Jake Linford, ‘The Path of the Trademark Injunction’

Prior to decisions by the Supreme Court of the United States in eBay, Inc v MercExchange, LLC and Winter v NRDC, appellate courts routinely affirmed the exercise of discretion by district courts to grant injunctive relief in trademark cases. Indeed, if trademark owners made out a prima facie case of infringement, courts presumed the mark owner would suffer irreparable harm in absence of injunctive relief. eBay invoked traditional principles of equity in upending the standard presumption in favor of injunctions in patent cases. Winter urged application of eBay’s four-factor test in all evaluations of injunctive relief. US Courts of Appeals applied eBay’s teaching inconsistently in trademark cases. But the odds of securing an injunction in trademark cases have declined following a crucial decision by the Court of Appeals for the Ninth Circuit, Herb Reed Enters, LLC v Florida Entertainment Management, Inc, which embraced a rigid interpretation of eBay in the trademark context.

In late 2020, as part of an omnibus spending bill, Congress passed and the President signed into law the Consolidated Appropriations Act of 2021. The Act revised the language of 15 USC § 1116, the provision governing courts’ equitable discretion to grant injunctive relief in trademark litigation. The amended language restores the presumption of irreparable harm in both pre- and post-trial contexts. Congress effectively restored the rebuttable presumption of irreparable harm when the mark owner makes out its (prima facie) case of trademark infringement …

Linford, Jake, The Path of the Trademark Injunction (November 12, 2021). Research Handbook on the Law and Economics of Trademarks (Elgar 2022).

First posted 2021-11-15 17:00:27

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