Trademark remedies are built around one idea: stop the confusion first, then take back the money. The core remedy is an injunction under 15 U.S.C. § 1116, and the core monetary provision is § 1117(a), which allows recovery of the defendant’s profits, the plaintiff’s actual damages, and the costs of the action. Everything else, trebling, statutory damages, seizure, destruction, attorney fees, is a modifier layered on top of that spine.
The framing matters because trademark law does not compensate you for someone using your word. It compensates you for consumer confusion and the harm that flows from it. That distinction quietly controls how much money changes hands, and it is why the average infringement case ends with an order and a handshake rather than a verdict.
Section 1117(a) opens by conditioning everything on liability plus a notice hurdle in § 1111: an owner of a registered mark who never used the ® symbol or otherwise gave notice recovers no profits and no damages unless the defendant had actual notice of the registration. That is a real trap, and it is the cheapest one to avoid.
Assuming the hurdle is cleared, three buckets are on the table:
The court may then adjust. Profits may be raised or lowered “if the court shall find that the amount of the recovery based on profits is either inadequate or excessive,” and actual damages may be trebled. Both adjustments are expressly compensatory, not punitive, which is the statute’s own language and a meaningful limit on how far a judge can push.
For decades the circuits split over whether a plaintiff had to prove willfulness before reaching a defendant’s profits. The Second Circuit and several others said yes. The Supreme Court ended it in Romag Fasteners, Inc. v. Fossil, Inc. (2020), holding without dissent that § 1117(a) imposes no willfulness precondition for profits in a standard infringement case under § 1125(a). The textual argument was simple: Congress wrote an express willfulness requirement into the dilution clause and nowhere else, so reading one into infringement would rewrite the statute.
Romag is routinely oversold. Justice Gorsuch closed by noting that a defendant’s mental state remains “a highly important consideration in determining whether an award of profits is appropriate,” and § 1117(a) still says recovery is “subject to the principles of equity.” Post-Romag, courts award profits more freely against knowing infringers and still rarely disgorge from a good-faith adopter. What changed is that willfulness became a heavy factor rather than a gate.
The Court also narrowed a different edge of disgorgement in Dewberry Group, Inc. v. Dewberry Engineers Inc. (2025), holding that a profits award under § 1117(a) reaches the defendant’s profits, and a court cannot sweep in the earnings of non-party corporate affiliates simply because they share ownership.
Ordinary infringement and counterfeiting are not the same remedial world. Where the defendant intentionally uses a counterfeit mark, meaning a spurious mark identical to or substantially indistinguishable from a registered mark, § 1117(b) makes treble profits or damages plus attorney fees mandatory absent extenuating circumstances. The discretion disappears.
Because counterfeiters generally keep no records worth subpoenaing, § 1117(c) lets the plaintiff elect statutory damages instead: $1,000 to $200,000 per counterfeit mark per type of goods or services, and up to $2,000,000 per mark per type where the use was willful. The award is whatever the court “considers just,” which is why counterfeiting judgments vary wildly on similar facts.
Two adjacent tools complete the lane. Section 1116(d) authorizes ex parte seizure of counterfeit goods and the records documenting them, granted without notice precisely because notice invites destruction of evidence. Section 1118 authorizes destruction of infringing articles, labels, and the plates used to make them. Cybersquatting sits nearby with its own statutory range under § 1117(d): $1,000 to $100,000 per domain name.
Section 1116(a) gives courts power to grant injunctions “according to the principles of equity and upon such terms as the court may deem reasonable.” For most owners this is the whole point of the lawsuit. Money rarely repairs a mark; only stopping the use does.
eBay Inc. v. MercExchange, L.L.C. (2006) unsettled this. It was a patent case, and it required a four-factor showing, including actual proof of irreparable harm, before a permanent injunction. Courts extended the same reasoning to trademark cases and began demanding evidence that confusion had damaged goodwill, evidence that is by nature diffuse and hard to quantify. Congress answered in the Trademark Modernization Act of 2020, which amended § 1116(a) to create a rebuttable presumption of irreparable harm upon a finding of infringement, or upon a showing of likelihood of success on the merits at the preliminary-injunction stage.
Read that carefully. The presumption is rebuttable, and it does not touch the other three eBay factors: balance of hardships, inadequacy of legal remedies, and the public interest. What it restored is the sensible default that a confused market is, by itself, a harm no damages figure fixes.
Section 1117(a) permits fees to the prevailing party “in exceptional cases.” The Lanham Act never defined the term, and for years courts required bad faith or something close.
Octane Fitness, LLC v. ICON Health & Fitness, Inc. (2014) construed the identically worded fee provision in the Patent Act, § 285, and defined an exceptional case as one that “stands out from others with respect to the substantive strength of a party’s litigating position” or “the unreasonable manner in which the case was litigated,” decided by a district court’s discretion under a preponderance standard rather than clear and convincing evidence. Every circuit to consider the question has since imported Octane into § 1117(a), on the straightforward ground that Congress used the same words. The practical effect is that fees now turn on how weak or how badly litigated a case was, not on proof of malice, and they run in both directions: a defendant dragged through a meritless infringement claim can collect.
The gap between the statute and the docket is wide. Profits require the infringer to have made some. Actual damages require tracing lost sales to confusion, which survey evidence rarely does cleanly. Trebling is discretionary and compensatory-capped. Fees require an exceptional case. The result is that the large majority of trademark disputes resolve on an injunction, a phase-out period, and a coexistence or consent agreement, with little or no money moving. That is not a failure of the remedial scheme. It is the scheme working as designed, since the interest being protected belongs as much to the confused consumer as to the mark owner.
For the pre-litigation step where most of these disputes are actually resolved, see the walkthrough on cease and desist letters below.
What damages can you get for trademark infringement? Under 15 U.S.C. § 1117(a), a prevailing owner may recover three things: the infringer’s profits, the owner’s own actual damages, and the costs of the action. A court may then adjust the profits figure up or down as equity requires, and may award up to three times actual damages. Fees are available only in exceptional cases. Most real recoveries are far smaller than the headline numbers, because proving lost sales caused by confusion is hard.
Do you have to prove willfulness to recover an infringer’s profits? No. In Romag Fasteners v. Fossil (2020), the Supreme Court held that the Lanham Act contains no willfulness precondition for a profits award under § 1117(a) in a standard infringement case. The Court was clear that a defendant’s mental state remains a highly important factor that courts weigh in deciding whether disgorgement is equitable, so innocent infringers still rarely give up profits.
What are statutory damages for counterfeiting? For use of a counterfeit mark, § 1117(c) lets a plaintiff elect statutory damages instead of proving actual loss: $1,000 to $200,000 per counterfeit mark per type of goods or services sold, rising to as much as $2,000,000 per mark per type if the use was willful. This election exists because counterfeiters typically keep no usable sales records. Cybersquatting has its own range under § 1117(d), $1,000 to $100,000 per domain name.
Can you get an injunction for trademark infringement? Yes, and it is the remedy most owners actually want. Section 1116(a) gives courts power to enjoin infringement, and the Trademark Modernization Act of 2020 added a rebuttable presumption of irreparable harm once infringement is found, or once likelihood of success is shown at the preliminary stage. The presumption can be rebutted, and the other eBay v. MercExchange factors still apply.
Going further: How to write a trademark cease and desist letter .
This page is general legal information, not legal advice, and it does not create an attorney-client relationship.
The Third Circuit reads the TMA's presumption of irreparable harm as a bursting bubble: slight rebuttal evidence defeats it, and Nichino's injunction fails.
The Ninth Circuit lets laches bar Lush's trademark infringement and cancellation claims, holding Petrella and SCA Hygiene do not reach the Lanham Act.
A unanimous Supreme Court held that a trademark plaintiff awarded the 'defendant's profits' may recover only the named defendant's profits, not those of its non-party affiliates. The result is a $43 million award vacated and a lesson in how to plead.
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.
The Ninth Circuit became the first court of appeals to declare squarely that trademark plaintiffs no longer enjoy a presumption of irreparable harm. They must prove it, like everyone else seeking an injunction.
The Supreme Court held that repaired, resold spark plugs may keep the maker's trademark if plainly marked used or reconditioned, and denied an accounting of profits absent fraud.
A unanimous Supreme Court held that Nike's broad, irrevocable covenant not to sue mooted a competitor's counterclaim attacking the validity of Nike's Air Force 1 trademark.
When a tire giant rolled out a 'Bigfoot' campaign over a small dealer's prior mark, the Tenth Circuit fashioned a remedy borrowed from the FTC (corrective advertising damages) and capped it at a fraction of the offending ad spend.
A unanimous Supreme Court held that a trademark plaintiff need not prove willful infringement as a precondition to recovering the infringer's profits under Section 35(a), reshaping the calculus of every infringement demand letter.
