In SecuraComm Consulting, Inc. v. Securacom, Inc. et al, the District Court of New Jersey had found that the defendant infringed the plaintiff's prior rights to the SECURACOMM name and had awarded to the plaintiff, SecuraComm Consulting, Inc. ("SecuraComm Pennsylvania") profits, treble damages and attorney's fees based on a finding that the defendant's infringement had been willful. SecuraComm Pennsylvania provided security system consulting services, while the defendant, Securacom, Inc. ("Securacom New Jersey") used the same name in connection with security and facility management services.

On appeal, Securacom New Jersey did not challenge the District Court's finding of infringement, but challenged the District Court's finding of willful infringement and consequent award of profits, treble damages, and attorney's fees to SecuraComm Pennsylvania. Reviewing the evidence, the Third Circuit reversed the District Court's finding of willfulness. After initially rejecting the claim that arguably abusive litigation tactics supported a finding of willful infringement (for which the court found other remedies available), the Third Circuit observed that there was no evidence in the record that established that Securacom New Jersey knew of SecuraComm Pennsylvania's use of the SECURACOMM name prior to Securacom New Jersey's receipt of a cease and desist letter in 1993. The court opined: "Knowing or willful infringement consists of more than the accidental encroachment of another's rights. It involves an intent to infringe or a deliberate disregard of a mark holder's rights". In this case, SecuraComm Pennsylvania failed to demonstrate that Securacom New Jersey knew that it was copying SecuraComm Pennsylvania's name. The Third Circuit also observed that there was no evidence that Securacom New Jersey's attorneys had specifically advised Securacom New Jersey to conduct a trademark search. Thus, it was clear error to conclude that Securacom New Jersey's failure to conduct a trademark search constituted conduct analogous to willful infringement. Such conduct was at most careless, "[a]nd carelessness is not the same as deliberate indifference with respect to another's rights in a mark or a calculated attempt to benefit from another's goodwill".

Plaintiff SecuraComm Pennsylvania had also argued that Securacom New Jersey's former chief executive officer knew of SecuraComm Pennsylvania, that the knowledge of a corporate officer is imputed to a corporation, and that, as a result, such knowledge should be imputed to Securacom New Jersey, thereby supporting a finding of willfulness. The Third Circuit dismissed this argument, too, noting that there was no evidence suggesting that Securacom New Jersey's former officer had disclosed his knowledge to his successor at the company and that, in any event, imputed knowledge was insufficient to support a finding of bad faith and an equitable monetary award.