Ninth Circuit Reaffirms No Presumption Of Irreparable Harm in Trademark Cases

Mere days after the U.S. Supreme Court declined a petition filed in Herb Reed Enterprises LLC v. Florida Entertainment Management Inc. (Case No. 13-1271) to appeal the Ninth Circuit’s decision that a trademark infringement plaintiff must establish irreparable harm to obtain preliminary injunctive relief, the Ninth Circuit reaffirmed its position that conclusory allegations of harm are insufficient to demonstrate irreparable injury.

In Titaness Light Shop, LLC v. Sunlight Supply, Inc., the Ninth Circuit overturned a district court’s granting of a preliminary injunction to Sunlight Supply, Inc. that barred Titaness Lighting Supply from marketing indoor grow lighting systems under its TITANESS trademark. Sunlight, the owner of a trademark for TITAN CONTROLS for garden equipment, claimed that Titaness’ use of the TITANESS mark in connection with its website, which markets products to marijuana growers, would cause irreparable harm to Sunlight by creating a false association with Titaness and with marijuana products.

On appeal, the Ninth Circuit was not convinced. Specifically, the Ninth Circuit found that Sunlight had failed to show that its customers were even aware of Titaness’ website, or would necessarily associate products on that website with marijuana. The three-judge panel was further skeptical of Sunlight’s claim that association with Titaness’ website would harm its reputation, particularly in view of Sunlight’s admission during oral argument that it was now selling TITAN CONTROLS products on the very same website that gave rise to its false association claim.

Though the Ninth Circuit decision does not cite the Supreme Court’s holding in eBay Inc. v. MercExchange, L.L.C., its reliance on Herb Reed makes clear that the Ninth Circuit has adopted eBay’s holding, i.e., a plaintiff seeking a preliminary injunction cannot presume the existence of irreparable harm but must establish it with evidence. In its latest opinion, the Ninth Circuit provided some guidance for trademark practitioners, stating that trademark owners seeking a preliminary injunction should present actual evidence that its customers would falsely associate its trademark and products with the defendant’s and/or would stop purchasing the trademark owner’s products based on the negative connotations of the defendant’s trademark.