Section 35 of the Lanham Act permits recovery of monetary relief in Lanham Act cases, including the defendant's profits, the plaintiff's damages, and the prevailing party's attorneys' fees and costs (15 U.S.C. § 1117(a)). However, circuit courts of appeal have applied inconsistent tests, rules, and standards when assessing whether to award monetary relief in trademark cases. In particular, courts disagree on whether:

Under Section 35(a) of the Lanham Act, a court may award a plaintiff the defendant's profits from its infringing activities (15 U.S.C. § 1117(a)). Until Congress amended the Lanham Act in 1999, most courts required the plaintiff to prove willful infringement to recover the defendant's profits. However, many courts have interpreted a pair of 1999 amendments to Section 35(a) as eliminating any willful infringement requirement (see Trademark Infringement Profit and Damage Awards Standards By Circuit Chart: Box, The 1999 Amendments to Section 35(a) of the Lanham Act). As a result, circuit courts divide on the significance of the defendant's intent, with some:

Courts also disagree on the role actual confusion plays in assessing an award of the defendant's profits. Although a plaintiff generally does not need to show actual confusion to recover a defendant's profits, the US Court of Appeals for the Second Circuit requires proof of actual confusion in most circumstances, and some courts consider actual confusion as a factor when assessing profit awards.

For a chart setting out how courts in each circuit consider willful infringement and actual confusion in their profit award analyses, see Trademark Infringement Profit and Damage Awards Standards By Circuit Chart.

For a general discussion of profit awards in trademark cases, including a discussion of how courts calculate profit awards, see Practice Note, Trademark Litigation: Monetary Relief: Defendant's Profits.

The Lanham Act allows recovery of any damages sustained by the plaintiff (15 U.S.C. § 1117(a)). As in tort actions, to recover damages in a trademark infringement case, the trademark owner must prove that:

However, courts are divided on whether and when a plaintiff must prove actual confusion to recover damages, with some:

For a chart showing how courts in each circuit consider actual confusion in their damages analyses, see Trademark Infringement Profit and Damage Awards Standards By Circuit Chart.

For a general discussion of damages awards in trademark cases, including a discussion of the different measures of damages in trademark cases, see Practice Note, Trademark Litigation: Monetary Relief: Plaintiff's Damages.

The Lanham Act allows a prevailing party to recover its attorneys' fees in "exceptional" cases (15 U.S.C. § 1117(a)). Traditionally, courts have held that an exceptional case is one in which the unsuccessful party engaged in willful or bad faith conduct. However, this month, the US Court of Appeals for the Fifth Circuit joined the Third and Fourth Circuits in holding that the US Supreme Court's decision in Octane Fitness, LLC v. Icon Health and Fitness, Inc. relaxes the standard for awarding attorneys' fees in Lanham Act cases (Baker v. DeShong, (5th Cir. 2016)) (134 S. Ct. 1749 (2014)). Those circuits do not require bad faith to meet the exceptional case threshold, and will award attorneys' fees where either:

For a discussion of Baker, see Legal Update, Octane Fitness Standard Applies to Awards of Attorneys' Fees in Lanham Act Cases: Fifth Circuit.

For a discussion of Octane Fitness, see Legal Update, Supreme Court Reverses Federal Circuit's Rigid Fee Shifting Standard in Patent Cases.

For a general discussion of attorneys' fee awards in trademark cases, see Practice Note, Trademark Litigation: Monetary Relief: Attorneys' Fees.