trademark preliminary injunction

Adidas Case Informs Importance of Building a Strong Case of Irreparable Harm in Trademark Cases

            The Ninth Circuit’s recent decision in Adidas America, Inc. v. Skechers USA Inc. (2018) reversed a district court’s preliminary injunction concerning Skechers’ use of a design similar to Adidas’ registered three-stripe trademark for sneakers.[1]  Interestingly, the Ninth Circuit accepted the district court’s finding that Adidas was likely to succeed in showing infringement (including a likelihood of confusion), but  reversed the district court’s finding of a likelihood of irreparable harm. This conclusion is simply remarkable given that, until 2006, federal courts generally presumed irreparable harm upon a showing of likelihood of success on a trademark infringement case. 

            The Adidas decision provides important guidance for counsel seeking a preliminary injunction (and by extension, a permanent injunction) as to how to present a convincing case of irreparable harm in a trademark case.  This is especially so in a case (like Adidas) which involves “post-sale confusion.”

[1] The court did affirm a preliminary injunction on a second claim brought by Adidas, for infringement of a different Adidas design for which Adidas has trade dress rights.

Thanks but No Thanks: ‘Citigroup’ and Lessons on Trademark Litigation

A district court decision last month denying a preliminary injunction in a trademark case, Citigroup v. AT&T Svcs., No. 16-cv-433-KBF (S.D.N.Y. Aug. 11, 2016), is notable for several reasons, one of which is that it underscores the effect of eBay v. MercExchange, 547 U.S. 388 (2006), in eliminating the presumption of irreparable harm. (Citigroup later dismissed its suit on Aug. 22, 2016.)

Citigroup sought to protect its trademark THANKYOU, used in its loyalty, redemption and rewards programs by enjoining AT&T over the use of the name AT&T THANKS marketing a similar rewards program for its customers. Citigroup’s mark, registered since 2004, was “incontestable,” so AT&T did not even challenge the validity of Citigroup mark.

The district court found that Citigroup had both failed to establish a likelihood of irreparable harm or a likelihood of success on the merits. The case teaches several important lessons about litigating trademark cases.