When Appealing The Denial Of A Trademark Application To A Federal District Court Of Irreparable Harm Must Be Established By Trademark Owners

December 2, 2013 – The Ninth Circuit has ruled that irreparable harm must be established by a trademark owner, rather than presumed, when seeking a preliminary injunction. In Herb Reed Enterprises, LLC v. Florida Entertainment Management, No. 12-16868, 736 F.3d 1239, 2013 WL 6224288 (9th Cir. 2013), the Court applied the reasoning of the Supreme Court’s holding in, eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), a patent case, to a trademark dispute and eliminated the rule that once a trademark plaintiff demonstrates a likelihood of confusion it is entitled to the presumption that it will suffer irreparable harm from the infringement. See also, Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008). Thus, a plaintiff seeking a preliminary injunction in a trademark case must establish irreparable harm. Herb Reed concerned the long-standing dispute over the trademark and name of the music group “The Platters.” The district court entered an injunction barring defendant’s use of the name in connection with any vocal music group and an appeal followed. Although the Ninth Circuit affirmed the district court’s finding that plaintiff demonstrated a likelihood of success on the merits, the court concluded that the record evidence did not support a determination of likelihood of irreparable harm. “Gone are the days when ‘[o]nce the plaintiff in an infringement action has established a likelihood of confusion, it is ordinarily presumed that the plaintiff will suffer irreparable harm if injunctive relief does not issue.’” Herb Reed, at 20-21; 2013 WL 6224288 at *1250. An important issue left open by the Ninth Circuit is the measure of proof that would satisfactorily establish irreparable harm. In this regard, the court stated that evidence “sufficient to establish a likelihood of irreparable harm” must be proffered (Id. at 21; *1251) and that “[e]vidence of loss of control over business reputation and damage to goodwill could constitute irreparable harm.” Id. at 19; *1250.

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