Ch 5: Trademarks

Trademark Modernization Act of 2020 (TM Act)

Clarifies That Presumption of Irreparable Harm Does Exist for Trademark Violations

Historically, a court could issue an injunction based on a trademark owner’s rights without having to establish that the owner suffered irreparable harm due to infringement. In other words, there was a presumption that the court would enter an injunction against the competitor’s continuing use of a confusingly similar trademark so that consumers would not be misled about the source of a good or service. 

In 2006, the Supreme Court held in eBay, Inc. v. MercExchange LLC, 547 U.S. 388 (2006) that irreparable harm could not be presumed in a patent infringement lawsuit. In the years following that decision, a circuit split developed on the application of that holding to trademark infringement. Over a decade after the decision, uncertainty still surrounded eBay’s application to trademark infringement cases with no judicial consensus as to whether the presumption of irreparable harm survived eBay. When seeking an injunction, practitioners had to be prepared to submit evidence in support of irreparable harm, especially when before the U.S. Courts of Appeals for the 1st, 3rd, 9th, and 11th circuits. 

The Act resolves and clarifies the circuit split, stating that in light of the consumer protection concerns that would occur otherwise, a reputable presumption of irreparable harm does exist for trademark violations. This presumption reduces the evidentiary burden on trademark owners and will make it easier for them to obtain injunctive relief, particularly in jurisdictions that have applied eBay to preclude application of the presumption in the trademark context.” [Patricia M. Flanagan and Alex L. Braunstein, “Major Changes to Trademark and Copyright Law Included in Massive Stimulus Package,” January 4, 2021. <>

July 2021 USTPO trademarks manual available here