October 14, 2014
Authored and Edited by Whitney Devin Cooke
The U.S. Supreme Court has declined a petition filed by the estate of Herb Reed and thereby the opportunity to define the showing of irreparable harm that a trademark plaintiff must make to obtain a preliminary injunction.
In Herb Reed Enterprises LLC v. Florida Entertainment Management Inc. (Case No. 13-1271), the estate of Herb Reed, lead singer of the Platters, appealed the Ninth Circuit’s decision that a trademark infringement plaintiff must establish irreparable harm to obtain preliminary injunctive relief. The Ninth Circuit decision followed a trial court’s ruling that enjoined concert promoter Larry Marshak from using the “Platters”’ famous name in tribute concerts. On appeal, the Ninth Circuit held that the district court’s assessment of the irreparable harm prong had been “cursory and conclusory,” and was not grounded in evidence.
The Supreme Court’s denial of certiorari in Herb Reed means that trademark plaintiffs must continue to await clarification on the impact of the Court’s holding in eBay Inc. v. MercExchange, L.L.C. In that patent case, the Supreme Court found that plaintiffs could not presume irreparable harm once they had shown a likelihood of success on their infringement claims, but needed to actually prove such harm. Ever since, circuit courts, including the Ninth Circuit, have grappled with whether the eBay standard applies equally to trademark cases.
Though the Ninth Circuit decision in Herb Reed did not explicitly state that eBay removed the presumption of irreparable harm, its analysis of the trial court’s decision reached the same result, finding that the trial court was trying to effectively “reinsert the now rejected presumption.” Without further clarification from the Supreme Court, the continued application of eBay to preliminary injunction analyses in trademark cases will have a sizable impact on trademark owners’ ability to obtain preliminary injunctive relief. Under such circumstances, a plaintiff’s unsubstantiated statements about “loss of control over business reputation” and “damage to goodwill” may prove inadequate to demonstrate irreparable harm absent actual proof showing the risk of continued use of an allegedly infringing mark, such as lost sales, angry customers or threats to market share.
Copyright © 2014 Finnegan, Henderson, Farabow, Garrett & Dunner, LLP.
DISCLAIMER: Although we wish to hear from you, information exchanged in this blog cannot and does not create an attorney-client relationship. Please do not post any information that you consider to be personal or confidential. If you wish for Finnegan, Henderson, Farabow, Garrett & Dunner, LLP to consider representing you, in order to establish an attorney-client relationship you must first enter a written representation agreement with Finnegan. Contact us for additional information. One of our lawyers will be happy to discuss the possibility of representation with you. Additional disclaimer information.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.