Pillsbury Winthrop Shaw Pittman

Ninth Circuit eliminates presumption of irreparable injury for plaintiffs seeking preliminary injunctions in trademark cases

By Bobby Ghajar and Marcus D Peterson

Ending years of uncertainty and division among district courts, the Ninth Circuit recently ruled that a trademark plaintiff must establish a likelihood of irreparable harm to obtain a preliminary injunction in a trademark case. In Herb Reed Enterprises, LLC v Fla. Ent. Mgmt., Inc , Case No. 12-16868 (9th Cir. Dec 2, 2013), the court once and for all eliminated the presumption of irreparable harm that trademark plaintiffs had previously enjoyed upon showing a likelihood of success on the merits.

The applicability of that presumption had increasingly been called into question after the Supreme Court’s 2006 ruling in eBay v MercExchange, 547 US 388 (2006), in which the court held that there was no presumption of irreparable harm in determining whether to grant a permanent injunction in patent cases. Two years later, in Winter v Nat’l Resources Defense Council, Inc, 555 US 7 (2008), the Supreme Court held that the same rationale applied to preliminary injunctions — but also in the context of a patent case.

This led to questions regarding whether the presumption continued to exist in other intellectual property cases, including trademark cases. The Ninth Circuit added to that uncertainty with its decision in Marlyn Nutraceuticals, Inc v Mucos Pharma GmbH & Co, 571 F.3d 873 (9th Cir. 2009), in which the court affirmed a preliminary injunction, citing to the ‘presumption’ of irreparable harm without further discussion…

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