Does eBay Unravel Trademark's Presumption of Irreparable Injury?


When seeking a preliminary injunction against trademark infringement, trademark owners have enjoyed a presumption of irreparable harm once they were able to establish a likelihood of confusion. This has been the universal rule, regardless of the district where the case was filed. A primary reason given for this presumption has been that if a third party uses a confusingly similar mark, the trademark

owner has lost control of its very identity, as well as the goodwill associated with its mark. However, a decision last week in North American Medical Corp. v. Axiom Worldwide, Inc., Case No. 07-11574 (11th Cir. April 7, 2008), calls into question the continuing availability of the presumption.

The decision questions whether trademark infringement plaintiffs can continue to rely on a presumption of irreparable injury once a likelihood of confusion is established. In that case, the plaintiff owned federal trademark registrations for ACCU-SPINA and IDD THERAPY. The defendant included those terms in the metadata for its website so that Internet users who entered either

trademark in an Internet search engine would also find the defendant’s website. Among other claims, North American Medical Corp. sued Axiom Worldwide for trademark infringement for using North American Medical Corp.’s trademarks in Axiom’s metadata and moved for a preliminary

injunction. The district court held that Axiom Worldwide’s acts constituted trademark infringement, and issued a preliminary injunction. Axiom Worldwide appealed the decision to the Eleventh Circuit.

The Eleventh Circuit affirmed the district’s holding that the plaintiff had demonstrated a likelihood of success with respect to the trademark infringement claim, but reversed the injunction. (SEE ARTICLE FOR MORE INFORMATION).

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