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Trademark Infringement: Demonstrating
Irreparable Harm to Obtain an Injunction
Navigating Inconsistent Court Treatment, Proving Harm With and Without Survey Evidence
THURSDAY, APRIL 21, 2016
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12pm Central | 11am Mountain
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Today’s faculty features:
Jonathan Hudis, Partner, Quarles & Brady, Washington, D.C.
Uli Widmaier, Partner, Pattishall McAuliffe Newbury Hilliard & Geraldson, Chicago
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Trademark Infringement: Demonstrating
Irreparable Harm to Obtain an Injunction
Navigating Inconsistent Court Treatment
Jonathan Hudis
[email protected]
(202) 372-9600
April 21, 2016
Historical Standards for Granting Injunctive Relief
For permanent injunctive relief, federal courts used a fourfactor test, under which the moving party must show that :
1) It had suffered an irreparable injury;
2) Legal remedies were inadequate;
3) Considering the balance of hardships between the plaintiff
and defendant, a remedy in equity was warranted;
4) An injunction would not be against public interest.
See, e.g., Weinberger v. Romero-Barcelo, 456 U.S. 305, 313 (U.S. 1982).
6
Historical Standards for Granting Injunctive Relief
To obtain temporary injunctive relief, federal courts used a
similar four-factor test, under which the moving party must show
that:
1) It had likelihood of success on the merits;
2) It was likely to suffer an irreparable injury;
3) Considering the balance of hardships between the plaintiff
and defendant, a remedy in equity was warranted;
4) An injunction was in the public interest.
See, e.g., Univ. of Tex. v. Camenisch, 451 U.S. 390, 392 (U.S. 1981).
7
Historical Basis for Granting Injunctive Relief in
Trademark Cases
Federal Courts traditionally applied a rather lenient standard
when granting injunctions in trademark cases:
 Once a plaintiff showed it had a valid mark that was infringed — a
likelihood of success on the merits — irreparable harm was
presumed. See Brookfield Communs., Inc. v. W. Coast Entm't Corp.,
174 F.3d 1036, 1066 (9th Cir. 1999) (noting application of
presumption in trademark cases).
8
Historical Basis for Granting Injunctive Relief in
Trademark Cases
• The presumption of irreparable harm in trademark cases can
be traced back to Judge Learned Hand’s assertion in Yale
Electric Corp. v. Robertson, 26 F.2d 972 (2d Cir. 1928),
commenting on the loss of control over goodwill when granting
an injunction in trademark infringement cases:
 “This is an injury, even though the borrower does not tarnish [the
mark], or divert any sales by its use; for a reputation, like a face, is
the symbol of its possessor and creator, and another can use it only
as a mask.”
9
The Traditional Trademark Law Presumption
• Federal Courts Considering whether a Preliminary Injunction
would Issue Required an Essential Fifth Element: a Showing of
a Probability of Success on the Merits at Trial.
• If a Probability of Success on the Merits was Shown, there was
a Presumption that the Requirement of Proving Irreparable
Harm was Satisfied.
McCarthy, T. J., McCarthy on Trademarks and Unfair Competition, §
30:47.30 (4th ed., Thomson Reuters 2014).
10
The Traditional Trademark Law Presumption
Irreparable harm was presumed in trademark cases because:
 Likelihood of confusion puts the goodwill associated with a
trademark owner’s business at risk.
 This type of injury is difficult to quantify.
 Monetary relief is inadequate to compensate for the loss over
control of reputation.
11
What Now is Required for an Injunction ?
• Plaintiff Has Suffered Irreparable Injury.
• Remedies Available at Law, such as Monetary Damages, are
Inadequate to Compensate for that Injury.
• Considering the Balance of Hardships between the Plaintiff and
Defendant, an Equitable Remedy is Warranted.
• The Public Interest would not be Disserved by the Entry of the
Injunction.
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006).
(considering requirements for a permanent injunction)
12
For Purposes of Our Discussion: Points to
Remember about eBay
• eBay was a Patent Case.
• The Relief Sought in eBay was a Permanent Injunction.
• Among the Pronouncements of eBay was that an Injunction is
Not Automatic upon a Finding of Validity and Infringement
(that is, Irreparable Injury must be Proven, and Not Presumed).
eBay v. MercExchange, 547 U.S. at 392-94.
U.S. at 392-94.
13
Another Point to Consider …
 The Supreme Court also has held that a preliminary
injunction cannot be based on the mere possibility of
irreparable harm.
 Irreparable harm must be likely.
Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008).
14
If eBay Effectively Dispensed with the Presumption
of Irreparable Harm in Trademark Cases, then
What is Required to Show Irreparable Harm for
Purposes of Obtaining an Injunction? (McCarthy)
• The TM Owner’s Business Goodwill and Reputation are in Peril.
• Mistaken Ass’n of Negative Impressions of Def’s G/S with Pl.
• Loss of Control over Quality over G/S Associated with the Mark.
McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition, §
30:47.30 (4th ed., Thomson Reuters 2014).
15
If eBay Effectively Dispensed with the Presumption
of Irreparable Harm in Trademark Cases, then
What is Required to Show Irreparable Harm for
Purposes of Obtaining an Injunction? (Ross)
• Loss of Customers.
• Loss of Goodwill / Reputation.
• Actual (Past/Ongoing) or Threatened (In the Future).
Ross, Terence P., Intellectual Property Law: Damages and Remedies §
11.05[2][a][i] (Law Journal Press 2014).
16
If eBay Effectively Dispensed with the Presumption
of Irreparable Harm in Trademark Cases, then
What is Required to Show Irreparable Harm for
Purposes of Obtaining an Injunction? (Banner)
• Risk of Reputational Loss.
• Lack of Quality Control over G/S Associated with the Mark.
• Def’s Acts or Omissions that have a “Tendency to Deceive.”
• Complaints as to Quality of G/S Provided.
• Queries as to Whether the Pl and Def are “Related.”
• Lost Business Due to the Confusion.
Banner, Brian E., Trademark Infringement Remedies, Chs. 4.III.B.,
5.I.C.2., 6.III.A.2. (2d ed., Bloomberg BNA 2014).
17
Proof of Irreparable Harm & TM Preliminary
Injunctions: What Has Worked?
• Cybersquatting Case.
• Def, hired by Pl for eCommerce website design, registered Pl’s
trademark as a domain name in his own name, rather in Pl’s
name. Def refused to transfer domain name without substantial
payment.
• Irreparable harm = lack of full control over websites bearing Pl’s
mark, and possible loss of goodwill.
Jysk Bed’N Linen v. Dutta-Roy, 810 F.3d 767 (11th Cir. 2015).
• Licensee’s sale of unauthorized food products (hamburgers) in
connection with Licensor’s mark, in violation of party’s license
agreement.
Benihana, Inc. v. Benihana of Tokyo, LLC, 784 F.3d 887 (2d Cir. 2015).
18
Proof of Irreparable Harm & TM Preliminary
Injunctions: What Has Worked? (Cont’d)
• False Advertising Case.
• Literally false product performance superiority claims (i.e.,
“more powerful steam”) made on packaging for steam irons.
• Irreparable injury = likely harm to Pl’s brand reputation and
goodwill; the fact that the parties are direct competitors, and that
harm to reputation and goodwill are impossible to quantify.
Groupe SEB USA, Inc. v. Euro-Pro Operating LLC, 774 F.3d 192 (3d Cir. 2014).
19
Proof of Irreparable Harm & TM Preliminary
Injunctions: What Has Worked?
• Substantial Proof of Likelihood of Confusion.
• Risk of Loss of Goodwill and Control over Food Products
associated with Mark.
• Difficulty of Quantifying the Effect on Pl’s Brand during
Nontrivial Period of Consumer Confusion.
Kraft Foods Group Brands LLC v. Cracker Barrel Old Country Store, Inc., 735
F.3d 735 (7th Cir. 2013).
• Impairment of TM Owner’s marketing of its own products and
services.
• Interference of TM Owner’s use of the Mark by Defendant’s
Continuing to Represent to 3rd Parties that Defendant Owned
the Mark.
Mercado-Salinas v. Bart Enters. Int’l, 671 F.3d 12 (1st Cir. 2011).
20
Proof of Irreparable Harm & TM Preliminary
Injunctions: What Has Worked? (Cont’d)
• Removal of UPC Codes.
• Absence of UPC Codes Increased Risk that Consumers Would
Unwittingly Purchase Counterfeit or Defective Merchandise
Associated with the Mark.
Zino Davidoff SA v. CVS Corp., 571 F.3d 238 (2d Cir. 2009).
• Threat to Loss of Sizeable Business in Mexico in Connection
with Pl’s Mark.
• Potential Confusion by Customers as to Who Was Providing
services in Mexico under Pl’s Mark.
• Loss of Control over Technology being Associated with Pl’s
Mark.
Paulsson Geophysical Servs. v. Sigmar, 529 F.3d 303 (5th Cir. 2008).
21
Proof of Irreparable Harm & TM Preliminary
Injunctions: What Has Not Worked?
•
•
•
•
Issuance of Preliminary Injunction Reversed and Remanded for
Further Findings.
District Ct’s Analysis of Irreparable Harm Cursory and Conclusory
Evidence of Loss of Control over Business Reputation and Damage to
Goodwill Could Constitute Irreparable Harm – The Record Here Lacks
Such Evidence.
Evidence of Consumer Confusion is Not Equivalent to Irreparable
Harm.
Herb Reed Enters., LLC v. Fla. Entm’t Mgt., 736 F.3d 1239 (9th Cir. 2013), cert. denied,
135 S. Ct. 57 (2014) [Heavily Criticized by McCarthy].
•
•
Co-Existence of Parties’ Marks and Banking Services for Three Months
with Scant Evidence of Actual Confusion
Pl Failed to Make a Showing of Likelihood of Consumer Confusion
Peoples Fed. Sav. Bank v. People’s United Bank, 750 F. Supp.2d 217 (D. Mass. 2010),
aff’d, 672 F.3d 1 (1st Cir. 2012).
22
Proof of Irreparable Harm & TM Preliminary
Injunctions: What Has Not Worked? (Cont’d)
• Issuance of Preliminary Injunction Reversed and Remanded for
Further Findings.
• District Ct’s Analysis of did Not Include Sufficient Findings on
the Likelihood of Confusion Factors.
• District Ct’s Analysis of did Not Include Sufficient Findings on
Likelihood of Irreparable Harm due to Def’s Ad Using Pl’s Mark
for Re-Sales of Crystal Figurines.
Swarovski Aktiengesellschaft v. Bldg. #19, Inc., 704 F.3d 44 (1st Cir. 2014).
23
Proof of Irreparable Harm & TM Permanent
Injunctions: What Has Worked?
• Def’s use of confusingly similar mark on truck wheels found by
jury to infringe Pl’s mark used in connection engine cylinder
heads.
• Trial court issued permanent injunction, but permitted Def to
continue using infringing mark if accompanied by a disclaimer.
• On appeal, the Sixth Circuit Court of Appeals broadened the
injunction to prohibit all use of Def’s infringing mark.
• Irreparable injury = Pl’s loss of control over the reputation in its
mark, a harm that is neither calculable nor precisely
compensable.
CFE Racing Prods., Inc. v. BMF Wheels, Inc., 793 F.3d 571 (6th Cir. 2015).
24
Proof of Irreparable Harm & TM Permanent
Injunctions: What Has Worked (Cont’d)?
• DJ Pl/Ctrcl Def sold paddles and decorations bearing fraternity
and sorority names, without permission by the Greek fraternal
organizations.
• The trial court’s grant of a permanent injunction, with a few
limited exceptions, was affirmed on appeal.
• Caution: In affirming issuance of the trial court’s permanent
injunction, the Fifth Circuit Court of Appeals stated that “all that
must be proven to establish liability and the need for injunction
is likelihood of confusion – injury is presumed.”
• eBay casts doubt on this reasoning.
Abraham v. Alpha Chi Omega, 708 F.3d 614 (5th Cir.), cert. denied, 134 S. Ct.
88 (2013).
25
Proof of Irreparable Harm & TM Permanent
Injunctions: What Has Worked?
• Unauthorized use of Pl’s ministerial service marks.
• Summary judgment of infringement and permanent injunction
upheld on appeal.
• Caution: In affirming issuance of the trial court’s permanent
injunction, the Eleventh Circuit Court of Appeals stated that
“injury is presumed once a likelihood of confusion has been
established.”
• Once again, eBay casts doubt on this reasoning.
Community of Christ Copyright Corp. v. Devon Park Restoration Branch of
Jesus Christ’s Church, 634 F.3d 1005 (11th Cir. 2011).
26
Proof of Irreparable Harm & TM Permanent
Injunctions: What Has Worked?
• Loss of Control over Pl’s Reputation and Goodwill
• Remedies at Law Inadequate to Compensate for this Type of
Harm
United States Polo Ass’n v. PRL USA Holdings, Inc., 800 F. Supp.2d 515
(S.D.N.Y. 2011), aff’d, 511 Fed. Appx. 81 (2d Cir. 2013).
•
Def’s Website and Domain Name Used Pl’s Mark to Sell
Counterfeit Goods Online
• Remedies at Law Inadequate to Compensate for this Type of
Harm
Audi AG v. D’Amato, 469 F.3d 534 (6th Cir. 2006).
27
Proof of Irreparable Harm & TM Permanent
Injunctions: What Has Not Worked?
• Quinta Real (Mexico company) was permanently enjoined by
the trial court from entering U.S. hotel market, because it would
likely cause confusion with the La Quinta U.S. hotel chain.
• However, La Quinta (U.S. company) already was operating
hotels under its name in Mexico.
• The Ninth Circuit Court of appeals upheld the trial court’s
findings of likely confusion, but vacated the permanent
injunction and remanded the case for the trial court to further
consider the balance of hardships between the two
companies.
La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867 (9th Cir. 2014).
28
THANK YOU
QUESTIONS?
Jonathan Hudis
[email protected]
(202) 372-9600
29
Trademark Infringement: Proving
Irreparable Harm through Survey Evidence
Strafford Live CLE Webinar
April 21, 2016
Uli Widmaier
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
Irreparable Harm
to Obtain Injunctive Relief
• A universal legal requirement, not limited to IP law.
• Federal Judges are not IP specialists, and are
unlikely to view the requirement through
an IP lens.
• Keep in mind the “other” Supreme Court case
on irreparable harm!
• Appealing generically to “trademark harm”
won’t do.
• Think as a lawyer, not an IP lawyer.
31
Harm to marine mammals from
NAVY sonar
• “[P]laintiffs seeking preliminary relief [must]
demonstrate that irreparable injury is likely in the
absence of an injunction.”
• It is impermissible to infer irreparable harm from
strong likelihood of success on the merits.
Winter v. Nat’l Resources Defense Council, Inc., 555
U.S. 7 (2008) (emphasis in original).
32
Irreparable Harm Requirement:
Other Factual Contexts
Pindak v. Dart, 125 F. Supp. 3d 720 (N.D. Ill. 2015).
• Panhandlers’ Sec. 1983/First Amendment claim for
interference with panhandling on public plaza.
• “To obtain permanent injunctive relief, Plaintiffs must
show (1) they are likely to suffer irreparable harm in the
absence of injunctive relief; (2) the balance of equities
tips in their favor; and (3) an injunction is in the public
interest” (citing Winter).
• First Amendment harms are presumed irreparable.
Permanent injunction granted.
33
Irreparable Harm Requirement:
Other Factual Contexts
Shell Offshore Inc. v. Greenpeace, Inc., 709 F.3d
1281 (9th Cir. 2013).
• Claim to prevent Greenpeace from interfering with
Shell’s arctic drilling.
• Same factors as for permanent injunctive relief,
plus likelihood of success on merits.
• Harm requirement met through showing of
“unacceptable risks to human life, property and the
environment.”
34
Irreparable Harm Requirement:
Other Factual Contexts
Yaldo v. Wayne State University, 2015 WL 6082098 (E.D. Mich.
Oct. 15, 2015).
• Student’s suit against medical school for dismissal due to
tardiness and academic misconduct; No irreparable harm
shown under Winter; preliminary injunction for re-enrollment
denied.
• “An injunction should issue only where the intervention of a
court of equity ‘is essential in order effectually to protect . . .
against injuries otherwise irremediable.’”
Quoting Weinberger v. Romero-Barcelo, 456 U.S. 305, 312
(1982) (quoting Cavanaugh v. Looney, 248 U.S. 453, 456 (1919)).
35
What does “irreparable harm”
mean for trademark surveys?
• The traditional view: Showing irreparable harm
is the same as showing via survey that
consumers are likely to be confused, deceived,
or misled.
• Is that view still valid?
• Must something else be shown?
• If so, what would that “something else” be?
36
Guidance from the Case Law?
• No “presumption of irreparable harm based solely on a
strong case of trademark infringement.”
• Evidence of actual confusion “simply underscores
customer confusion, not irreparable harm.”
Herb Reed Enterprises, LLC v. Fla. Ent’ment
Mgmt., 736 F.3d 1239 (9th Cir. 2013).
37
Consumer Confusion
≠
Irreparable Harm?
38
A Catch-22?
• Assume a Lanham Act plaintiff conducts a valid survey
showing likelihood of confusion.
• Before eBay/Winter, that survey would have supported
injunctive relief as a matter of course.
• But a valid likelihood of confusion survey indicates
strong likelihood of prevailing on the merits.
• Can that same survey be used to show irreparable
injury?
• Or is that the type of presumption that eBay/Winter
prohibits?
39
Case Law:
Likelihood of Confusion May Not Be Enough
• “[W]e do not address whether our previous rule . . . ‘that
a trademark plaintiff who demonstrates a likelihood of
success on the merits creates a presumption of
irreparable harm’ . . . is consistent with traditional
equitable principles. In other words, we decline to
decide whether the aforementioned presumption is
analogous to the ‘general’ or ‘categorical’ rules rejected
by the Supreme Court in eBay.”
Voice of the Arab World, Inc., v. MDTV Medical News Now,
Inc., 645 F.3d 26, 34 (1st Cir. 2011).
40
Recent Case Law:
Likelihood of Confusion Is Enough
• Quoting eBay on irreparable harm.
• But holding on irreparable harm: “All that must be
proven to establish liability and the need for an
injunction against infringement is the likelihood of
confusion—injury is presumed” (quoting McCarthy).
Abraham v. Alpha Chi Omega, 708 F.3d 614, 627 (5th Cir.
2013).
41
So which is it?
• “The case law suggests that in [the Fifth Circuit],
in a Lanham Act case, the presumption is
somewhere between shaky and reaffirmed.”
T-Mobile US, Inc. v. AIO Wireless LLC, 991 F. Supp. 2d 888, 928
(S.D. Tex. 2014) (emphasis added).
That assessment was confirmed in ADT, LLC, v. Capital Connect,
Inc., 2015 WL 6549277 (N.D. Tex. Oct. 25, 2015).
42
Use Herb Reed as a wakeup call
• In the Ninth Circuit—Herb Reed (2013)—there is
NO PRESUMPTION!
• Other Circuits are somewhere between the Fifth
and the Ninth.
• McCarthy calls the Ninth Circuit an “outlier”
(Sec. 30:47.30). Don’t count on it!
• The old days of simply arguing “confusion
therefore irreparable harm” are over.
43
T-Mobile (S.D. Tex. 2014):
an instructive case
• “The record is clear that Aio wanted to capture T–Mobile
customers. Through consumer-survey analysis and through
Aio's own focus-group testing, T–Mobile has presented
credible evidence demonstrating that Aio's use of broad
swaths or blocks of Aio plum is likely to, and, at least in some
instances, actually did, cause initial-interest confusion. . . .
This court finds a substantial likelihood of irreparable injury.”
T-Mobile, 991 F. Supp. 2d at 926 (emphasis added).
So far, so good . . .
44
T-Mobile: from confusion to harm?
• “T–Mobile has established a likelihood of confusion. T–
Mobile has shown a likelihood that potential customers will
be confused into thinking that Aio is affiliated or associated
with T–Mobile based on the confused association between
Aio's use of its plum color and T–Mobile's similar use of its
similar magenta color.”
T-Mobile, 991 F. Supp. 2d at 929.
Still so far, so good . . .
45
T-Mobile: “exceptional” showing
needed to get to irreparable injury
• “The court is not ruling that finding a likelihood of confusion
automatically results in finding irreparable injury and issuing
an injunction unless the defendant shows that the case is
exceptional. The narrow ruling is that based on the record
evidence, the likelihood of confusion over source and
affiliation in this market for no-contract wireless
telecommunications services creates a substantial likelihood
of injury that money damages cannot remedy. “
T-Mobile, id. (emphasis added).
46
T-Mobile: injury without presumption?
• “The products and services sold are fundamentally the same.
What separates the companies is their brand identity. The
evidence shows that color is a critical part of that brand
identity. On this record, without presuming injury, this court
finds and concludes that T–Mobile has shown a likelihood of
irreparable injury absent an injunction against Aio's use of
large blocks or swaths of plum in its marketing and stores.”
T-Mobile, id. (emphasis added) (emphasis added).
47
Wells Fargo:
a case that goes the other way?
• Likelihood of confusion survey: admitted into evidence, but
given “very little weight” because of its “serious deficiencies.”
• No preliminary injunction because “Wells Fargo has not
presented any evidence that its brand, reputation, and/or
goodwill will be harmed by defendants' alleged trademark
infringement, false affiliation, and/or false advertising, and
offers only the type of ‘platitudes’ that were rejected by the
Ninth Circuit in Herb Reed.”
Well Fargo & Co. v. ABD Ins. & Financial Serv’s, Inc., 2014 WL
4312021 (N.D. Cal. Aug. 28, 2014).
48
An Instructive Contrast
• T-Mobile: solid and “credible” survey evidence
establishes irreparable harm without resort to
any presumption.
• Wells Fargo: admissible but flawed survey is
given “very little weight” and thus contributes
nothing to the irreparable harm analysis. In
fact, it sabotages the irreparable harm analysis.
49
An Interim Summary
• Pre-eBay cases on showing irreparable harm
through surveys in Lanham Act cases: use with
caution!
• A survey does not necessarily overcome the
prohibition against presuming harm.
• Look for a solid causal nexus between
confusion shown by survey results and
irreparable harm.
50
Causal Nexus—Pom versus Fiji
• Fiji Water Co., LLC. v. Fiji Mineral Water USA,
LLC, 741 F. Supp. 2d 1165 (C.D. Cal. 2010).
• Pom Wonderful LLC. v. Pur Beverages LLC,
2015 WL 10433693 (C.D. Cal. Aug. 6, 2015).
51
Causal Nexus—Pom versus Fiji
• Two trademark infringement cases.
• Both post eBay/Winter.
• Both discuss irreparable harm in infringement
context.
• Fiji (2010) predates Herb Reed (2013) and its
finding that confusion evidence is not enough.
• Pom (2015) discusses Fiji at length, and
specifically in light of Herb Reed.
52
Fiji (2010): Irreparable Harm found
• “Winter's explicit requirement that a party
seeking a preliminary injunction must show
that irreparable harm is likely, not merely
possible, casts some doubt as to whether
that presumption [of irreparable harm from
loss of control over goodwill and reputation],
alone, is sufficient.”
53
Fiji (2010): Irreparable Harm found
• Finding irreparable harm:
“Allowing VITI to sell its bottled water with a trade
dress that is confusingly similar to the FIJI trade dress
jeopardizes FIJI's ability to obtain a reasonable return
on this substantial investment. Even more
concerning, VITI is interfering with and limiting FIJI's
ability to control the reputation of FIJI's recognized
brand and the perception of FIJI's premium quality
bottled water.”
54
Fiji: Survey Evidence
• “FIJI's consumer confusion survey provides substantial
evidence that actual consumers do know and recognize
the FIJI brand, based at least in part on its trade dress.”
• “FIJI submitted a blinded, controlled Eveready consumer
confusion survey of more than 400 respondents at a
sample of malls nationwide, which reported a 24.3%
confusion level after adjusting for the confusion found in
the control group.”
• “VITI's own expert survey . . . does not discredit FIJI's
survey.”
55
Pom (2015):
Interpreting Fiji after Herb Reed
• Recall: Herb Reed (2013) requires “that a
plaintiff adduce evidence of likely irreparable
harm” above and beyond consumer confusion.
• The Fiji court did not expressly make this
funding.
• The Pom court finds that Fiji meets the Herb
Reed standard.
56
Pom’s discussion of Fiji
• “The [Fiji] Court’s reference to plaintiffs' difficulty
obtaining a return on their investment was not a finding
that such a risk [of loss of control over reputation and
goodwill] was sufficient, in itself, to show
irreparable harm. Instead, the court found it significant
that plaintiffs had also made a showing of consumer
confusion that was likely to prevent them from
maintaining their reputation and goodwill with the
public.”
• “Not . . . sufficient”? It sure helped!
57
Pom: no irreparable harm found
• Contrasting Fiji: “[W]hile the Fiji Water court
had before it substantial evidence of consumer
confusion in the form of an expert survey, . . .
Pom Wonderful has proffered no evidence
plausibly suggestive of likely consumer
confusion or damage to its reputation and/or
goodwill.”
58
Pom: Failing to Meet the
Irreparable Harm Requirement
• “Here, there is no evidence of actual confusion,
no survey suggesting actual confusion is likely,
and no evidence that Pom Wonderful's ability
successfully to communicate its healthfulness
message has been impaired. Nor is there any
other type of evidence from which the court can
infer that irreparable harm is likely.”
59
Pom: what does it mean?
• Show evidence of harm separate from confusion—
such as concrete economic injury from loss of
control over reputation and goodwill.
• Produce a survey that creates a solid nexus
between that injury and consumer confusion.
• That combination may establish likely irreparable
injury.
60
Loss of Investment and Survey Evidence:
The Winning Combination?
• Adidas America, Inc. v. Skechers USA, Inc., 2016 WL
591760 (D. Or. Feb. 12, 2016).
• “Skechers' infringement undermines adidas's
substantial investment in building its brand and the
reputation of its trademarks and trade dress. adidas
submitted evidence showing it has spent tens of
millions promoting the Stan Smith, hundreds of
thousands promoting its Supernova shoes, and nearly
forty million annually on goods bearing the Three-Stripe
mark.”
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Adidas v. Skechers
• “adidas's evidence indicating approximately twenty
percent of surveyed consumers believed the
Skechers Onix was made by, approved by, or
affiliated with adidas shows that adidas's carefully
constructed premium brand image is likely to be
confused with or associated with Skechers' value
brand.”
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The Teaching of Adidas
• Similar evidence as in Fiji: showing of
substantial brand investment, plus a solid
confusion survey.
• That combination of evidence may (should?)
succeed to prove irreparable harm.
• Note: Fiji, Pom, and Adidas are Ninth Circuit
Cases, which has the strictest standard
because of Herb Reed.
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Other Instructive Cases
National Financial Partners Corp. v. Paycom Software,
Inc., 2015 WL 3633987 (N.D. Illinois, June 10, 2015).
• eBay/Winter govern in Lanham Act cases.
• “The Court finds the Ninth and Third Circuits'
reasoning persuasive and concludes that NFP must
show a likelihood of irreparable harm to be entitled
to a preliminary injunction” (quoting Winter).
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National Financial Partners:
what needs to be shown?
• “To show irreparable harm, NFP need not
show that it lost business as a result of
Paycom's alleged infringement.”
• Plaintiff’s survey showed 39% confusion.
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National Financial Partners:
a strong survey is enough!
• “The compelling evidence of consumer
confusion supports a finding of irreparable harm.
Where there is such high probability of confusion,
injury irreparable in the sense that it may not be fully
compensable in damages almost inevitably follows,
because the defendant's profits on the infringing items
are often difficult to determine and confusion may
cause purchasers to refrain from buying either product
and to turn to those of other competitors.”
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Another instructive case
Verisign, Inc., v. XYZ.com, LLC, 2015 WL 7430016 (E.D. Va.
Nov. 20, 2015).
• Irreparable harm not shown. Preliminary injunction denied.
• “Plaintiff does not proffer evidence beyond their subjective
belief that Defendants' statements caused harm. Plaintiff
does not submit testimonial evidence via experts or
consumers, and the consumer survey conducted does not
measure whether any statements resulted in economic or
reputational harm.”
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What do these cases stand for?
• In the Ninth Circuit, plaintiff should have a good
confusion survey plus other evidence of harm
that’s solidly linked to the confusion evidence.
• In other Circuits, a strong survey may by itself
suffice to establish irreparable harm. But it’s
best to make a broader showing.
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One thing has that not changed:
Poor Surveys Negate Irreparable Harm
• Preliminary injunction denied because “the focus group and
survey evidence submitted by Scotts was not reliable or
probative of the critical question in this case. “
• “[E]ven if the Vigoro packaging were misleading, the denial of
a preliminary injunction would cause very little harm to
Scotts.”
• The weakness of the survey evidence – even though formally
directed at likelihood of success on the merits – in truth
negated any irreparable harm.
Scotts Co. v. United Industries Corp., 315 F.3d 264 (2002).
That’s as valid as it has always been.
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Takeaways I
• Weak or methodologically flawed surveys are actively
counterproductive.
• Don’t introduce a survey whose design is vulnerable or whose
results are feeble.
• Outside the Ninth Circuit, a strong survey showing consumers
are confused or misled may serve to establish irreparable harm.
But there are no guarantees.
• Your survey may have to establish an “exceptional case” (TMobile) on the merits in order to support a finding of irreparable
harm.
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Takeaways II
• Don’t rely on your survey alone.
• Put in concrete evidence of harm resulting from
confusion: investment in brand, difficulty of getting
consumers back, concrete harm to brand image, etc.
• Get out of the “presumption” mindset, both when
arguing your case and when putting your evidence
together.
• Defendants: many opportunities to use eBay/Winter
and progeny to your advantage.
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Thank you!
Any question?
Uli Widmaier
Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP
200 South Wacker Drive, Suite 2900
Chicago, IL
(312) 554-7923
[email protected]
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