Remedies/Damages

• Jurisdiction: Maryland

XX. REMEDIES/DAMAGES

A. Injunctive Relief

One remedy for trademark infringement is injunctive relief. With an injunction, the mark owner has halted the confusion and removed the infringing mark from the marketplace. Courts may be more willing to grant an injunction and less willing to award damages absent competition and a showing of lost sales. Prior to eBay Inc. v. MercExchange, LLC,²²⁴ some courts would presume irreparable harm in patent infringement cases. That changed, and the Supreme Court in dicta applied the requirement that irreparable harm be shown to copyright cases.²²⁵ A few courts have applied the requirement that a trademark plaintiff show, and not merely presume the existence of, irreparable harm,²²⁶ but not all courts have done so.²²⁷

B. Measure of Damages

Damages can be based on the defendant's profits and damages suffered by the mark owner.²²⁸ A damages award under the Lanham Act depends on (1) whether the defendant had the intent to confuse or deceive, (2) whether sales have been diverted, (3) the adequacy of other remedies, (4) any unreasonable delay by the plaintiff in asserting his rights, (5) the public interest in making the misconduct unprofitable, and (6) whether it is a case of palming off.²²⁹ To recover actual damages, a plaintiff must prove that it has in fact been damaged and must also establish a reasonable basis for calculating its damages.²³⁰ The plaintiff need only identify defendant's sales; it is then the defendant's burden to identify any offsetting costs.²³¹

C. Enhanced Damages

The Lanham Act permits treble damages for willful infringement of a registered mark as equity requires.²³² These are not punitive.

D. Attorneys' Fees

The Lanham Act also gives the courts discretion in awarding attorneys' fees, but, as with damages, the burden is high and requires a finding of exceptional circumstances, such as where the defendant intentionally infringed or engaged in vexatious litigation conduct.²³³ A somewhat...