Step One: Secure your trademark
Step Two: Enforce your trademark
Many start-up companies in the initial stages of developing their brands understand the importance of engaging in Step One and securing their trademark(s). They invest real time and money in creating their brand name, surveying state and national ledgers to ensure their desired trademark is not already actively used, securing a domain name for their online presence, designing and purchasing advertising materials containing their new word mark or logo and applying for state or federal registration of the mark. It almost goes without saying that spending the money to secure legal protection for this investment is worth the cost and provides peace of mind.
After one secures trademark registration, whether it be at the state level, federal level, or both, the protection granted by law is only useful if the owner of the trademark can identify infringers and enforce the protection in the court of law. Oftentimes, the trademark owner is able to come to an agreement with the trademark infringer and settle the dispute. Sometimes, the dispute ends up in litigation.
During the course of trademark infringement litigation, the trademark owner may justifiably wish to prevent the alleged infringer from continuing the use the trademark at issue by filing for injunctive relief. The Trademark Act of 1946 (also commonly referred to as the Lanham Act and codified in the U.S. Code at 15 U.S.C. §1051 et seq.) governing federal trademark protection authorizes the court to grant such preliminary injunctive relief if the court finds that without the preliminary injunction, the trademark owner would suffer “irreparable harm” and the plaintiff is likely to succeed on the merits of the case.
When it came down to proving the trademark owner’s irreparable harm, there was often confusion as to who carried the presumption. Did the plaintiff trademark owner have to present evidence proving irreparable harm? Or did the court presume a trademark owner suffers irreparable harm in the event the trademark is infringed upon, thus leaving the defendant infringer to prove the absence of irreparable harm?
Congress seemed to settle the dispute in its recent enactment of the Trademark Modernization Act of 2020 (TMA). Among making procedural changes to the trademark application process, the TMA inserted language into the Lanham Act clearly establishing a rebuttable presumption of irreparable harm. The language states:
A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation identified in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order.
With the burden of proof now clearly resting on the alleged infringing defendant, the road to enforcing one’s trademark and preventing current and future infringing acts just got a little bit easier.