IPO, AIPLA, and INTA have joined together to lobby Congress — pushing toward a statutory “fix” that would establish a (rebuttable) presumption of irreparable harm based upon a finding of a likelihood of confusion or a likelihood of dilution. The result then would essentially be that an injunction would generally follow from a finding of a TM violation in the marketplace. To overcome that presumption, an infringer would need to present evidence that the adjudged violation does not cause irreparable harm to the mark holder.
From the letter:
We, the undersigned associations representing trademark owners and the trademark bar, urge the House Judiciary Committee to take up legislation to amend the Lanham Act to reestablish a consistent principle that would make injunctive remedies available in appropriate cases involving trademark counterfeiting, infringement, dilution, false advertising and cybersquatting. This would clarify and make consistent how the Lanham Act is enforced across the country in order to best protect the interests of American consumers and businesses.
Trademarks are source identifiers that inform and protect consumers. The Lanham Act serves dual purposes. The statute protects consumers from the confusion and deception caused by acts of trademark counterfeiting, infringement, dilution, false advertising and cybersquatting. At the same time, the law protects businesses from the damage to their goodwill and reputation that is caused by such acts. Recent
developments in the law of Lanham Act remedies, however, have resulted in inconsistency across judicial circuits that threatens to undermine Congressional objectives in protecting both consumers and businesses from those harms.
Injury in most Lanham Act violations is typically not readily or immediately quantifiable. Injunctive relief (which requires the claimant to meet a four-part test, including a showing of irreparable harm) most often is the only effective remedy to prevent harm to consumers and protect the trademark owner’s reputation. For this reason, historically, U.S. federal courts, when considering a claim under the Lanham Act, almost uniformly applied a rebuttable presumption of irreparable harm upon a finding of liability or, in the context of a preliminary injunction, when liability was found to be probable. A rebuttable presumption of irreparable harm is an important avenue to adequate relief, given the difficulty of quantifying this type of injury.
Yet, in the past decade, a number of federal courts have reversed course and discarded this long-standing rebuttable presumption of irreparable harm even when liability is found. These courts have based their decisions on a Supreme Court opinion involving patent infringement and the U.S. Patent Act — which never addressed injunctive relief under the Lanham Act. Other federal district and circuit courts have declined to extend the patent decision to trademark cases. The differing views of the circuits on this issue have created uncertainty for Lanham Act claimants and an incentive for forum shopping, and the U.S. Supreme Court has declined to grant certiorari to resolve the conflict in the lower courts and clarify the law in this regard.
. . . We hope the[Judiciary] Committee will consider such legislation at the earliest opportunity.
A good source for further reading on this is Anne Gilson LaLonde & Jerome Gilson, Adios! to the Irreparable Harm Presumption in Trademark Law, 107 TRADEMARK REP. 913 (2017) (Not surprisingly, Gilson comes out strongly favoring the old way of doing things). On the other side, find Rebecca Tushnet, What’s the Harm of Trademark Infringement?, 49 AKRON L. REV. 627 (2016). Prof. Tushnet writes:
[T]hose of us who are concerned that the overall level of liability [in TM Law] is too high can take comfort from what has happened since eBay: when applied to trademark, the rule against any presumption in favor of injunctive relief triggered a reexamination of expansive harm theories in particular by focusing courts on the issue of irreparable harm, which has allowed them to make a good start on the problem. Similar reexamination of harm theories was part of the antitrust revolution that substantially changed the shape of antitrust law, offering a possible model for a truly consequential reconfiguration of the law.