Page 6 - The Katten Kattwalk - Summer 2025 - Issue 29
P. 6
Punitive Damages in
Trademark Litigation:
A Shift in the Legal
Landscape?
By Floyd A. Mandell
he US Court of Appeals for the Seventh The Seventh Circuit ultimately affirmed the award,
Circuit’s (Seventh Circuit) decision in Curry explaining that state law can authorize punitive
v. Revolution Laboratories, LLC, 124 F.4th damages where a defendant’s conduct meets relevant
T441 (7th Cir. 2024), has drawn attention legal standards.
to the interplay between federal and state law Punitive Damages Analysis
in trademark litigation, particularly regarding the
availability of punitive damages. While the Lanham In Curry, the Seventh Circuit relied on the three-part
Act itself does not authorize punitive awards, Curry test established by the US Supreme Court in BMW
illustrates that state law may supply the basis for of North America, Inc. v. Gore, 517 U.S. 559 (1996), to
such relief when infringement is found to be willful evaluate the constitutionality of the punitive damages
or egregious, and that damages under federal law award. Under Gore, courts typically consider: (1) the
are inadequate to compensate a plaintiff and/or degree of reprehensibility of the defendant’s conduct,
further deterrence is justified . (2) the ratio between punitive and compensatory
1
damages, and (3) the presence of comparable civil
Factual Summary and Outcome penalties under state law.
In Curry, the plaintiff, Charles Curry, owned the First, Curry focused on reprehensibility, which Gore
federally registered “Diesel Test” trademark for identifies as “the most important” factor. The Seventh
a nutritional supplement. In 2016, Revolution Circuit noted that Revolution Labs received repeated
Labs began marketing a product under the same legal warnings but continued using the “Diesel
trademark. Defendants’ internal correspondence Test” mark. Internal emails showed executives were
confirmed that the defendant elected to continue aware of Curry’s rights yet still chose to persist.
using the disputed mark despite receiving cease This evidence led the court to conclude that the
and desist letters confirming confusion among company’s actions were willful — an indication of
consumers. A jury found the defendant liable “heightened culpability” that can justify punitive
for willful infringement, awarding compensatory sanctions under certain state-law principles.
damages as well as $900,000 in punitive damages.
1 The prevailing plaintiff in this case was originally a pro bono client referred to Katten by the Chicago Lawyer’s Committee for Civil Rights Under Law of the Chicago Bar Association.
6 katten.com/fashionlaw
