No Willfulness, No Profits: Lindy Pen v. Bic and the Limits of Trademark Recovery

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.

By Lidiia Levitska  ·  March 6, 2026
Close-up of fine-point ballpoint pens lined up on a white desk
A fine-point pen called 'Auditor's' produced a leading lesson on when infringers must give up their profits. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

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 on remand that Bic’s infringement had been innocent and made without intent to capitalize on Lindy’s trade name. That was consistent with Lindy I, where the Ninth Circuit had already found no evidence of actual confusion and that Bic adopted “Auditor’s fine point” without intent to capitalize on Lindy’s goodwill. Bic was not ignorant of Lindy’s claim: the parties agreed that Bic had used “Auditor’s” back in 1965, before Lindy’s registration issued, and had voluntarily stopped when Lindy objected. But the 1965 exchange had been conducted by outside counsel, which the court read as making Bic’s knowledge of Lindy’s interest attenuated at best, and by the time Bic adopted “Auditor’s Fine Point” fourteen years later its research showed several manufacturers using variants of the word and Lindy asserting no proprietary interest over it in its advertising. Add a weak mark and no actual confusion, and willfulness was not there.

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). Where infringement is deliberate and willful, the court noted, a remedy no greater than an injunction “slights” the public. 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, and here the split between fact and amount did the work. Lindy actually won the fact of damage: a wholesale distributor testified that he would “switch” a Bic pen for a Lindy in customer orders, and the Ninth Circuit held that this was credible proof of the fact of damage, rejecting Bic’s cross-appeal on the point. What Lindy never supplied was the amount. Borrowing tort principles, the court held that damages must be established with reasonable certainty, quoting the Supreme Court for the proposition that damages “are not rendered uncertain because they cannot be calculated with absolute exactness” while insisting that a reasonable basis for computation must still exist. Lindy’s lost-profits calculation was irreparably flawed because it never subdivided its sales data down to the telephone order submarket, the only market where infringement was found, and it would have been error for the district court to pick an arbitrary percentage of total sales to stand in. The accounting theory failed the same way. On profits the burden is genuinely plaintiff-friendly: the plaintiff need only establish the defendant’s gross profits from the infringing activity with reasonable certainty, after which those profits are presumed attributable to the infringement and the defendant must prove up any non-infringing sales and deductions. But Lindy offered only Bic’s total sales, never sales in the infringing market, though discovery had given it Bic’s records to work from. 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 established the fact of damage but never proved the amount: it produced neither its own lost sales in the telephone order market nor Bic’s sales in that market, offering only total-sales figures for both. An injunction was the only remedy left.

How certain must a plaintiff’s damages proof be? The plaintiff must prove both the fact and the amount of damage. Damages need not be calculated with absolute exactness, but a reasonable basis for computation must exist. A court will not award speculative damages, and a plaintiff who offers no adequate evidence of losses or of profits in the infringing market may recover nothing monetary.

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Lidiia Levitska
About the Author

Lidiia Levitska

International Intellectual Property Attorney

Lidiia Levitska focuses on intellectual property dispute resolution, policy, and advisory work across international institutions and government bodies. From 2021 to 2025 she served at the World Intellectual Property Organization (WIPO), managing arbitration cases and overseeing compliance with the Uniform Domain-Name Dispute-Resolution Policy (UDRP), and earlier led IP policy research as a Senior Policy Officer at the American Chamber of Commerce in Ukraine. She holds an LL.M. in International Intellectual Property Law from Chicago-Kent College of Law and an M.A. in Information Technology Law from the University of Tartu, and was admitted to the Ukrainian Bar in 2019.

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