Lindy Pen v. Bic — Trademarks | Outside IP Counsel

Q: Does a trademark plaintiff automatically get the infringer's profits?

No. Lindy Pen confirms that an accounting of profits is an equitable remedy granted in light of all the circumstances, not an automatic award. In the Ninth Circuit at the time, it typically required willful infringement, and even willfulness supports but does not compel an award.

After years of litigation over the 'Auditor's' pen mark, the Ninth Circuit confirmed that an accounting of an infringer's profits is an equitable remedy, not an automatic award.

Winning a trademark case is not the same as collecting money for it. Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400 (9th Cir. 1993), is the case that drives the point home. Lindy held a registered mark in “Auditor’s” for fine-point pens; Bic sold a pen it called “Auditor’s Fine Point.” After more than a decade of litigation and multiple trips to the Ninth Circuit, infringement was established — yet Lindy walked away with an injunction and nothing more. In an opinion by District Judge John M. Roll, sitting by designation, the court explained why an accounting of an infringer’s profits is an equitable remedy reserved for the right circumstances, and why a plaintiff who cannot prove its losses with reasonable certainty may recover no damages at all.

At a glance

Case: Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400 (9th Cir. 1993), Nos. 90-55248, 90-55249.
Court: U.S. Court of Appeals for the Ninth Circuit; opinion by District Judge Roll (D. Ariz.), sitting by designation.
Posture: Appeal from the district court’s damages order on remand, the case’s third visit to the Ninth Circuit; cross-appeal by Bic.
Holding: An accounting of profits is an equitable remedy that, in this circuit, generally requires willful infringement; absent willfulness and adequate proof of damages, only injunctive relief is warranted.
Significance: A leading statement that monetary recovery under the Lanham Act is not automatic and that profits and damages each carry their own proof and equity requirements.

A long fight over a small word

The dispute centered on the term “Auditor’s” for ballpoint pens. Lindy had registered the mark; Bic used “Auditor’s Fine Point” to describe one of its pens, and infringement was ultimately found as to certain telephone-order sales channels. But liability was only half the battle. The case returned to the Ninth Circuit repeatedly on the question of remedy, and by this 1993 decision the court was reviewing the district court’s refusal, on remand, to award Lindy either an accounting of Bic’s profits or actual damages. The threshold finding that shaped everything was the district court’s determination — left undisturbed as the law of the case — that Bic’s infringement had been innocent, not willful. Bic was unaware of Lindy’s registered mark, and earlier correspondence between the companies had been held by outside counsel and was unknown to those who chose the name.

Profits as an equitable remedy

The Lanham Act permits a successful plaintiff to recover the defendant’s profits, but the court emphasized that recovery is governed “subject to the principles of equity.” An accounting is not a matter of right. Drawing on circuit precedent, the court explained that an award of profits is appropriate where infringement is “willfully calculated to exploit the advantage of an established mark” — that is, where a defendant deliberately trades on another’s goodwill. In such cases, an injunction alone may “slight” the public interest and the wronged owner. But willful infringement “may support” an award of profits; it does not require one, and the remedy must always be weighed against equitable considerations. Because Bic’s infringement was innocent, the deterrence and unjust-enrichment rationales for disgorgement fell away, and an accounting would have functioned as a penalty rather than a remedy. The court affirmed the denial.

Damages and the burden of proof

Lindy fared no better on actual damages. A trademark plaintiff must prove both the fact and the amount of its injury. The court reaffirmed a plaintiff-friendly principle on quantum — once the fact of damage is shown, doubts about the precise amount are resolved against the infringer, who should not profit from the uncertainty its own wrong created. But that rule presupposes proof that damage occurred and some reasonable basis to estimate it. Lindy, given repeated opportunities, failed to present adequate evidence of its own lost sales or of the portion of Bic’s profits attributable to the infringement. Courts will not award speculative damages, and a record empty of such proof leaves nothing to resolve in the plaintiff’s favor. The Ninth Circuit therefore affirmed the district court across the board and denied Bic’s cross-appeal, leaving the injunction as Lindy’s sole relief.

Open questions

How firmly does willfulness gate profits? Lindy Pen tied an accounting to willful exploitation, but later authority — culminating in the Supreme Court’s Romag Fasteners decision — reframed willfulness as an important factor rather than an absolute precondition.
What proof suffices to estimate damages? The court demanded a non-speculative basis without specifying how thin the evidence may be before the burden shifts to the infringer.
When does an injunction alone “slight” the public? The phrase invites case-by-case judgment about when equity demands more than prospective relief.

Implications

Prove willfulness to reach profits. Especially in the Ninth Circuit’s framework, an accounting historically turned on showing the defendant deliberately exploited the mark.
Build the damages record early. Plaintiffs must marshal concrete evidence of lost sales or attributable profits; courts will not infer a number from infringement alone.
Innocent infringement narrows recovery. A defendant who can show good-faith adoption may face only an injunction, blunting monetary exposure.
Equity governs disgorgement. Even with a winning liability case, profits awards bend to fairness, deterrence, and unjust-enrichment considerations.
Watch the doctrinal evolution. Romag later loosened the strict willfulness prerequisite; Lindy Pen remains essential context for how that standard developed.

Frequently asked questions

Does a trademark plaintiff automatically get the infringer’s profits? No. Lindy Pen confirms that an accounting of profits is an equitable remedy granted in light of all the circumstances, not an automatic award. In the Ninth Circuit at the time, it typically required willful infringement, and even willfulness supports but does not compel an award.

Why did Lindy Pen recover nothing despite proving infringement? The district court found Bic’s infringement was innocent rather than willful, so an accounting of profits was inappropriate. Lindy also failed to prove its actual damages or the portion of Bic’s profits attributable to the infringement with reasonable certainty, leaving an injunction as the only remedy.

How certain must a plaintiff’s damages proof be? The plaintiff must prove both the fact and the amount of damage, though doubts about the precise amount are resolved against a proven infringer. A court will not award speculative damages, and a plaintiff who offers no adequate evidence of losses or attributable profits may recover nothing monetary.