010); Synergistic Int’l, LLC v. Korman, 470 F.3d 162, 175 (4th Cir. 2006); Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 173-75 (3d Cir. 2005);  Quick Techs., Inc. v. Sage Group PLC, 313 F.3d 338, 349 (5th Cir. 2002); Roulo v. Russ Berrie & Co., 886 F.2d 931, 941 (7th Cir. 1989); Burger King Corp. v. Mason, 855 F.2d 779, 781 (11th Cir. 1988).

  44. Burger King Corp. v. Mason, 855 F.2d 779, 781 (11th Cir. 1988).

  45. Roulo v. Russ Berrie & Co., 886 F.2d 931, 941 (7th Cir. 1989).

  46. Synergistic Int’l, LLC v. Korman, 470 F.3d 162, 175 (4th Cir. 2006); Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 174 (3d Cir. 2005);  Quick Techs., Inc. v. Sage Group PLC, 313 F.3d 338, 349 (5th Cir. 2002).

  47. See La Quinta Corp. v. Heartland Props. LLC, 603 F.3d 327, 343 (6th Cir. 2010).

  48. Fishman Transducers, Inc. v. Paul, 684 F.3d 187, 196 (1st Cir. 2012).

  49. Id.

  50. Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492, 1494-95 (2020).

  51. Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492, 1495 (2020).

  52. Id.

  53. Id.

  54. Id.

  55. Id.

  56. Romag Fasteners, Inc., 140 S. Ct. at 1495.

  57. Id. at 1496.

  58. See Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492, 1496 (2020). (citing, e.g., 15 U.S.C. § 1069; eBay Inc. v. MercExchange, LLC., 547 U.S. 388, 391, 393 (2006); Holmberg v. Armbrecht, 327 U. S. 392, 395 (1946); Black’s Law Dictionary 1417 (3d ed. 1933); Black’s Law Dictionary 1357 (4th ed. 1951); E. Merwin, Principles of Equity and Equity Pleading (1895); J. Indermaur & C. Thwaites, Manual of the Principles of Equity (7th ed. 1913); H. Smith, Practical Exposition of the Principles of Equity (5th ed. 1914); R. Megarry, Snell’s Principles of Equity (23d ed. 1947)).

  59. Romag Fasteners, Inc., 140 S. Ct. at 1496.

  60. See id. at 1496-97 (citing e.g., Saxlehner v. Siegel-Cooper Co., 179 U.S. 42, 42-43 (1900); Horlick’s Malted Milk Corp. v. Horluck’s, Inc., 51 F.2d 357, 359 (WD Wash. 1931); H. Nims, Law of Unfair Competition and Trade-Marks § 424 (2d ed. 1917)).

  61. See Romag Fasteners, Inc., 140 S. Ct. at 1497.

  62. See id.

  63. See id.

  64. See Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492, 1497 (2020).

  65. See id.

  66. See id.at 1498.

  67. Id.

  68. See id.

  69. Brief of Amici Curiae Intell. Prop. L. Professors in Support of Respondents at 19, Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492 (U.S. 2020) (No. 18-1233).

  70. Id.

  71. Id. at 19-20.

  72. Id.

  73. How Detroit Went Bottom Up, The Am. Prospect (Sept. 19, 2009), https://prospect.org/features/detroit-went-bottom-up/.

  74. See Brief of Amici Curiae Intell. Prop. L. Professors in Support of Respondents at 21, Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492 (U.S. 2020) (No. 18-1233).

  75. Id. at 22.

  76. Id.

  77. Id. at 22 (citing Leach Chan Grinvald, Shaming Trademark Bullies, 2011 Wisc. L. Rev. 625 (2011)).

  78. Id. at 22-23.

  79. 15 U.S.C. § 1117(a); see also Brief of the ABA as Amicus Curiae Supporting Petitioner at 19, Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492 (U.S. 2020) (No. 18-1233).

  80. Brief of Amici Curiae Intell. Prop. L. Professors in Support of Respondents at 4-5, Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492 (U.S. 2020) (No. 18-1233) (citing Cartier v. Carlile, 31 Beav. 292, 297, 54 Eng. Rep. 1151, 1153 (1862); Taylor v. Carpenter, 11 Paige Ch. 292 (NY Ch. 1844)).

  81. See id. at 10.

  82. See Fourth Estate Pub. Ben. Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 888-92 (2019).

  83. Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1014 (2017).

  84. Id.

  85. Brief of the ABA as Amicus Curiae Supporting Petitioner at 20, Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492 (U.S. 2020) (No. 18-1233).

  86. See Romag Fasteners, Inc. v. Fossil Grp., Inc., 140 S. Ct. 1492, 1498 (2020).