A 'TIP' for Responding to Trademark Infringement

When trademark infringement is discovered, the key objective is to stop the infringement. If a cease and desist letter proves insufficient, the way to stop infringement immediately is to file a lawsuit and seek a preliminary injunction. Although a preliminary injunction does not determine in final each party's trademark rights, by foreshadowing later results and forcing the infringer to change its business activities, it often leads to a resolution.

Most courts require the party seeking a preliminary injunction to show: 1) it is likely to prevail on the merits, 2) it will suffer irreparable harm if the no injunction issues, 3) that the balance of hardships from imposing the injunction tips in its favor, and 4) that the public interest favors granting the injunction. Microstrategy Inc. v. Motorola, Inc., 245 F.3d 335 (4th Cir. 2001). In the Ninth Circuit, an alternative standard provides that the moving party may meet its burden by demonstrating either: 1) a combination of probable success on the merits and the possibility of irreparable injury; or 2) that serious questions exist and the balance of hardships tips sharply in its favor. Stuhlbarg Int'l Sales Co., Inc. v. John D. Brush & Co., Inc., 240 F.3d 832, 839-840 (9th Cir. 2001). In all jurisdictions, delay in seeking a preliminary injunction is a factor that favors the infringer because it undercuts the claim of irreparable injury. Citibank, N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985). And some courts measure delay from the time the party first becomes aware or should have become aware of the infringement to the date the preliminary injunction motion is filed. Gasser Chair Co. v. Infanti Chair Mfg. Corp., 60 F.3d 770, 777 (Fed. Cir. 1995). Thus, it is imperative that delay be minimized and quick action be taken to marshal the key evidence supporting a preliminary injunction.