Action on Trademark Relief: Presumption of Harm

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.

Irreparable-Harm-Letter-to-House-Senate[1]

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.

Id.

 

 

26 thoughts on “Action on Trademark Relief: Presumption of Harm

  1. 3

    “Please educate yourself as to patent basics, paying attention to things like “exclusive” and negative rights.” This type of rhetoric is precisely why you shouldn’t be taken seriously. If you cannot explain it, the problem might be that your assertions lack support. I understand actual patent law, but I am trying to understand patent law according to anon, which is not at all clear.

    My question is “what does the patent right mean to you?” which is a question that only you can answer. I know that you didn’t explicitly say “patent rights include the right to an injunction”. (Why did you omit “patent” in your quotation of my post?) However, that is consistent with everything you have posted and apparently aligns with your understanding of the patent right albeit not perfectly in a way that you refuse to explain.

    1. 3.1

      My reply is that “what it means to me” is nothing more than you trying to create an issue that “this” is somehow a “me” thing.

      I have already informed you otherwise.

      As I have also stated (since you appear to not want to take my word for anything), that you should educate yourself outside of my word.

      Asking for my word to be educated, and then not accepting anything I say because you want this to be “my opinion,” is a Br’er rabbit game that I am not going to play.

  2. 2

    There is some sense in distinguishing trademark infringement from patent infringement. But — and this is a HUGE “but” — it’s a given that when you hand out really big guns to a bunch of people, there’s going to be a gun fight.

    Is there any evidence that trademark rights are increasingly being trampled upon in some unjust fashion? I’d like to see it. Otherwise this seems to be more of the usual unseemly business of a corporate interest group hustling for another steroid fix.

    I guess I’m most uncomfortable with the idea of putting this presumption in place in the context of so-called trademark dilution/tarnishment claims which are the most prone to abuse (and probably shouldn’t exist).

  3. 1

    I do not find the argument compelling.

    If anything, this smacks of a lost opportunity to show that the basis of the carryover from the (driven by a different part of the Constitution) IP arena of patent law was infirm in its own right.

    If remedy should be most naturally aligned with the right transgressed, injunctions in the trademark world are F A R less “worthy” than injunctions in the patent world.

    In that sense, this bill appears to be one more of favoritism than of actual Justice (along the lines of ‘we don’t care if the patent folk were screwed, just don’t let that infect us’).

    1. 1.1

      Yes, the basis of carryover of eBay to trademark infringement suits is infirm, as you put it. As jointly professionally noted here: “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.”
      This of course is not the case for the majority of patent suits these days because there is no customer confusion as to the source of origin of the subject goods. Especially in the many patent suits these days where the only source of origin of any such goods is the infringers, not the patent owners.

      1. 1.1.1

        It goes beyond that.

        Trademarks are necessarily involving commerce; thereby directly imparting a clear monetary basis. Patents have no such legal requirement, thereby removing the monetary lever (and making the call for injunctive relief ALL the more stronger).

        Put simply and directly, the harm from patent infringement is not limited to any monetary basis, as is more closely the case with trademarks.

        Further, the right being transgressed – to which the avenue of remedy is to align – is very much different between the Commerce Clause driven trademarks and the Patent Clause driven patents.

        That IP organizations want to champion injunctions for trademarks while turning a blind eye to patents is what — for me — makes the position so much LESS compelling.

        1. 1.1.1.1

          The last paragraph is a bit … odd. What “position” is it that is less “compelling” for you because some other position isn’t being simultaneously adopted by some organization?

          1. 1.1.1.1.1

            It is odd that you find the last paragraph odd.

            Oh wait, it is Malcolm and his cognitive dissonance as to any aspect of patent law being strong. In view of his negativity, it is NOT odd at all that he finds dissonance in wanting some other field to be stronger than patent law (when the considerations involve clearly point in the opposite direction) to be odd. Malcolm finding such odd is perfectly in line with his own oddities.

            1. 1.1.1.1.1.1

              he finds dissonance in wanting some other field to be stronger than patent law (when the considerations involve clearly point in the opposite direction)

              Talk about a failed attempt at mindreading. As I’ve stated numerous times, certain aspects of trademark law are (in my opinion) unconstitutional. I don’t want trademark law to be “stronger than patent law.” I want trademark law to be as strong as it should be.

              I asked you a question and you didn’t answer it. Let me rephrase it and simplify things somewhat so the nuance doesn’t frighten you away again: are you in favor or opposed to a presumption of irreparable harm in trademark law? If you are in favor, does your support for the change in law diminish if the grocery store is out of your favorite flavor of ice cream?

              1. 1.1.1.1.1.1.1

                You imply “mindreading” on my part as some attempt at a putdown, state that you are asking a question AGAIN (and again with an insult as part of a putdown) and then ask a question that you never asked before…

                Do you realize that your words here are in black and white?

                1. To your NOW first time asked question of:

                  are you in favor or opposed to a presumption of irreparable harm in trademark law?

                  I am opposed.

                  The rest of your bleating is dismissed.

        2. 1.1.1.2

          Trademarks are necessarily involving commerce; thereby directly imparting a clear monetary basis. Patents have no such legal requirement, thereby removing the monetary lever (and making the call for injunctive relief ALL the more stronger).

          This is entirely wrong. There is no clear monetary basis that can be imparted to creating a likelihood of confusion in the marketplace. Unlike patent infringement, naked licensing of a trademark is not permissible. How do you assign a monetary value to something that cannot occur? In contrast, the fact that a patent doesn’t have to be practiced doesn’t make it more entitled to an injunction. This shows that the circumstances of patent infringement may or may not mirror the circumstances of trademark infringement. There is no logical reason to ignore the circumstances of patent infringement when considering an injunction. If as you claim, use in commerce means no entitlement to an injunction, practicing a patent should eliminate any right to an injunction.

          1. 1.1.1.2.1

            I am entirely correct – perhaps it is you that is entirely wrong in how you are moving from something that must have a market presence somehow also being devoid of the financial implication of that market presence.

            You ask “How do you assign a monetary value to something that cannot occur?” but you are confused about what it is that “cannot occur.”

          2. 1.1.1.2.2

            If as you claim, use in commerce means no entitlement to an injunction, practicing a patent should eliminate any right to an injunction.

            Not at all.

            There is more to the patent (and thus more that needs remedy) than any use in commerce alone.

            You seek to put a ceiling on what is a floor.

            1. 1.1.1.2.2.1

              Furthe, I never did that use in commerce demands “No injunction.”

              Your over-reading and under-comprehending is breathtaking. It’s almost as if you make a special effort to be so discombobulated when you choose to reply to my posts. Maybe you see “anon” as the author, and you just lose your sense of reason…

              1. 1.1.1.2.2.1.1

                Egads, autocorrect ran away with that.

                The first paragraph should read:

                Further, I never did say that use in commerce demands “No injunction.”

    2. 1.2

      “If remedy should be most naturally aligned with the right transgressed, injunctions in the trademark world are F A R less “worthy” than injunctions in the patent world.”

      Unless one assumes that the right transgressed by patent infringement is the right to an injunction, which assumes the conclusion, you are simply stating your personal views about how things should be.

      Another perspective is that the “remedy should be most naturally aligned with the harm caused by the transgression.”

      Using this framework, patents that are being practiced in the marketplace are more worthy of an injunction than those that are not, which makes comparing trademark infringement, which requires use in commerce, to patent infringement in the abstract inappropriate.

      1. 1.2.1

        Unless one assumes that the right transgressed by patent infringement is the right to an injunction

        Not at all.

        You confuse the fact that the patent right simply aligns with the remedy of what injunction provides.

        There is NO assumption necessary. There is NO projection of personal views as to “should.”

        Using this framework, patents that are being practiced in the marketplace are more worthy of an injunction than those that are not

        Absolutely not – here you completely miss the boat as to the nature of what a patent right entails and what it does not entail (the negative right nature of the patent). You also completely miss the boat as to the direct point that trademarks DO require active participation in the market.

        You have things completely backwards NS II. The comparison provides is directly on point – and absolutely appropriate. Your own “should” is what leads you to a completely unreasonable conclusion.

        1. 1.2.1.1

          Asserting that there is no assumption doesn’t change anything.

          What exactly do you consider to be the “patent right”, if not simply the right to an injunction? As I understand your position, the patent right perfectly aligns with the right to an injunction. As you seem to claim something less than perfect alignment, what is the distinction?

          As I don’t implicitly accept your assertions as fact, telling me that I am missing the boat is not persuasive. Assuming you cannot justify your assertions, I will consider them premises–premises that I do not accept.

          1. 1.2.1.1.1

            Asserting that there is an assumption does not change anything.

            The nature of the patent right and the alignment with what the remedy of injunction brings remains as it is.

            These are NOT “my” assertions.

            I say them because they are true. They are not true because I say them.

            You want veracity (AND refuse to accept something I said because I am the one that said it)? I suggest that you find that yourself apart from what you ask of me, as no matter what I say, your reply will be: “that’s what you say.”

            What you “accept” as to what the patent right means is a YOU problem.

            1. 1.2.1.1.1.1

              The nature of the patent right

              You’re going to have to be a little more clear. Greg is burying you here, by the way.

              1. 1.2.1.1.1.1.1

                Greg….?

                (and your view of burying is so tainted that you just buried NS II – thank you for that, I suppose)

            2. 1.2.1.1.1.2

              I didn’t say I won’t accept anything you say. I said that I won’t accept your assertions as fact. “They are not true because I say them.” I agree with this 100%. However, that is the only thing you have offered so far. Do you have anything to support the assertions made in your posts?

              “Asserting that there is an assumption does not change anything.” I didn’t assert that there is an assumption. I clearly identified the assumption as “patent rights include the right to an injunction.” Is your problem that you don’t like calling it an assumption? Regardless, is this not your premise?

              “The nature of the patent right and the alignment with what the remedy of injunction brings remains as it is.” What exactly is that alignment?

              1. 1.2.1.1.1.2.1

                I didn’t assert that there is an assumption. I clearly identified the assumption as rights include the right to an injunction

                That is a strawman, as I never stated that – and told you clearly that I never stated that.

                You now seek to label this as some type of “my problem” because “I don’t like” you calling it an assumption. Clearly the problem is not my “liking” anything – it is you playing with a strawman and pretending otherwise.

                As to “What exactly is that alignment?

                Please educate yourself as to patent basics, paying attention to things like “exclusive” and negative rights.

                As I stated:

                You want veracity (AND refuse to accept something I said because I am the one that said it)? I suggest that you find that yourself apart from what you ask of me, as no matter what I say, your reply will be: “that’s what you say.”

                What you “accept” as to what the patent right means is a YOU problem.

                1. “Please educate yourself as to patent basics, paying attention to things like ‘exclusive’ and negative rights.” This type of rhetoric is precisely why you shouldn’t be taken seriously. If you cannot explain it, the problem might be that your assertions lack support. I understand actual patent law, but I am trying to understand patent law according to anon, which is not at all clear.

                  My question is “what does the patent right mean to you?” which is a question that only you can answer. I know that you didn’t explicitly say “patent rights include the right to an injunction”. (Why did you omit “patent” in your quotation of my post?) However, that is consistent with everything you have posted and apparently aligns with your understanding of the patent right albeit not perfectly in a way that you refuse to explain.

                2. You say that you understand patent law, but your posts simply do not indicate this.

                  That you want to make this into a type of “anon’s patent law” is a gambit being dismissed.

                  That you might be upset that I am dismissing your gambit and want to cry out “you will not be taken seriously” is also dismissed.

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