Ninth Circuit Holds that Irreparable Harm No Longer Presumed in Trademark Cases

Vijay K. Toke

Hiaring + Smith, LLP

Recently, in Herb Reed Enterprises, LLC v. Florida Entertainment Management,¹ the Ninth Circuit held that the long-established historical presumption of irreparable harm no longer applies where plaintiffs seeking preliminary injunctions in trademark infringement cases under the Lanham Act have established a likelihood of success on the merits. In deciding Herb Reed, the Ninth Circuit became the first circuit court of appeals to squarely address whether the U.S. Supreme Court’s decisions in eBay Inc. v. MercExchange, L.L.C.² and Winter v. Natural Res. Def. Counsel, Inc.,³ which addressed the establishment of the right to injunctive relief in a patent case and an environmental case (respectively), abrogated the long-applied rebuttable presumption of irreparable harm in Lanham Act cases.

Most trademark practitioners (this one included) will likely conclude that the Ninth Circuit’s decision in Herb Reed is incorrect, as the historical presumption in Lanham Act cases serves important public policies, takes into account the market realities of trademark and false advertising cases, and is consistent with the purposes of the Lanham Act. Nonetheless, unless and until the Supreme Court either reverses the Ninth Circuit’s decision or Congress amends the Lanham Act to codify the presumption of irreparable harm, the decision in Herb Reed is the law of this circuit. This article will explore the origins of the historical presumption in Lanham Act cases, discuss the eBay and Winter decisions, analyze the Ninth Circuit’s recent decision in Herb Reed, and discuss the potential circuit split that could emerge on this issue. Finally, this article will offer some thoughts on how to establish irreparable harm post-Herb Reed.