What a Trademark Win Is Worth: Injunctions, Profits, Damages, and Fees Under Section 35
By Casey Scott McKay ·
Winning a trademark case and collecting money from a trademark case are two different achievements, and Section 35 of the Lanham Act, 15 U.S.C. § 1117, explains why. This article walks through the full remedial toolkit: the injunction that most plaintiffs actually get, the Trademark Modernization Act's rebuttable presumption of irreparable harm under Section 1116(a), disgorgement of the infringer's profits after Romag Fasteners and the burden-shifting mechanic that makes disgorgement the plaintiff's best monetary claim, actual damages including corrective advertising under Big O Tire, reasonable royalties, and enhancement bounded by the statutory command that recovery be compensation and not a penalty. It also covers statutory damages in counterfeiting and cybersquatting cases, exceptional-case attorney's fees after Octane Fitness, costs, and prejudgment interest. It explains the circuit-by-circuit factor tests for disgorgement, what the Supreme Court's 2025 decision in Dewberry Group did to affiliate-entity profits, and where the doctrine remains genuinely unsettled. Worked examples show how a profits calculation actually runs from gross sales to judgment. The step-by-step proof mechanics live in the companion guide and checklist; this article is the doctrinal map for counsel valuing a case.
IP and Technology > Trademarks | Article | Published 9 January 2025 - Updated 9 May 2025 | Casey Scott McKay - marksy.us
Summary. Winning a trademark case and collecting money from a trademark case are two different achievements, and Section 35 of the Lanham Act, 15 U.S.C. § 1117, explains why. This article walks through the full remedial toolkit — the injunction most plaintiffs actually get, the Trademark Modernization Act's presumption of irreparable harm, disgorgement of the infringer's profits after Romag, actual damages and corrective advertising, reasonable royalties, enhancement and the no-penalty rule, statutory damages in counterfeiting and cybersquatting cases, exceptional-case attorney's fees after Octane Fitness, costs, and prejudgment interest. It maps the circuit splits, explains what the Supreme Court's 2025 Dewberry decision did to affiliate-entity profits, works a disgorgement calculation from gross sales to judgment, and marks the places where the law is still genuinely unsettled.
Keywords: lanham act section 35 · 15 u.s.c. 1117 · disgorgement of profits · romag fasteners v fossil · willful infringement · corrective advertising damages · big o tire · reasonable royalty · treble damages · exceptional case attorney fees · octane fitness · trademark modernization act · rebuttable presumption of irreparable harm · permanent injunction · counterfeiting statutory damages · prejudgment interest · apportionment of profits · dewberry group
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