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Trademark Injunction

This page is about trademark injunctions. For further information about intellectual property injunctions, please see our copyright injunction and patent injunction pages.

When someone infringes on your trademark, it can cause significant harm to your business—from immediate monetary losses to long term damage to your business reputation. Trademark infringement cases can be lengthy, and while they are pending an infringer should not be allowed to profit from its infringing activity. Obtaining a preliminary or permanent injunction in your trademark case can be critical to protect your rights and minimize the damage you incur.

In the cases where a trademark cease and desist letter or the filing of a lawsuit cannot or does not stop an infringement, an injunction is a legal remedy that can provide immediate relief. An injunction is a court order that prohibits a party from taking certain actions such as continuing sales of an infringing product. Injunctions can completely bar the use of the trademark by a party or they can have more specific terms.

For trademark injunctive relief, a trademark lawsuit is filed in the form of simultaneous filings of a Complaint and a request for a preliminary injunction pending the outcome of the case. After the outcome of the lawsuit, the injunction can then become a permanent injunction. Trademark injuctive relief is set out in 15 U.S. Code § 1116.

Trademark Injunction Legal Requirements

Obtaining an injunction generally requires a trademark owner to prove the following:

The plaintiff is likely to prevail based on the merits of the claim.

The plaintiff will likely suffer irreparable harm if an injunction is not granted.
The balance of harm weighs in favor of the plaintiff
An injunction serves the public interest.

Often the hardest requirement to meet is irreparable harm. Irreparable harm means that monetary compensation and other legal remedies would not adequately repair the injuries caused by the infringement and, therefore, injunctive relief is necessary.

In the past, courts would presume that irreparable harm would occur once trademark owners sufficiently demonstrated the likelihood of success in their cases. However, in recent years, courts have become significantly stricter when it comes to findings of irreparable harm when deciding whether to grant injunctions in intellectual property cases. Both U.S. Supreme Court and the Ninth Circuit in California have ruled that courts should not presume irreparable harm, but should carefully examine whether irreparable harm would occur in each situation.

Proving Irreparable Harm

Despite the increased obstacles facing trademark owners when it comes to seeking injunctive relief, we know how to develop legal strategies to prove irreparable harm whenever possible. Specifically, we can identify and present evidence of irreparable harm, which can include:

Substantial evidence showing a likelihood of confusion
Evidence of actual confusion
Evidence showing the strong goodwill and reputation of the trademark
Evidence that the trademark is being used to sell an inferior product or service
Evidence that the defendant’s use has impaired your ability to market your own product or service
Evidence that the defendant will not be able to pay monetary damages as a remedy