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To Presume, or Not to Presume, Irreparable Injury in Trademark Disputes Involving
Franchises Following eBay and Winter

Author(s): Scott McIntosh and Jonathan Labukas
Source: Franchise Law Journal , Vol. 36, No. 1 (Summer 2016), pp. 43-68
Published by: American Bar Association
Stable URL: https://www.jstor.org/stable/10.2307/26421639
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To Presume, or Not to Presume, Irreparable
Injury in Trademark Disputes Involving
Franchises Following eBay and Winter
Scott McIntosh and Jonathan Labukas
The recent tenth anniversary of the Supreme Court’s

decision in eBay Inc. v. MercExchange, L.L.C.1 marks an
appropriate time to consider the impact of the eBay de-
cision and the Court’s subsequent decision in Winter v.
Natural Resources Defense Council, Inc.2 on injunctions in
trademark disputes involving franchises.
As most franchise practitioners would acknowledge,
the franchisor’s trademark is one of the most valuable
components of a franchise system. For this reason, one
Mr. McIntosh
of the twenty-three items in the Franchise Disclosure
Document (FDD), specifically Item 13, is devoted to dis-
closures regarding the franchisor’s trademarks.3 More
tellingly, the licensing of a trademark is one of only
three required elements in the definition of a franchise
under the FTC Rule on Franchising and the substantial
majority of state franchise registration, disclosure, and
relationship laws.4
Given the important role of trademarks in franchises,
it is not surprising that a number of franchise disputes,
Mr. Labukas
particularly following termination or expiration of a
1. 547 U.S. 388 (2006).

2. 555 U.S. 7 (2008).
3. 16 C.F.R. Parts 436, 437.
4. Id. In such statutes and regulations, the definition of a “franchise” typically includes the
following three elements: (1) a license to use a trademark; (2) the payment of a fee; and (3) sub-
stantial control exercised by, or assistance provided by, the franchisor. HAW. REV. STAT. ANN.
§ 482E-2 (West); IND. CODE ANN. § 23-2-2.5-1 (West); MINN. STAT. ANN. § 80C.01 (West);
NEB. REV. STAT. ANN. § 87-402 (West); WASH. REV. CODE ANN. § 19.100.010 (West). A few
statutes, including those in Arkansas, Connecticut, and New Jersey, do not require a fee in
their definition of a franchise. ARK. CODE ANN. § 4-72-202 (West); CONN. GEN. STAT. ANN.
§ 42-133e (West); N.J. STAT. ANN. § 56:10-3 (West). Under those laws, the trademark is one
of only two required definitional elements of a franchise. Id.
Scott McIntosh (scott.mcintosh@quarles.com) is a partner and Jonathan Labukas ( jonathan.

labukas@quarles.com) is a senior associate in the Washington, D.C. office of Quarles & Brady,
LLP.
43

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44 Franchise Law Journal • Vol. 36, No. 1 • Summer 2016
franchise agreement, involve trademark claims. Most claims involving trade-

marks in franchise disputes also involve requests for temporary, preliminary,
and/or permanent injunctive relief.5 The four traditional factors for injunc-
tive relief are well known: (1) a substantial likelihood of success on the merits
(or actual success on the merits for a permanent injunction); (2) a likely
threat of irreparable injury absent an injunction; (3) the balance of harms fa-
vors granting an injunction; and (4) the injunction is in the public interest.6
For several decades, when a franchisor established that it was likely to pre-
vail on its claims of trademark infringement, irreparable injury was presumed
and that factor was deemed to be satisfied.7 The presumption of irreparable
injury in franchise disputes involving trademark claims paralleled similar
presumptions that were applied in other trademark infringement cases, as
well as patent and copyright infringement cases.8 However, in eBay, in the
context of a party seeking a permanent injunction on a patent claim, the
U.S. Supreme Court held that an injunction is not automatic upon a finding
of validity and infringement and that irreparable injury must be proven
rather than presumed.9
This article briefly summarizes the holdings, and provides relevant con-
text, of the decisions in eBay and Winter. Next, this article examines how
the various circuits have addressed the presumption of irreparable injury in
trademark cases generally and in franchise cases involving trademark dis-
putes in particular. Subsequently, the article sets forth the systemic reasons
for finding irreparable injury in a franchise trademark dispute without need-
ing to establish individualized irreparable injury. Finally, this article dis-
5. See, e.g.,7-Eleven, Inc. v. Upadhyaya, 926 F. Supp. 2d 614, 617 (E.D. Pa. 2013) (requesting
permanent injunction on claim of trademark infringement by franchisee); TGI Friday’s Inc. v.
Great Nw. Rests., Inc., 652 F. Supp. 2d 763, 765 (N.D. Tex. 2009) (seeking preliminary injunc-
tion to prevent former franchisee from continuing to use plaintiff ’s trademarks).
6. Winter, 555 U.S. at 20; eBay, 547 U.S. at 391; Arborjet, Inc. v. Rainbow Treecare Sci. Ad-
vancements, Inc., 794 F.3d 168, 171 (1st Cir. 2015); Flexible Lifeline Sys., Inc. v. Precision Lift,
Inc., 654 F.3d 989, 994 (9th Cir. 2011).
7. See S&R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 378 (3d Cir. 1992) (“Lack of control
[over its trademarks] amounts to irreparable injury regardless of allegations that the infringer is
putting the mark to better use. . . . Finally, and most importantly for this case, trademark in-
fringement amounts to irreparable injury as a matter of law.”); see also Cerveceria Modelo, S.
A. de C.V. v. Cuvee, 227 F. Supp. 2d 39, 40 (D.D.C. 2002) (“[T]he plaintiffs have established
irreparable harm because trademark infringement raises a presumption of irreparable harm.”)
(internal citations omitted); Merry Maids Ltd. P’ship v. Kamara, 33 F. Supp. 2d 443, 445 (D.
Md. 1998).
8. Ferrellgas Partners, L.P. v. Barrow, 143 F. App’x 180, 191 (11th Cir. 2005) (“A plaintiff
need not show that the infringer acted in such a way as to damage the reputation of the plaintiff.
It is the loss of control of one’s reputation by the adoption of a confusingly similar mark that
supplies the substantial threat of irreparable harm.”); see also LGS Architects, Inc. v. Concordia
Homes of Nev., 434 F.3d 1150, 1155 (9th Cir. 2006) (“In a copyright infringement action, how-
ever, a showing of a reasonable likelihood of success on the merits raises a presumption of irrep-
arable harm.”) (internal citations omitted); Reebok Int’l Ltd. v. J. Baker, Inc., 32 F.3d 1552, 1556
(Fed. Cir. 1994) (“A strong showing of likelihood of success on the merits coupled with contin-
uing infringement raises a presumption of irreparable harm to the patentee.”).
9. eBay v. MercExchange, LLC, 547 U.S. 388, 392–94 (2006).

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Irreparable Injury in Trademark Disputes After eBay and Winter 45
cusses how the irreparable injury factor may be satisfied based upon the cur-
rent legal landscape.
I. eBay and Winter Have Created Uncertainty Regarding the

Longstanding Principle That Irreparable Harm Was Presumed in
Injunction Cases Where a Party Establishes a Likelihood of
Success on the Merits of a Trademark Infringement Claim
In 2006, the Supreme Court issued its decision in eBay Inc. v. Merc-
Exchange, LLC,10 holding, in the context of a motion for a permanent injunc-
tion in a patent infringement action, that the typical four equitable factors
must still be established before a court grants injunctive relief. In that
case, MercExchange owned a business method patent, which it alleged was
being infringed by eBay and another company, Half.com. The district
court found that eBay and Half.com infringed MercExchange’s patent, but
denied its request for an injunction, finding that damages would provide
an adequate remedy. The Federal Circuit reversed. In doing so, it applied
its “general rule that courts will issue permanent injunctions against patent
infringement absent exceptional circumstances.”11 The Supreme Court re-
versed and remanded the case to the district court to apply the “traditional
four-factor framework that governs the award of injunctive relief.”12 In so
doing, it reiterated that the “decision whether to grant or deny injunctive re-
lief rests within the equitable discretion of the district courts, and that such
discretion must be exercised consistent with traditional principles of equity,
in patent disputes no less than in other cases governed by such standards.”13
There were two concurring opinions in eBay that shed significant light on
the context of the issues before the Court. The first concurring opinion,
written by Chief Justice Roberts, agrees with the eBay holding, as well as
the majority opinion’s observation that “ ‘a major departure from the long
tradition of equity practice should not be lightly implied.’ ”14 The Roberts
concurrence, while agreeing that the longstanding historical trend of grant-
ing injunctions where patent infringement has been established “does not en-
title a patentee to a permanent injunction or justify a general rule that such
injunctions should issue,”15 states that courts should nevertheless be mindful
of the longstanding history of granting injunctions and not exercise their dis-
cretion as if writing on a blank slate. Justice Kennedy’s concurrence is more
illuminating, observing that the longstanding practice of granting injunc-
10. Id.
11. Id. at 391 (citation omitted).
12. Id. at 394.
13. Id.
14. Id. at 395 (quoting Weinberger v. Romero–Barcelo, 456 U.S. 305, 320 (1982)).
15. Id. at 395 (emphasis in original).

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tions against patent infringers arose before the advent of “patent trolls.”16 It
then reiterates that in exercising their equitable discretion over injunctions,
“district courts must determine whether past practice fits the circumstances
of the cases before them.”17 It bears noting that there has been no similar
development in trademark law, akin to the advent of “patent trolls,” that
would rationalize a departure from the longstanding presumption of irrepa-
rable harm when a trademark owner demonstrates a likelihood of confusion.
If eBay created the potential need for the presentation of evidence to sat-
isfy the irreparable harm factor in intellectual property injunction cases,
Winter clarified the quantum of evidence that must be supplied in holding
that a party seeking a preliminary injunction must demonstrate that irrepa-
rable harm is not merely possible but “likely.”18
II. The Circuits Have Split Regarding the Issue of Presumption

of Irreparable Harm in Trademark Cases Following
eBay and Winter
Understandably, courts have struggled over whether the eBay line of rea-
soning applies to the injunction analysis in the trademark infringement con-
text. The inconsistent application of eBay appears to stem from a general rec-
ognition that the nature of the harm from trademark infringement differs
from the harm in patent and copyright infringement actions. Accordingly,
some courts have held that the presumption may still apply in the trademark
context. Others have opined that eBay and Winter apply broadly and have
concluded that the presumption of irreparable injury is dead, or at the
very least, is “questionable” post-eBay.19
To date, not all of the thirteen circuit courts have answered the question
of whether the presumption still applies in trademark cases. The courts that
have addressed the issue have reached inconsistent conclusions. With the ex-
ception of the Third, Fifth, Sixth, and Ninth Circuits, the circuit courts have
either sidestepped the issue, including by affirming lower court decisions
based upon specific evidence in the record case that may otherwise support
16. “Patent trolls” own patent portfolios primarily for the purpose of requiring other parties
to obtain licenses to their patents, rather than utilizing the patents themselves in the operation of
their business or in connection with developing products. Justice Kennedy’s concurrence ob-
serves that “[a]n industry has developed in which firms use patents not as a basis for producing
and selling goods but, instead, primarily for obtaining licensing fees.” eBay, 547 U.S. at 396
(Kennedy, J., concurring). He then observes that in cases of infringement where the patent cov-
ers a small part of an item and the patent holder seeks to exert undue leverage in negotiations for
licensing fees, legal damages may be a sufficient and adequate remedy. Id. at 396–97. On the
other hand, the historical practice of granting injunctions to remedy patent infringement may
continue to suit circumstances that “bear substantial parallels to litigation the courts have con-
fronted before.” Id. at 396.
17. Id. at 397.
18. Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 21–22 (2008).
19. Burger King Corp. v. Cabrera, No. 10-20480-Civ., 2010 WL 5834869, at *8 (S.D. Fla.
2010), report and recommendation adopted, No. 10-20480-Civ., 2011 WL 677374 (S.D. Fla. 2011).

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(or refute) a finding of irreparable harm; questioned the issue, but not taken
any definitive position on it; or have not yet had the opportunity to opine on
the issue. This wide variation in approaches by the circuits has left many
feeling that they are treading in unsettled waters.20
A. The Fifth Circuit Has Specifically Retained the Presumption of Irreparable

Injury and the Sixth Circuit Appears to Have Followed Suit
To date, only one circuit court has specifically come out in favor of retain-
ing the long-standing presumption of irreparable injury in trademark injunc-
tion cases. Despite previously avoiding the “difficult question” of whether
the presumption survived eBay,21 the Fifth Circuit has reaffirmed the pre-
sumption of irreparable injury in trademark infringement actions.22
In Abraham v. Alpha Chi Omega, the Fifth Circuit reviewed a district court’s
order granting injunctive relief in a trademark infringement action concerning
the use of fraternity and sorority names on decorative paddles given to fraternity
and sorority members during the initiation process.23 After dispensing with an
argument that laches prevented the issuance of the preliminary injunction, the
Fifth Circuit concluded that the irreparable injury element is presumed when a
plaintiff shows a likelihood of confusion for purposes of a Lanham Act claim.24
In doing so, the Fifth Circuit quoted a leading treatise on trademarks, stating
“[a]ll that must be proven to establish liability and the need for an injunction
against infringement is the likelihood of confusion—injury is presumed.”25
Nevertheless, despite the clear proclamation from the Fifth Circuit that
injury is to be presumed upon a finding of likelihood of confusion, some dis-
trict courts within the Fifth Circuit have questioned the appropriateness of
the presumption. For example, in T-Mobile US, Inc. v. AIO Wireless LLC,26
the U.S. District Court for the Southern District of Texas explained that
“[t]he case law suggests that in [the Fifth Circuit], in a Lanham Act case,
the presumption is somewhere between shaky and reaffirmed.”27 The district
court then explained that
20. For a good overview of decisions during the first five years following eBay, see Ronald T.
Coleman, Jr., Trishanda L. Treadwell, and Elizabeth A. Lloyd, Applicability of the Presumption of
Irreparable Harm After eBay, 32 FRANCHISE L.J. 3 (2012).
21. Paulsson Geophysical Servs., Inc. v. Sigmar, 529 F.3d 303, 313 (5th Cir. 2008) (“We have no
need to decide whether a court may presume irreparable injury upon finding a likelihood of confu-
sion in a trademark case, a difficult question considering the Supreme Court’s opinion in eBay.”).
22. See Abraham v. Alpha Chi Omega, 708 F.3d 614 (5th Cir. 2013); but see Eastman Chem.
Co. v. Plastipure, Inc., 969 F. Supp. 2d 756 (W.D. Tex. 2013), aff ’d, 775 F.3d 230 (5th Cir.
2014) (affirming lower court decision finding that the presumption had been abandoned).
23. Abraham, 708 F.3d at 617.
24. Id. at 627.
25. Id. (quoting 5 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 30:2 (4th ed.
2001)); see also Emerald City Mgmt., L.L.C. v. Kahn, No. 4:14-CV-358, 2014 WL 3809660,
at *1 (E.D. Tex. Aug. 1, 2014), aff ’d, 624 F. App’x 223, 2015 WL 8592500 (5th Cir. 2015)
(“Since the parties are using the identical mark, Downtown Fever, in Texas, a likelihood of con-
fusion in Texas is presumed.”).
26. 991 F. Supp. 2d 888 (S.D. Tex. 2014).
27. Id. at 928.

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[t]he court is not ruling that finding a likelihood of confusion automatically results
in finding irreparable injury and issuing an injunction unless the defendant shows
that the case is exceptional. The narrow ruling is that based on the record evi-
dence, the likelihood of confusion over source and affiliation in this market for
no-contract wireless telecommunications services creates a substantial likelihood
of injury that money damages cannot remedy.28
The Sixth Circuit’s holdings, although not explicitly affirming the pre-
sumption of irreparable harm in the trademark context following eBay, ap-
pear nevertheless to have employed an approach that is for all intents and
purposes synonymous with the application of the presumption, suggesting
that the presumption remains viable. For example, in Lucky’s Detroit, LLC v.
Double L, Inc.,29 after recognizing the application of the traditional four-
factor test, and even citing eBay on that point, the Sixth Circuit noted, in af-
firming a district court’s grant of a permanent injunction, “[i]n trademark in-
fringement cases, a likelihood of confusion or possible risk to the requesting
party’s reputation satisfies the irreparable injury requirement.”30 Nonethe-
less, the Sixth Circuit analyzed the district court’s findings of irreparable
harm, again citing eBay, and concluded that permanent injunctive relief
was warranted.31 Because the Sixth Circuit has not yet conclusively deter-
mined the ongoing validity of the presumption,32 although it appears to be
leaning that way, many district courts within the Sixth Circuit continue to
apply the presumption in trademark infringement cases.33
Although other courts, mainly on the district level, have signaled that the
presumption of irreparable injury may still be appropriate in trademark in-
28. Id. at 929.

29. 533 F. App’x 553 (6th Cir. 2013).
30. Id. at 555 (citing Wynn Oil Co. v. Am. Way Serv. Corp., 943 F.2d 595, 608 (6th
Cir.1991)).
31. Id. at 560 (“[W]e conclude that there is sufficient evidence that customers will be confused
by both parties’ use of the marks, and thus Double L made a sufficient showing that it would
suffer irreparable harm if LD continues to use the mark.”).
32. See Audi AG v. D’Amato, 469 F.3d 534 (6th Cir. 2006) (applying four-factor test in grant-
ing injunction, but failing to address whether irreparable harm could be presumed following
eBay); Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d 377, 381–82 (6th Cir.
2006) (concluding, without discussing eBay, that irreparable harm ordinarily follows from like-
lihood of confusion or risk to reputation).
33. Jae Enters., Inc. v. Oxgord Inc., No. 5:15-CV-228-TBR, 2016 WL 319877, at *11 (W.D.
Ky. Jan. 25, 2016) (recognizing that “the Sixth Circuit does not require a particular finding of
the likelihood of irreparable harm to support injunctive relief in trademark infringement cases
when there is a likelihood of success on the merits[,]” but concluding that the presumption
was not warranted as the plaintiff had failed to demonstrate a likelihood of success on the mer-
its); Pond Guy, Inc. v. Aquascape Designs, Inc., No. 13-13229, 2014 WL 2863871, at *13 (E.D.
Mich. June 24, 2014) (stating that “[i]n the Sixth Circuit, a showing of a likelihood of confusion
or possible risk to a plaintiff ’s reputation is sufficient to create a presumption of irreparable
harm in the preliminary injunction analysis in the context of trademark infringement” and dis-
tinguishing eBay, noting “eBay, however, was a patent case, and the Sixth Circuit has not applied
the rule laid out there to trademark cases”); Eat BBQ LLC v. Walters, No. CIV. 12-71-GFVT,
2012 WL 5835679, at *5 (E.D. Ky. Nov. 16, 2012) (“Under the trademark infringement frame-
work, once a moving party has demonstrated a likelihood of confusion, irreparable injury is
presumed.”).

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fringement actions, the Fifth Circuit, thus far, is the lone court of appeals
specifically upholding this long-standing principle, with the Sixth Circuit
leaning in that direction.
B. The Third and Ninth Circuits Have Specifically Rejected the

Presumption of Irreparable Injury
In December 2013, relying on eBay and Winter, the Ninth Circuit, in Herb
Reed Enterprises v. Florida Entertainment Management,34 became the first ap-
pellate court to unequivocally abandon the presumption of irreparable injury
in a trademark case. In that case, the U.S. District Court for the District of
Nevada granted a preliminary injunction against an unlicensed show featur-
ing a group calling itself “The Platters,” a throwback to the popular vocal
group from the 1950s of the same name.35 The district court, in granting
the preliminary injunction, held that “the viability of the presumption of ir-
reparable harm in the trademark context is in question,”36 but, nevertheless,
found that the plaintiff had shown it was likely to lose goodwill if “The Plat-
ters” name continued to be used by others.37
The Ninth Circuit reversed the district court’s decision, holding that the
district court failed in its “cursory and conclusory” analysis and proclaimed
that the “practical effect of the district court’s conclusions” was to “reinsert
the now-rejected presumption of irreparable harm based solely on a strong
case of trademark infringement.”38 Leaving no doubt as to the non-viability
of the presumption of irreparable injury in the Ninth Circuit, the court con-
cluded that “[n]othing in the Lanham Act indicates that Congress intended a
departure in trademark infringement cases” and “[g]one are the days when
‘once the plaintiff in an infringement action has established a likelihood of
confusion, it is ordinarily presumed that the plaintiff will suffer irreparable
harm if injunctive relief does not issue.’ ”39
The Third Circuit has also expressly abandoned the presumption of irrep-
arable injury in trademark cases, with a later-added caveat. In Ferring Phar-
maceuticals, Inc. v. Watson Pharmaceuticals, Inc.,40 the Third Circuit affirmed a
district court’s decision denying preliminary injunctive relief to Ferring on
the basis that it had failed to present sufficient evidence to demonstrate a
likelihood of irreparable harm. In doing so, the Third Circuit specifically re-
jected Ferring’s arguments that trademark actions are unique and give rise to
special considerations that are not otherwise present in copyright and patent
34. 736 F.3d 1239 (9th Cir. 2013).

35. Id. at 1242.
36. Herb Reed Enters., LLC v. Florida Entm’t Mgmt., Inc., No. 2:12-CV-00560-MMD-
GW, 2012 WL 3020039, at *15 (D. Nev. July 24, 2012), rev’d, 736 F.3d 1239 (9th Cir. 2013)
(quoting Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008)).
37. Id. at *19.
38. Herb Reed Enters., 736 F.3d at 1250.
39. Id. at 1249–50. (quoting Rodeo Collection, Ltd. v. W. Seventh, 812 F.2d 1215, 1220 (9th
Cir. 1987)).
40. 765 F.3d 205 (3d Cir. 2014).

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cases.41 Dispensing with these arguments, the Third Circuit found that the
eBay analysis applied and that
[i]t follows that a court is not free to depart from traditional principles of equity
merely because it believes such a departure would further a statute’s policy goals,
such as, in the case of Lanham Act claims, compensating the plaintiffs for harms
that may be difficult to quantify. Rather, the text of the Lanham Act clearly evinces
congressional intent to require courts to grant or deny injunctions according to
traditional principles of equity.42
The Third Circuit concluded that a presumption of irreparable harm, as op-
posed to an evidentiary demonstration of such harm, “deviates from the tra-
ditional principles of equity.”43 Accordingly, the court held that “a party
seeking a preliminary injunction in a Lanham Act case is not entitled to a
presumption of irreparable harm but rather is required to demonstrate
that she is likely to suffer irreparable harm if an injunction is not granted.”44
However, three months after the Ferring decision, the Third Circuit, in
Groupe SEB USA, Inc. v. Euro-Pro Operating, LLC, appeared, somewhat, to
relax the evidentiary hurdle imposed by Ferring, indicating that a court
can find irreparable harm by “reasonable” inference.45 Recognizing that
the district court did not have the benefit of the now-rejected presumption
based upon Ferring, the Groupe SEB court, in affirming a district court’s
grant of preliminary injunctive relief, concluded that
we are not connecting these facts using a veiled presumption in the Third Circuit.
Ferring bars such a presumption; we emphasize, however, that Ferring does not bar
drawing fair inferences from facts in the record. Indeed, a key lesson from Ferring
is that courts considering whether to grant injunctive relief must exercise their equi-
table discretion in a case-by-case, fact-specific manner. A critical aspect of fact-finding
in this and other contexts is drawing reasonable inferences from facts in the record.46
Even though the presumption is no longer appropriate in the Third Cir-
cuit, the court seems to have loosened the strict requirement of demonstrat-
ing overwhelming affirmative evidence of irreparable injury and, in fact, pro-
vided very useful examples in Groupe SEB of the type of evidence needed to
demonstrate irreparable harm in the context of a deceptive advertising claim
under the Lanham Act.47
41. Id. at 215–16 (“The rationale of the eBay decision was not that patent cases are somehow
unique, but rather, as stated supra, that ‘the decision whether to grant or deny injunctive relief
rests within the equitable discretion of the district courts, and that such discretion must be ex-
ercised consistent with traditional principles of equity, in patent disputes no less than in other
cases governed by such standards.’ ”) (quoting eBay, Inc. v. MercExchange, L.L.C., 547 U.S.
388, 394 (2006)).
42. Id. at 216.
43. Id.
44. Id. at 217; see also Groupe SEB USA, Inc. v. Euro-Pro Operating, LLC, 774 F.3d 192,
205–06 (3d Cir. 2014) (distinguishing the presumption of irreparable injury and noting that
the evidence presented by Groupe SEB created a reasonable inference that harm was likely).
45. Groupe SEB USA, Inc., 774 F.3d at 205.
46. Id.
47. Id. at 198–99, 205 n.8.

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C. Status of the Presumption in the Remaining Circuits

The remaining circuits remain undecided or uncertain as to eBay’s appli-
cation, although several have been following the trend toward adopting the
eBay standard. These courts tend to fall into one of three categories: (1) those
that have questioned the issue, but not taken any definitive position on it;
(2) those that have sidestepped the issue, including by affirming lower
court decisions based upon specific evidence in the record which may other-
wise support (or refute) a finding of irreparable harm; or (3) those that have
not yet had the opportunity to opine on the issue.
1. The Questioners
The First Circuit has not ruled on the issue directly, but in dicta has sug-
gested its view is that eBay likely applies in the trademark context so as not to
afford a presumption of irreparable injury.48 In Voice of the Arab World, Inc. v.
MDTV Medical News Now, Inc., and then more recently in Swarovski Aktien-
gesellschaft v. Building No. 19, Inc., the First Circuit was faced with the appli-
cation of the presumption in a trademark infringement action. In each of
those cases, the First Circuit expressed its opinion that the principles of
eBay likely applied to trademark infringement actions, but ultimately refused
to reach the issue of whether the presumption was consistent with the “prin-
ciples of equity” laid out in eBay.49
Nevertheless, and without the benefit of a specific holding on the issue,
some district courts within the First Circuit continue to apply the presump-
tion in deciding trademark injunction cases. For example, in Dunkin’ Donuts
Franchised Restaurants LLC v. Wometco Donas Inc.,50 after reviewing the First
Circuit’s stance on the presumption matter, a district court in the District of
Massachusetts concluded that
[w]ith a presumption of irreparable harm in place in trademark infringement cases,
the Court can apply that presumption to the present facts. Moreover, applying the
First Circuit’s “sliding scale,” the strong showing of a likelihood of success on the
merits relaxes the requirement of irreparable harm. Thus framed, it is a simple
task to find the plaintiffs are likely to demonstrate irreparable harm in this case
because they have undoubtedly lost control over their trademark in Puerto Rico.51
Similarly, in 7-Eleven, Inc. v. Grewal,52 another judge from the U.S. Dis-
trict Court for the District of Massachusetts again upheld the presumption as
48. See Swarovski Aktiengesellschaft v. Bldg. No. 19, Inc., 704 F.3d 44, 54 (1st Cir. 2013)
(noting that “there is no principled reason why [eBay] should not apply to a request for a pre-
liminary injunction to halt trademark infringement” but declining to decide the question);
Voice of the Arab World, Inc. v. MDTV Med. News Now, Inc., 645 F.3d 26, 33 (1st Cir.
2011) (“[W]e see no principled reason why [eBay] should not apply in the present case.”).
49. Swarovski Aktiengesellschaft, 704 F.3d at 54; MDTV Med. News Now, 645 F.3d at 33.
50. 53 F. Supp. 3d 221 (D. Mass. 2014).
51. Id. at 231. This action was appealed to the First Circuit, but was resolved, via settlement,
prior to any ruling by the court. See Dunkin’ Donuts Franchised Restaurants LLC v. Wometco
Donas Inc., Appeal No. 14-2002 (1st Cir.).
52. 60 F. Supp. 3d 272 (D. Mass. 2014).

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it applied to the trademark claims, concluding that “irreparable harm . . . is

fulfilled if the aggrieved party can show it is likely to prevail on the merits of
its [trademark] infringement claims.”53 The court held that because the fran-
chisee did not deny that it was continuing to operate a business purporting to
be a 7-Eleven franchise, “it follows that 7-Eleven will suffer irreparable harm
if relief is not granted.”54
Likewise, the Second Circuit has not yet ruled on the issue directly, al-
though it has affirmed at least one district court case that applied the eBay
Rule in the trademark infringement context.55 And, more significantly,
while not going so far as to hold specifically that the presumption of irrep-
arable injury has been abolished in the context of trademark infringement ac-
tions, the Second Circuit indicated in dicta that the presumption does not
have a place in the context of any injunction analysis.56 The Second Circuit’s
holding, in Salinger v. Colting, although expressly limited to the copyright
context,57 has been applied by district courts in the Second Circuit in the
trademark context, leading many district courts to conclude that the pre-
sumption is no longer applicable in trademark actions in the Second
Circuit.58
The Eleventh Circuit, too, has not ruled directly on the matter but, sim-
ilar to the Second Circuit, has stated in dicta that “a strong case can be made
that eBay’s holding necessarily extends to the grant of preliminary injunc-
53. Id. at 280.

54. Id. at 281. However, in the 7-Eleven case, the court noted that while the presumption is
alive and well in analyzing an injunction for trademark infringement, “a presumption of irrep-
arable harm does not automatically follow from a finding that a plaintiff is likely to succeed on
the merits of its motion to enforce a non-compete agreement.” Id. at 283; but see FLA. STAT. ANN.
§ 542.335 (West) (“The violation of an enforceable restrictive covenant creates a presumption of
irreparable injury to the person seeking enforcement of a restrictive covenant.”).
55. U.S. Polo Ass’n, Inc. v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515, 539 (S.D.N.Y.
2011), aff ’d, 511 F. App’x 81, 2013 WL 490796 (2d Cir. 2013) (“While the Second Circuit
has not yet spoken on this issue in the context of trademark infringement actions, Salinger sug-
gests that these cases should be analyzed under the standards for injunctive relief articulated by
the Supreme Court in eBay. This Court agrees with other courts in this Circuit to have consid-
ered Salinger’s applicability to trademark actions that there appears to be no principled reason
not to adopt the newly announced standard in the trademark context.”) (footnote omitted).
56. Salinger v. Colting, 607 F.3d 68, 78 n.7 (2d Cir. 2010) (“[A]lthough today we are not
called upon to extend eBay beyond the context of copyright cases, we see no reason that eBay
would not apply with equal force to an injunction in any type of case.”).
57. Id. (noting that the court’s holding was explicitly “limited to preliminary injunctions in
the context of copyright cases”).
58. See, e.g., Diesel S.P.A. v. Does, No. 14-CV-4592 (KMW), 2016 WL 96171, at *9 (S.D.N.Y.
Jan. 8, 2016) (applying eBay analysis in granting permanent injunction); Weld-Tech ApS v. Aquasol
Corp., No. 13-CV-1048S, 2015 WL 5021964, at *4 (W.D.N.Y. Aug. 24, 2015) (“The application
of a presumption here would run counter to the principles of equity.”); Sola Franchise Corp. v. Solo
Salon Studios Inc., No. 14-CV-0946JSAKT, 2015 WL 1299259, at *17 (E.D.N.Y. Mar. 23, 2015)
(same); 7-Eleven, Inc. v. Khan, 977 F. Supp. 2d 214, 234 (E.D.N.Y. 2013) (granting preliminary
injunctive relief, citing Salinger rule, and finding irreparable harm based, in part, on the franchisee’s
continued occupancy of the store and interference with 7–Eleven’s property rights).

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tions” in trademark infringement cases.59 In North American Medical Corp. v.

Axiom Worldwide, Inc., the Eleventh Circuit affirmed a district court’s finding
of likelihood of success on the merits, but remanded the case for reconsider-
ation of irreparable harm in light of eBay. In providing direction to the dis-
trict court, and leaving open the possibility that the presumption survived
eBay, the Eleventh Circuit indicated that “[the district court] may well decide
that the particular circumstances of the instant case bear substantial parallels
to previous cases such that a presumption of irreparable injury is an appro-
priate exercise of its discretion in light of the historical traditions.”60
More recently, in Hoop Culture, Inc. v. GAP Inc., the Eleventh Circuit ech-
oed these sentiments, indicating that a presumption of irreparable harm may
be “an appropriate exercise of [the district court’s] discretion in light of the
historical traditions” where “the particular circumstances of the instant case
bear substantial parallels to previous cases” in which irreparable harm has
been found.61 Nevertheless, in Hoop Culture, the Eleventh Circuit declined
to extend the presumption to the moving party, concluding that there was
no demonstration of likelihood of success on the merits that would otherwise
permit such presumption. Despite the Eleventh Circuit’s apparent inclina-
tion to abandon the presumption absent “particular circumstances,” ulti-
mately, the court has not decided whether eBay’s prohibition against pre-
sumptions would apply under the Lanham Act.
Lacking precise guidance from the Eleventh Circuit, several district
courts within that circuit have examined the issue. In Uber Promotions, Inc. v.
Uber Technologies, Inc., the court, while following the eBay rationale and not-
ing that the presumption of irreparable harm is no longer appropriate in
trademark infringement actions (citing Axiom), indicated that “while a
court must, in each trademark infringement case, make a finding of irrepara-
ble harm before an injunction may issue, that finding will often be made due
to the nature of the harm.”62 The court then examined the request for pre-
liminary injunctive relief under the traditional four-factor test and, ulti-
mately, granted injunctive relief, concluding that “[a]bsent any injunctive re-
lief, confusion is likely to damage Promotions’ reputation and goodwill and
cause irreparable harm in the time between now and a resolution on the
merits.”63
59. N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1228 (11th Cir. 2008); see
also Hoop Culture, Inc. v. GAP Inc., No. 15-13818, 2016 WL 1696009, at *4 (11th Cir. Apr. 28,
2016) (declining to expressly hold that eBay applies, concluding that the district court properly
denied injunctive relief and “sufficient[ly] . . . [rebut[ted] any presumption of irreparable harm
that may have applied”).
60. N. Am. Med. Corp., 522 F.3d at 1228.
61. Id. (citing eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388, 394–97 (2006)).
62. Uber Promotions, Inc. v. Uber Techs., Inc., No. 1:15CV206-MW/GRJ, 2016 WL
617450, at *3 (N.D. Fla. Feb. 16, 2016).
63. Id. at *16.

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Although there may yet be the slimmest of possibilities that the presump-
tion of irreparable injury remains viable in the First and Eleventh Circuits,
the long-standing principle is, at best, on life support, in the Second Circuit.
2. The Sidesteppers
The Eighth Circuit has not provided much clarity on its leaning one way
or the other. For a period of time, the court continued to apply the presump-
tion of irreparable injury.64 However, the court appears to recently have
changed course. In Novus Franchising, Inc. v. Dawson,65 the court seemingly
called into question whether the presumption still applies in trademark
cases. In that case, the court acknowledged the parties’ arguments concern-
ing the presumption issue, but, nevertheless, refused to decide the issue, in-
stead relying on the franchisor’s delay in bringing the request for injunctive
relief as “rebut[ting] any inference of irreparable harm to which Novus may
have been entitled. . . .”66 And, even more recently, in H&R Block Tax Ser-
vices, LLC v. Acevedo-Lopez,67 the court continued to question the validity
of the presumption, although never expressly rejecting it.68 Nevertheless,
many district courts within the Eighth Circuit have continued to apply the
presumption post-eBay.69
64. See Cmty. of Christ Copyright Corp. v. Devon Park Restoration Branch of Jesus Christ’s
Church, 634 F.3d 1005, 1012 (8th Circ. 2011) (affirming a permanent injunction issued by a dis-
trict court, stating “in trademark law, injury is presumed once a likelihood of confusion has been
established”).
65. 725 F.3d 885 (8th Cir. 2013).
66. Id. at 895 n.3.
67. 742 F.3d 1074 (8th Cir. 2014).
68. Id. at 1077 (“Issuing a preliminary injunction based only on a possibility of irreparable
harm is inconsistent with our characterization of injunctive relief as an extraordinary remedy
that may only be awarded upon a clear showing that the plaintiff is entitled to such relief.”)
(quoting Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 22 (2008)).
69. Zerorez Franchising Sys., Inc. v. Distinctive Cleaning, Inc., 103 F. Supp. 3d 1032, 1047–
48 (D. Minn. 2015) (granting permanent injunction in summary judgment context, citing tradi-
tional four-factor test under eBay, but noting “[s]ince a trademark represents intangible assets
such as reputation and goodwill, a showing of irreparable injury can be satisfied if it appears
that [Plaintiffs] can demonstrate a likelihood of customer confusion. Reputational harm and
damage to goodwill are difficult to quantify and monetary damages are generally inadequate
to compensate such injuries. The first two elements are therefore satisfied.”) (internal quotation
and citations omitted); Kuper Indus., LLC v. Reid, 89 F. Supp. 3d 1005, 1013 (D. Neb. 2015)
(“Since a service mark represents intangible assets such as reputation and goodwill, irreparable
harm can be presumed if the plaintiff has shown a likelihood of consumer confusion.”); Omaha
Steaks Int’l, Inc. v. Frontier Choice Steaks, LLC, No. C 13-4095-MWB, 2013 WL 6491475, at
*1 (N.D. Iowa Dec. 10, 2013) (“In trademark law, injury is presumed once a likelihood of con-
fusion has been established.”); Anytime Fitness, LLC v. Roberts, No. 12-CV-02913-SRN-JJG,
2013 WL 1760950, at *6 (D. Minn. Apr. 24, 2013) (“Anytime Fitness’s showing of a likelihood
of consumer confusion regarding the source of Defendants’ goods or services creates a presump-
tion that Anytime Fitness will suffer irreparable harm if Defendants are not permanently en-
joined from infringing the Anytime Fitness trademarks.”); but see KTM N. Am., Inc. v. Cycle
Hutt, Inc., No. 13-5033-JLV, 2013 WL 1932797, at *1 n.2 (D.S.D. May 8, 2013) (holding
that presumption is no longer valid and finding that plaintiff established irreparable harm by
showing harm to its reputation).

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Similarly, the Tenth Circuit in Lorillard Tobacco Co. v. Engida declined to

consider eBay’s impact on any presumption of irreparable harm in trademark
cases where it affirmed a district court’s denial of preliminary injunctive re-
lief.70 Nevertheless, at least one district court in the Tenth Circuit, in grant-
ing a preliminary injunction in the franchise context, and recognizing the
systemic nature of the harm presented by a franchisee’s continued use of
the franchisor’s trademarks following termination, concluded:
Without the injunction, Plaintiffs have no control over customers’ experience at
the Restaurant, bearing the IHOP name. Defendant’s continued unauthorized
usage of IHOP’s marks will impact and harm the strong reputation and goodwill
associated with IHOP’s name. Any unfortunate shortcoming or disappointment a
customer may experience at the restaurant will rationally be associated with Plain-
tiffs and the IHOP brand.71
Other courts within the Tenth Circuit have taken up the issue and appear
somewhat inclined to continue applying the presumption in trademark
cases,72 although they frequently refrain from addressing the issue and, in-
stead, rely on the facts of the case to support (or rebut) an independent find-
ing that a party faces a threat of irreparable injury absent an injunction.73
3. Circuits That Have Not Yet Had an Opportunity to Rule on the

Continuing Validity of the Presumption of Irreparable Harm
The Fourth, Seventh, District of Columbia, and Federal Circuits have not
had the opportunity to rule directly on the matter post-eBay. Accordingly,
whether the rationale of eBay applies to trademark actions under the Lanham
Act remains an open question in those jurisdictions. As a result, and without
the benefit of circuit guidance, the current treatment among the district
70. See Lorillard Tobacco Co. v. Engida, 213 F. App’x 654, 657 (10th Cir. Jan. 8, 2007) (af-
firming denial of preliminary injunctive relief, but declining to consider how eBay may apply in
the trademark context).
71. IHOP Franchising, LLC v. Tabel, No. 13-2641-KHV-TJJ, 2014 WL 1767199, at *11
(D. Kan. Apr. 15, 2014), report and recommendation adopted, No. CIV.A. 13-2641-KHV, 2014
WL 1767191 (D. Kan. Apr. 30, 2014).
72. See, e.g., Intelligent Office Sys., LLC v. Virtualink Canada, LTD., No. 15-CV-02724-
CMA-MEH, 2016 WL 687348, at *7 (D. Colo. Feb. 18, 2016) (declining to issue injunction,
in part, as a result of franchisor’s delay in seeking injunctive relief, but noting that irreparable
injury is ordinarily presumed once the plaintiff has established a likelihood of confusion in
the trademark context) (citing Amoco Oil Co. v. Rainbow Snow, Inc., 809 F.2d 656 (10th
Cir. 1987)); see also, e.g., Port-a-Pour, Inc. v. Peak Innovations, Inc., 49 F. Supp. 3d 841, 872,
2014 WL 2766775 (D. Colo. 2014) (concluding, in the trade secret context, “[w]hen a defendant
possesses trade secrets and is in a position to use them, harm to the trade secret owner may be
presumed”) (quotations and citations omitted).
73. See, e.g., Estate of Norman v. Lavern, No. CIV-14-01435-M, 2015 WL 2414565, at *5
(W.D. Okla. May 20, 2015) (indicating presumption may apply, but concluding that the facts
of the case demonstrate irreparable harm); Red Robin Int’l, Inc. v. Lehigh Valley Rest. Grp.,
Inc., No. 15-CV-02602-REB, 2016 WL 705988, at *4 n.3 (D. Colo. Feb. 23, 2016) (concluding
that Red Robin failed to present evidence demonstrating likelihood of success on the merits, cit-
ing eBay, but noting “infringement alone can constitute irreparable injury and . . . the movant is
not required to show that it lost sales or incurred other damage”).

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courts in those jurisdictions has led to an irregular approach to the applica-

tion of eBay and Winter.74
For example, in National Financial Partners Corp. v. Paycom Software, Inc., a
district court in the Eastern District of Illinois stated that “[a]lthough the
Seventh Circuit has not addressed whether eBay applies to preliminary in-
junctions in Lanham Act cases, the court has held that ‘eBay governs a mo-
tion for a preliminary injunction in a copyright case’ . . . [and] [t]he Court
sees no reason why the Seventh Circuit would reach a different conclusion
in a Lanham Act case.”75 Moreover, the district court found the reasoning
of the Ninth and Third Circuits persuasive and concluded that “NFP
must show a likelihood of irreparable harm to be entitled to a preliminary
injunction.”76 Nevertheless, despite refusing to presume irreparable injury,
the court found that the plaintiff had sufficiently shown that it would suffer
irreparable harm in the absence of an injunction.77
The U.S. District Court for the Eastern District of Wisconsin took a dif-
ferent approach in Waukesha Floral & Greenhouses, Inc. v. Possi.78 There,
Waukesha Floral sought injunctive relief to prevent a competitor from
using several iterations of the name “Waukesha Floral.”79 The court deter-
mined that Waukesha Floral was likely to succeed on the merits of its trade-
mark infringement claim. Following that determination, and after denying a
laches argument, the court held that “Waukesha Floral need not show actual
customer confusion to establish irreparable harm. Even if Waukesha Floral
fails to demonstrate a business loss, the law presumes that injuries arising
from trademark infringement are irreparable.”80 The court maintained
that because the offending party was using virtually identical names for the
74. Compare Diamonds Direct USA, Inc. v. BFJ Holdings, Inc., 895 F. Supp. 2d 752, 761
(E.D. Va. 2012) (applying presumption), with Pro-Concepts, LLC v. Resh, 2013 WL 5741542,
at *21 (E.D. Va. Oct. 22, 2013) (“[I]t is unlikely that the presumption alleged in the context of
trademark infringement remains viable after the Supreme Court’s decision in Winter. . . . Thus,
the Court should not rely on a presumption of irreparable injury based on the likelihood that
Resh’s actions—whether intentional or not—are likely to confuse or mislead Pro-Concepts’
customers.”).
75. Nat’l Fin. Partners Corp. v. Paycom Software, Inc., No. 14 C 7424, 2015 WL 3633987,
at *11 (N.D. Ill. June 10, 2015), appeal dismissed ( July 7, 2015) (quoting Flava Works, Inc. v.
Gunter, 689 F.3d 754, 755 (7th Cir. 2012)).
76. Id. at *11 (citing Winter v. Nat. Res. Def. Council, 555 U.S. 7 (2008)).
77. Id. at *12 (“The Lanham Act is designed to redress the precise economic consequences of
intangible harms, such as damage to reputation and loss of goodwill. The most corrosive and irrep-
arable harm attributable to trademark infringement is the inability of the victim to control the na-
ture and quality of the defendant’s goods. To show irreparable harm, NFP need not show that it
lost business as a result of Paycom’s alleged infringement.”) (internal quotations and citations omit-
ted); see also Mkt. Track, LLC v. Efficient Collaborative Retail Mktg., LLC, No. 14 C 4957, 2015
WL 3637740, at *23 (N.D. Ill. June 11, 2015), appeal dismissed (Sept. 8, 2015) (“[T]he Court, out of
an abundance of caution, declines to apply a blanket presumption, but rather looks to the specific
facts of this case to determine whether Market Track is likely to suffer irreparable harm from an
ongoing Lanham Act violation.”).
78. No. 15-CV-1365, 2016 WL 928680 (E.D. Wis. Mar. 8, 2016).
79. Id. at *1.
80. Id. at *5 (citing Abbott Laboratories v. Mead Johnson & Co., 971 F.2d 6, 16 (7th Cir.
1992)).

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same products and because “ ‘it is virtually impossible to ascertain the precise
economic consequences of intangible harms, such as damage to reputation
and loss of goodwill, caused by such violations,’ ” irreparable harm is pre-
sumed.81 Similarly, the District of Columbia Circuit has not had the oppor-
tunity, post-eBay, to address the issue. However, the U.S. District Court
for the District of Columbia followed an approach much like that of the
Waukesha Floral court in continuing to apply the presumption, concluding
“ ‘[g]enerally, trademark infringement, by its very nature, carries a presump-
tion of harm.’ ”82
In sum, courts across the country continue to grapple with the effects of
eBay and Winter on the presumption of irreparable injury in trademark ac-
tions. In 2014, the Supreme Court denied certiorari in the Herb Reed action,
which may otherwise have provided much needed clarity on this issue. Until
further guidance is provided by the Supreme Court, the legislative branch, or
through the remaining circuits, litigants should be prepared to make affirma-
tive showings of irreparable injury so as to leave no doubt as to the appro-
priateness of injunctive relief in their particular case.
III. There Are Strong Systemic Reasons for Finding Irreparable

Injury in Franchise Trademark Cases Without the Need to
Establish Individualized Injury
The nature of the harm that is presented in trademark actions has led
some to conclude that trademark infringement stands apart from other clas-
ses of actions and still deserves the benefit of the presumption of irreparable
harm. As Professor McCarthy has opined:
[T]he reason for the trademark presumption of irreparable injury is that once a
probability of proving likelihood of confusion at trial is shown, the trademark
owner’s business goodwill and reputation are at risk. Because of the likelihood
that confused persons will mistakenly attribute to plaintiff defects or negative im-
pressions they have of defendant’s goods or services, the plaintiff ’s reputation is
threatened; it is in the hands of the defendant.
....
A likelihood of damage to reputation is by its nature “irreparable.” Like trying to
un-ring a bell, trying to “compensate” after the fact for damage to business good-
will and reputation cannot constitute a just or full compensation. This distin-
guishes trademark cases from the neighboring areas of patent and copyright law.83
Moreover, a presumption of irreparable injury, as it applies in trademark
infringement actions, is not an unqualified finding that a party is automatically
entitled to an injunction, as was the case in eBay. Rather, the presumption in
trademark actions is that a demonstration of likelihood of confusion satisfies
81. Id. at *5 (quoting Abbott, 971 F.2d at 16).

82. AARP v. Sycle, 991 F. Supp. 2d 224, 230 (D.D.C. 2013) (quoting Hanley–Wood LLC v.
Hanley Wood LLC, 783 F. Supp. 2d 147, 151 (D.D.C. 2011)).
83. MCCARTHY, supra note 25, § 30:47.70.

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the irreparable harm factor, not that all four equitable factors are satisfied by
a demonstration of success on the merits.84 This difference between the pre-
sumption in trademark infringement cases and the “categorical” rule requir-
ing entry of a permanent injunction in patent cases, which was rejected in
eBay, is a critical distinction. Moreover, as discussed earlier, the Supreme
Court, in eBay, was deciding a case against the backdrop of the impact of
“patent trolls.” There has been no similar development in the trademark
world that warrants a departure from the longstanding practice of granting
injunctions against trademark infringement. Accordingly, there are valid rea-
sons to continue applying the presumption of irreparable harm in trademark
cases.
Regardless of whether the presumption of irreparable harm continues in
trademark cases generally, the inherent factors surrounding a franchisee’s
post-termination continuing use of the franchisor’s marks should be suffi-
cient to establish irreparable harm without delving into individual, fact-
specific issues. Although parties have ample time to develop and build a re-
cord regarding irreparable injury in support of a permanent injunction, they
have minimal time to develop individualized factual arguments when seeking
a temporary restraining order or a preliminary injunction. Franchisors will
benefit from making irreparable harm arguments based upon system-wide is-
sues to develop a body of controlling case law throughout the circuits. Such
decisions will be extremely helpful to franchisors’ protection of their impor-
tant trademark rights, particularly when seeking temporary or preliminary
relief.
Post-termination or post-expiration trademark infringement by a franchi-
see typically involves the following common circumstances: (1) the franchi-
see continues to serve many of the same customers it developed and served
while authorized to use the franchisor’s marks and system; (2) after termina-
tion or expiration, the franchisee remains at the same location; (3) the fran-
chisee continues to offer substantially similar products and services from the
location; (4) advertisements in telephone books and on Internet resources
continue to identify the location as being associated with the franchisor;
and (5) the franchisee continues to use the same telephone number.
In light of these circumstances, due to the very nature of franchisor-
franchisee relationships, a franchisor faces irreparable injury in the form of
84. See, e.g., Eisai Co., Ltd v. Teva Pharm. USA, Inc., No. CIV. 05 5727(HAA)(ES), 2008 WL
1722098, at *10 (D.N.J. Mar. 28, 2008) (“[T]he standard rejected by the Supreme Court in eBay
was one in which the Federal Circuit applied a presumption that the injunction should issue, not a
presumption that one of the four prongs—irreparable harm—exists.”) (emphasis in original); Petro
Franchise Sys., LLC v. All Am. Props., Inc., 607 F. Supp. 2d 781, 794 (W.D. Tex. 2009) (“A con-
clusive determination that three equitable factors automatically follow when success on the merits
is established is quite far from a mere presumption that a single factor—irreparable harm—should
usually follow when likelihood of confusion is established.”); MCCARTHY, supra note 25, § 30:47.70
(“[T]he presumption of irreparable injury traditionally followed in trademark preliminary injunc-
tion cases is in [no] way inconsistent with the letter or the spirit of the Supreme Court’s eBay
decision.”).

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loss of control over and harm to its trademarks, brand, reputation, and good-
will, as well as a potential significant loss of customers, when a former franchi-
see continues to use its trademarks after termination or expiration of the fran-
chise agreement.85 Each of these forms of loss is not amenable to remediation
through an award of damages.86 Accordingly, many courts have found that
demonstrating any one of these forms of harm is sufficient to establish irrep-
arable harm, and each of these forms of harm is inherent in the context of a
franchisee’s post-termination continuing use of the franchisor’s trademarks.87
First, the circumstances result in a loss of control over the franchisor’s
business reputation and damage to the franchisor’s goodwill because the cus-
tomers will continue to believe that the products and services they are receiv-
ing at the same location in association with the franchisor’s trademarks are
approved by the franchisor when, in actuality, the franchisor has no control
over the quality or standards of the products or services provided by the for-
mer franchisee. This loss of control over the franchisor’s reputation and
goodwill constitutes irreparable injury.88 This is true regardless of whether
the former franchisee argues that it is meeting or exceeding the franchisor’s
standards.89
Second, customers are likely to continue patronizing the former franchi-
see, thereby depriving the franchisor of a portion of its customer base.90
85. Dunkin’ Donuts Franchising, LLC v. 14th St. Eatery, Inc., 102 F. Supp. 3d 334, 338
(D.D.C. 2015) (“This is enough to establish a likelihood of irreparable harm—Defendants are op-
erating an unauthorized Dunkin’ Donuts location and depriving Dunkin’ Donuts of the ability to
control the use of its trademarks and assure the quality control necessary to protect the integrity of
its reputation and goodwill.”); Ledo Pizza Sys., Inc. v. Singh, 983 F. Supp. 2d 632, 640 (D. Md.
2013) (“Ledo can no longer control the quality of products and services at Singh’s restaurant be-
cause of the termination of the franchise agreement, and this injury continues even after Singh re-
opened as a Stallion franchise, because many customers still associate the restaurant location with
Ledo. . . . This loss of control of Singh’s restaurant . . . [is] irreparable harm.”).
86. Id.; McDonald’s Corp. v. Robertson, 147 F.3d 1301, 1310 (11th Cir. 1998) (“McDonald’s
faces damage to its own reputation and loss of customers caused by [the franchisee’s] distribution
of an allegedly inferior . . . product held out to be McDonald’s sanctioned products. . . . We can
conceive of no realistic way to determine damages under these circumstances.”).
87. 14th St. Eatery, Inc., 102 F. Supp. 3d at 338.
88. S&R Corp. v. Jiffy Lube Int’l, Inc., 968 F.2d 371, 378 (3d Cir. 1992) (“Lack of control
[over its trademarks] amounts to irreparable injury regardless of allegations that the infringer
is putting the mark to better use. . . . Finally, and most importantly for this case, trademark in-
fringement amounts to irreparable injury as a matter of law.”); see also Robertson, 147 F.3d at
1310; 14th St. Eatery, Inc., 102 F. Supp. 3d at 338; Ledo Pizza, 983 F. Supp. 2d at 640.
89. TGI Friday’s Inc. v. Great Nw. Rests., Inc., 652 F. Supp. 2d 763, 772 (N.D. Tex. 2009)
(“Defendants argue that TGIF’s reputation is not threatened because they are meeting the stan-
dards that TGIF requires of its franchises. Even assuming this is true, it does not negate the sub-
stantial threat to TGIF. Courts have held that a franchisor suffers a risk of injury to its reputa-
tion and the value of its marks even if the alleged infringer offers superior services.”); Quantum
Fitness Corp. v. Quantum LifeStyle Ctrs., L.L.C., 83 F. Supp. 2d 810, 831 (S.D. Tex. 1999)
(“When a likelihood of confusion exists, the plaintiff ’s lack of control over the quality of the de-
fendant’s goods or services constitutes an immediate and irreparable injury, regardless of the ac-
tual quality of those goods or services.”).
90. Losses of customers are losses to the franchisor because the customers were obtained by
the business through the use of the franchisor’s trademarks and system. Additionally, many fran-
chise agreements contain acknowledgments that the customers belong to the franchisor.

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From the perspective of the customer, the location or telephone number is

the same, the name of the business is the same, the owner is the same, and
the products or services are the same or substantially similar. Accordingly,
customers often continue patronizing the former franchisee, believing that
the business is still associated with the franchisor. This loss of customers
constitutes irreparable injury to the franchisor.91
Third, the former franchisee’s infringement causes irreparable harm by
effectively preventing the franchisor from obtaining a replacement franchisee
in the territory. Even in the unlikely circumstance where a franchisor would
be able to obtain a new franchisee for the territory, there will undoubtedly be
confusion by customers as to who is the authorized franchisee when the for-
mer franchisee continues to do business in the same location using the fran-
chisor’s marks.92 That confusion will further result in loss of customers as
well as loss of control over the franchisor’s reputation and damage to its
goodwill.
Additionally, many franchise agreements contain acknowledgments that
post-termination use of the franchisor’s trademarks will result in irreparable
injury to the franchisor. Some courts have found such acknowledgments per-
suasive, if not dispositive, on the irreparable injury element.93
Even after eBay, courts have recognized the systemic factors supporting a
finding of irreparable harm based upon a franchisee’s continued use of the
franchisor’s trademarks following termination. For example, in IHOP Fran-
chising, LLC v. Tabel,94 the court noted that there is usually a substantial risk
of irreparable harm when a former franchisee infringes the franchisor’s
trademarks.95
Accordingly, notwithstanding the decisions in eBay and Winter, franchi-
sors should continue to cite the historical granting of injunctions to prevent
irreparable harm as well as the inherent nature of the harm caused by a hold-
over franchisee to guide the courts in their exercise of discretion “consistent
with traditional principles of equity.”96 This will help ensure the continued
protection of franchisors’ trademarks, which go to the very heart of the fran-
chising business model.
91. Petro Franchise Sys., LLC, 607 F. Supp. 2d at 795.

92. MarbleLife, Inc. v. Stone Res., Inc., 759 F. Supp. 2d 552, 561 (E.D. Pa. 2010) (holding
that defendant’s use of the mark created likelihood of confusion because plaintiff operated a
nearly identical business in the same territory).
93. See, e.g., Dunkin’ Donuts Franchised Rests. LLC v. ABM Donuts, Inc., No. CA 11-270 S,
2011 WL 6026129 (D.R.I. Oct. 4, 2011).
94. HOP Franchising, LLC v. Tabel, No. 13-2641-KHV-TJJ, 2014 WL 1767199, at *11
(D. Kan. Apr. 15, 2014), report and recommendation adopted, No. CIV.A. 13-2641-KHV, 2014
WL 1767191 (D. Kan. Apr. 30, 2014).
95. Id. at *10.
96. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 394 (2006).

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IV. How Does a Party Establish the Requisite Irreparable Injury

Under the Current Legal Landscape?
As set forth above, in the ten years since eBay, most of the circuits have
sidestepped the issue of presumption or not addressed it. Except in circuits,
like the Third and Ninth Circuits, that have specifically rejected presump-
tion, it is still worthwhile to argue that irreparable harm should be presumed
based upon trademark infringement. However, a prudent party seeking an
injunction against trademark infringement will not stop with a presumption
argument, but will also offer argument and evidence on the element of irrep-
arable harm.97
“Irreparable harm” is defined as harm that is not susceptible to compen-
sation through money damages.98 In trademark disputes, courts have found
that irreparable harm may be established by the following: loss of the trade-
mark owner’s control over its goodwill, business reputation, and quality of
products or services; harm to the goodwill or business reputation of the
trademark owner; loss of customers; and ongoing actual confusion.99 Various
commentators have recited similar factors as demonstrating irreparable harm
to a trademark owner.100
As confirmed by the Supreme Court in Winter, a party must demonstrate
that these forms of irreparable harm are likely, rather than merely possible.
In order to establish the likelihood of irreparable harm, a party must come
97. The H&R Block case is a concrete reminder of the importance of making an affirmative
showing of irreparable harm where the presumption issue is uncertain. There, H&R Block did
not submit any affidavits or expert opinion on the harm allegedly caused by the holdover fran-
chisee. The Eighth Circuit concluded that it could not make a determination of irreparable
harm, stating that Block “seeks a preliminary injunction granting the equitable relief it may
be granted if it prevails on the merits of its contractual claims. This may well oversimplify a
complex dispute, but the sparse preliminary injunction record is the result of Block seeking pre-
liminary injunctive relief based on the slimmest of factual showings.” H&R Block Tax Servs., 742
F. 3d at 1078 (emphasis in original). The Eighth Circuit then vacated the denial of the motion
for preliminary injunction and remanded the case with instructions for further proceedings not
inconsistent with the Eighth Circuit’s opinion. Thus, whenever the presumption issue is ques-
tionable or otherwise undecided in the circuit in which a case is heard, it will be beneficial to
develop the record with affirmative showings of irreparable harm.
98. MarbleLife, Inc., 759 F. Supp. 2d at 562 (“Irreparable harm must be of a peculiar nature,
so that compensation in money alone cannot atone for it.”).
99. Id. at 563.
100. See, e.g., MCCARTHY, supra note 25, § 30:47.30 (irreparable harm supporting an injunc-
tion supported by the following: the trademark owner’s business goodwill and reputation are in
peril; there is a negative mistaken impression associating the alleged infringer’s products or ser-
vices with the trademark owner; or loss of control over quality of the goods and services asso-
ciated with the trademark); TERRENCE P. ROSS, INTELLECTUAL PROPERTY LAW: DAMAGES AND
REMEDIES § 11.05[2][a][i] (2014) (irreparable harm supporting an injunction may be demon-
strated by: actual or threatened loss of customers; actual or threatened harm to goodwill or
reputation); BRIAN E. BANNER, TRADEMARK INFRINGEMENT REMEDIES, Chs. 4.III.B., 5.I.C.2.,
6.III.A.2. (2014) (irreparable harm based upon risk of reputational loss, lack of quality control
over goods or services associated with the trademark, alleged infringer’s acts have a tendency
to deceive, customer complaints as to quality of the goods or services provided, inquiries regard-
ing whether the alleged infringer and the trademark owner are “related,” or lost business due to
confusion).

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forward with specific evidence, rather than rely upon mere assertions or con-
clusory statements.101 In the decade following eBay, decisions regarding the
type and degree of evidence sufficient to establish irreparable injury have var-
ied significantly, confirming the fact-intensive nature of the inquiry. How-
ever, the cases do provide guidance as to the types and quantity of evidence
that a party should be prepared to present in order to adequately demon-
strate irreparable harm in the various categories discussed in the preceding
paragraph.
A. Franchisors Will Improve Their Prospects of Establishing Irreparable Injury

If They Educate the Court Regarding the Nature of Franchising
Franchisors will improve their prospects of establishing irreparable injury if
they educate the court regarding the nature of franchising. While many courts
have handled franchise cases, including cases involving post-termination use of
a franchisor’s trademark, franchisors should not assume that the court hearing
a request for injunctive relief has a full understanding of the nature of the fran-
chising business model. Rather, they should provide foundational evidence
about the nature of the system, including the role of the trademarks in the
franchise system’s business, the general nature of the franchisor’s system stan-
dards and efforts taken to ensure compliance with the system standards, and
the loss of the franchisor’s ability to control its brand image and reputation
at a holdover franchisee’s location. Such evidence will be helpful to the
court, regardless of which form or forms of irreparable harm the franchisor
seeks to demonstrate.
B. Loss of the Trademark Owner’s Control over Its Goodwill, Business Reputation,
and Quality of Products or Services
Courts have recognized the special circumstances presented when a for-
mer franchisee continues using the franchisor’s marks because the franchisor,
which formerly authorized such use and had the ability to inspect the prod-
ucts or services offered by the franchisee for compliance with the franchisor’s
standards, no longer has the ability to oversee the products or services of-
fered by that location in association with the franchisor’s marks.102 Several
courts have recognized that this constitutes irreparable injury even when
the former franchisee is allegedly providing comparable or better quality
products or services.103 However, evidence that the franchisee is providing
inferior or counterfeit products or services is certainly helpful to the party
101. 7-Eleven, Inc. v. Upadhyaya, 926 F. Supp. 2d 614, 630 (E.D. Pa. 2013).
102. See IHOP Franchising, LLC v. Hameed, 2015 WL 429547, at *5 (E.D. Cal. Feb. 2, 2015)
(“[A]llowing a deficient operator to operate under Plaintiff ’s Marks—despite termination—
irreparably harms IHOP by removing its ability to control its reputation.”); see also Ferrellgas Part-
ners, L.P. v. Barrow, 143 F. App’x 180, 190–91 (11th Cir. 2005) (“The most corrosive and irrep-
arable harm attributable to trademark infringement is the inability of the victim to control the na-
ture and quality of the defendants’ goods.”).
103. Ferrellgas Partners, L.P., 143 F. App’x at 191; Re/Max N. Cent., Inc. v. Cook, 272 F.3d
424, 432 (7th Cir. 2001) (“Even if the infringer’s products are of high quality, the plaintiff can

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seeking an injunction.104 In the non-franchise context, for example, the U.S.

District Court for the Western District of Virginia in Dynamic Aviation
Group, Inc. v. Dynamic International Airways, LLC105 found that evidence of
multiple reports of unsanitary aircraft, operational problems, including
false attribution of an airline accident to the trademark holder, and the finan-
cial instability of the infringing user was sufficient evidence to demonstrate
irreparable harm. The court concluded that the trademark holder had “be-
come associated with the negative impressions created by DIA’s business
woes” and that such “confusion robs DAG of control over its own reputation
and the value of its brand” to the point that it “raises the specter that DAG
will be connected with future DIA accidents” and other shortcomings such
that injunctive relief was warranted.106
Accordingly, when a franchisor has terminated a franchisee due to its fail-
ure to comply with system standards, it will be beneficial to provide such ev-
idence in support of the franchisor’s argument on the irreparable harm fac-
tor. For example, evidence of the following types of conduct that led to
termination may also be helpful to establishing irreparable injury absent
an injunction to prevent the franchisee from using the franchisor’s trade-
marks: health or safety violations at the franchised location; the sale of un-
authorized products or services; the purchase of inventory, ingredients,
or supplies from unauthorized suppliers or purchasing inferior inventory,
ingredients, or supplies from any source; or other material failure to adhere
to the franchisor’s system standards. Chaudhry v. International House of Pan-
cakes, LLC107 is illustrative on this point. In Chaudhry, after several failed op-
erational evaluations conducted by IHOP wherein the franchisor determined
that the franchisee violated, among other things, food safety procedures,
premises safety and appearance standards, and restroom sanitation require-
ments, the franchisee was terminated.108 Despite the termination of the fran-
chise agreement, the franchisee continued to operate its restaurant under the
IHOP trademarks.109 The U.S. District Court for the Northern District of
Illinois concluded that prior violations of IHOP’s system standards were suf-
ficient evidence of a likely “pattern of behavior” that would continue after
properly insist that its reputation should not be imperiled by the acts of another.”) (internal ci-
tations omitted).
104. See, e.g., Anhing Corp. v. Thuan Phong Corp. Ltd., 2015 WL 451846, at *23 (C.D. Cal.
July 24, 2015) (injunction granted against party offering inferior rice products); Mitchell Group
USA, LLC v. Nken Udeh, 2014 U.S. LEXIS 143001 (E.D.N.Y. Oct. 7, 2014) (preliminary in-
junction granted against party producing counterfeit products).
105. No. 5:15-CV-00058, 2016 WL 1247220 (W.D. Va. Mar. 24, 2016).
106. Id. at *28 (“This could irrevocably affect DAG’s reputation in the airline industry, where
safety is of obvious importance. Calculating the monetary damages stemming from such lost
goodwill and reputation would be difficult, if not impossible. As such, DAG satisfies its burden
to demonstrate irreparable harm.”).
107. No. 15-CV-3504, 2015 WL 5159859 (N.D. Ill. Aug. 26, 2015).
108. Id. at *2.
109. Id.

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the termination of the franchise agreement.110 Accordingly, because the for-

mer franchisee was continuing to use the IHOP trademarks, the court deter-
mined that the likelihood of continued infractions by the former franchisee
in association with the franchisor’s marks would cause irreparable injury to
IHOP’s goodwill and reputation in the community and might even affect
the goodwill and reputation of other IHOP franchisees.111
C. Loss of Customers
This is another form of irreparable harm that a franchisor may be able to
establish through specific evidence. Although tangible evidence of lost cus-
tomers may not be readily available at the time when a motion for injunctive
relief is filed, when such evidence exists, courts consider it to be persuasive in
their irreparable harm analysis.112 Nevertheless, when a holdover franchisee
continues to operate the same type of business through the use of the fran-
chisor’s trademarks, evidence of the loss of customers should be available.
For concepts that have frequent customer programs, evidence of customers
using frequent customer materials that were created while the outlet was an
authorized franchisee demonstrates that the outlet is continuing to serve cus-
tomers that first became customers when the outlet was operating as an au-
thorized franchisee.
Postings from online review services whereby a poster indicates that it was
a customer when the location was an authorized franchise and then again vis-
ited during the period of infringement can also be helpful. Although the al-
leged infringer may object to such evidence, evidentiary rules can be relaxed
on consideration of a motion for temporary or preliminary relief, given the
court’s recognition of the time constraints to gather evidence when a party is
moving for such relief.113
110. Id. at *4.

111. Id.
112. See, e.g., Am. Bullion, Inc. v. Regal Assets, LLC, No. CV 14-01873 DDP ASX, 2014
WL 6453783, at *5 (C.D. Cal. Nov. 17, 2014), on reconsideration in part, No. CV 14-01873
DDP, 2014 WL 7404597 (C.D. Cal. Dec. 30, 2014), appeal dismissed (Mar. 20, 2015) (“As
Regal itself acknowledges, American Bullion has provided evidence of lost sales. American Bul-
lion received feedback from at least twenty-four consumers who chose not do business with
American Bullion, but did provide feedback as to why they avoided American Bullion’s Services.
Of those consumers, nearly all opted to deal with Regal instead. Several consumers highlighted
reviews touting Regal, bad reviews of American Bullion, and references to nonparty American
Bullion Exchange as motivating forces behind their decisions to use Regal rather than American
Bullion.”) (record citations omitted); but see Wells Fargo & Co. v. ABD Ins. & Fin. Servs. Inc.,
2014 WL 4312021, at *12 (N.D. Cal. Aug. 28, 2014) (“[E]ven if Wells Fargo could show that it
had lost (or was likely to lose) business as a result of defendants’ use of the ‘ABD’ name, it is
likely that such harm could be remedied through monetary damages—as opposed to harm to
reputation or goodwill, which is less easily quantified.”).
113. Herb Reed Enters., LLC v. Florida Entm’t Mgmt., Inc., 736 F.3d 1239, 1250 n.5 (9th
Cir. 2013) (where injunctions are sought “at a point when there has been limited factual devel-
opment, the rules of evidence do not apply strictly”); see also Rosen Entm’t Sys., LP v. Eiger
Vision, 343 F. Supp. 2d 908, 912 (C.D. Cal. 2004) (“District courts have discretion to consider
otherwise inadmissible evidence in ruling on the merits of an application for a preliminary
injunction.”).

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Additionally, a franchisor may argue that the customers and goodwill gen-
erated by the operation of the franchised location in connection with the fran-
chisor’s trademarks are the property of the franchisor. Such arguments will be
bolstered by agreement provisions in which the franchisee acknowledges that
the location’s customers are the franchisor’s customers and that the goodwill
from the operation of the location using the franchisor’s trademarks accrues
exclusively to the franchisor. Franchisors whose agreements do not contain
such acknowledgments should consider adding appropriate acknowledgments.
D. Harm to the Brand, Goodwill, or Business Reputation of the

Trademark Owner
In order to demonstrate harm to its brand, goodwill, or business reputa-
tion, a franchisor must provide a comprehensive explanation of its business
and the importance of its trademarks to its business. A franchisor should
also provide detailed evidence of the efforts made in developing and promot-
ing its trademarks. Such evidence would typically take the form of how much
is spent on marketing, advertising, and enforcement efforts to protect the
trademarks. For example, the U.S. District Court for the Northern District
of Illinois concluded that injunctive relief was especially important where the
franchisor had expended considerable effort and money in promoting the
“valuable name and trademark” over time and the loss of control over and
harm to the same would be difficult to remedy through money damages.114
Similarly, in distinguishing the insufficiency of the evidence provided in Herb
Reed, a district court in the District of Nevada concluded that, despite a fail-
ure to show evidence of actual confusion, an “inference of irreparable harm”
could be drawn where Toyo Tires had shown that in the past nearly fifty
years it had invested more than $105 million on marketing and promotional
activities throughout the United States and had enjoyed annual sales of $500
million and that the infringing acts caused harm to its “considerable time and
effort” in building such reputation.115 Given that parties have limited time to
gather information when seeking temporary or preliminary injunctive relief,
it is a good practice to track, rather than compile from scratch, information
regarding historical marketing and promotional expenditures so that it can
be easily obtained to support a motion for injunctive relief.
Evidence of independent awards for brand quality or brand recognition
will also be helpful to demonstrating the strong value of the franchisor’s
brand, goodwill, and business reputation. This will, in turn, bolster the argu-
114. Century 21 Real Estate, LLC v. Destiny Real Estate Props., 2011 WL 6736060, at *7
(N.D. Ind. Dec. 19, 2011).
115. Toyo Tire & Rubber Co. v. Kabusikiki Kaisha Tokyo Nihoon Rubber Corp, No.
214CV01847JADVCF, 2015 WL 6501228, at *4 (D. Nev. Oct. 26, 2015) (“Meanwhile, Toyo-
moto has merely piggy-backed off of Toyo’s success: Toyomoto markets its counterfeit products
on various deceptively named websites, passes itself off as being a Japan-based company, and
even exhibited its products at SEMA, a trade show that drew 60,000 buyers and that Toyo
also attended.”).

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ment that a holdover franchisee’s appropriation of the franchisor’s goodwill

is a type of harm that cannot be adequately compensated by money damages
and is, therefore, irreparable.116
E. Ongoing Actual Confusion

Evidence of ongoing actual confusion is generally considered compelling
evidence of irreparable harm.117 As discussed above with respect to loss of
customers, online review services can be helpful in demonstrating ongoing
actual confusion. Comments that a customer believes the location is still
an authorized outlet, particularly if demonstrating an unfavorable change
in perceived quality, can be helpful to establish ongoing actual confusion.
For example, in ADT, LLC v. Capital Connect, Inc.,118 the U.S. District
Court for the Northern District of Texas found ADT’s evidence of actual
confusion persuasive when ADT submitted fifty-five declarations, four
local news reports, and 269 customer complaints demonstrating that cus-
tomers were confused over the affiliation of a competing brand’s services.119
Although ADT submitted an unusually large amount of evidence of confu-
sion and less evidence may suffice, movants must do more than merely sub-
mit de minimis evidence to prove likelihood of confusion120 and, at least in
the Ninth Circuit, must demonstrate current, actual confusion as opposed
116. 7-Eleven, Inc. v. Grewal, 60 F. Supp. 3d 272, 280–81 (D. Mass. 2014) (“Here, Defen-
dants do not deny they continue to operate a business purporting to be a 7-Eleven franchise,
thereby necessitating the court’s presumption that customers of this ‘rogue’ establishment are
likely to be confused. . . . Since Defendants have admitted they continue to operate a conve-
nience store as though it were a 7-Eleven franchise, it follows that 7-Eleven will suffer irrepa-
rable harm if relief is not granted.”) (footnote omitted); Curves Int’l, Inc. v. Fox, No. CIV.A.
12-12250-RGS, 2013 WL 1946826, at *2 (D. Mass. May 9, 2013) (“Curves suffers harm to
its goodwill and reputation, and is unable to protect its other franchisees from the actions of
Fox while she holds herself out to be a legitimate Curves franchisee.”).
117. See, e.g., Pom Wonderful LLC v. Hubbard, 2015 WL 10433693, at *12 (C.D. Cal.
Aug. 6, 2015) (“[O]ne way to show a likelihood of irreparable harm is to show that there has,
to date, been some actual confusion or harm.”); but see note 123 and accompanying text, infra.
118. No. 3:15-CV-2252-G, 2015 WL 6549277 (N.D. Tex. Oct. 28, 2015).
119. Id. at *10 (“The confusion presented in the affidavits shows actual confusion about what
entity the sales associate at the door represented, with what entity the sales associate was affil-
iated, how the sales associate came to arrive at the door, and the purpose for which he/she was at
the door.”).
120. See, e.g., 27–24 Tavern Corp. v. Dutch Kills Centraal, No. 14-CV-1625-FB-RER, 2015
WL 5772158, at *16–17 (E.D.N.Y. Sept. 29, 2015) (recognizing that proving actual confusion is
“very difficult,” but, nevertheless, concluding that “[p]laintiff has offered no evidence by which
the Court may assess the scale of the confusion, but on its face, three anecdotes of actual con-
fusion appear to constitute de minimis evidence.”); Buzz Bee Toys, Inc. v. Swimways Corp., 20
F. Supp. 3d 483, 509, n.10 (D.N.J. 2014) (refusing to grant a preliminary injunction wherein the
plaintiff ’s actual confusion evidence consisted of a sole reference to a blog posting, concluding
that “even if the blogger had been confused, ‘statements on message boards on the Internet do
not alone create a substantial likelihood of success on the merits of a likelihood of confusion.’ ”)
(quoting Katiroll Co., Inc. v. Kati Roll & Platters Inc., Civ. 10–3620(GEB), 2011 WL 346502,
at *6 (D.N.J. Feb. 1, 2011)).

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to predictions about the future.121 Survey evidence can also be very helpful
to establishing actual consumer confusion.122
Some courts may disregard evidence of ongoing actual confusion in per-
forming an irreparable injury analysis on the grounds that actual confusion is
an element of the trademark claim, thereby going to the merits of the dis-
pute, and holding that consideration of such evidence would merely amount
to an indirect presumption of injury where a party establishes a likelihood of
confusion.123
F. Acknowledgments of Irreparable Harm in the Franchise Agreement

In Dunkin’ Donuts Franchised Restaurants, LLC v. ABM Donuts, Inc.,124 the
court held that the franchisee’s acknowledgment that its post-termination
use of the franchisor’s marks constituted irreparable harm was sufficient to
find irreparable harm.125 A contractual acknowledgment of irreparable
harm similarly supported the grant of a permanent injunction in Fresh Del
Monte Produce Inc. v. Del Monte Foods Co.126 Accordingly, franchisors whose
121. San Miguel Pure Foods Co. v. Ramar Int’l Corp., 625 F. App’x 322, 327 (9th Cir. 2015)
(“The district court’s finding of irreparable harm was based on the speculation that ‘Ramar would
effectively lose control over the Magnolia brand,’ not that it actually had. To support its con-
clusion, the district court cited to evidence that Ramar had expanded its business operations
to 2,000 stores and non-Asian retailers. However, this evidence of Ramar’s growth did not
show that San Miguel’s infringement caused irreparable harm to Ramar. Instead of focusing
on actual harm, the district court justified the injunction by reasoning that San Miguel should
not be able to ‘introduce new Magnolia products more broadly.’ That is a prediction about
the future, not a finding based on proof of actual harm needed to support the grant of an
injunction.”).
122. See, e.g., Pom Wonderful LLC v. Pur Beverages LLC, No. CV1306917MMMCWX,
2015 WL 10433693, at *16, n.92 (C.D. Cal. Aug. 6, 2015) (declining to find irreparable
harm, but stating that “[a]s the court explained at the hearing, apart from evidence of actual con-
sumer confusion or actual damage to reputation and goodwill, Pom Wonderful could have prof-
fered survey evidence indicating that the consuming public perceives Hubbard’s pûr pom spe-
cifically, or energy drinks generally, in a negative light. Had such evidence been adduced, it is
likely the court would have found that Pom Wonderful had satisfied its burden under Herb
Reed Enterprises. . . . It would be reasonable to infer likely harm to a plaintiff ’s reputation or
goodwill if it could demonstrate that the consuming public has a negative perception of defen-
dant’s product, a product that is sold under a confusingly similar mark. Pom Wonderful adduced
no evidence of this type or any other that would permit the court to conclude that Flynn’s state-
ments are grounded in evidence rather than speculation.”).
123. See Herb Reed Enters., LLC v. Florida Entm’t Mgmt., Inc., 736 F.3d 1239, 1251 (9th
Cir. 2013) (holding that finding of irreparable harm based upon evidence of consumer confusion
improperly “collapses the likelihood of success and the irreparable harm factors”); Williams v.
Green Valley RV, Inc., No. 815CV01010ODWMRW, 2015 WL 4694075, at *2 (C.D. Cal.
Aug. 6, 2015) (“Plaintiff ’s evidence of irreparable harm is nothing more than a regurgitation
of consumer confusion evidence, which is the exact type of evidence explicitly rejected by the
Ninth Circuit in Herb Reed. Irreparable harm is no longer presumed or proven by a mere show-
ing of consumer confusion. Allowing Plaintiff ’s evidence of customer confusion as proof of ir-
reparable harm would ‘collapse the likelihood of success and the irreparable harm factors.’ ”)
(quoting Herb Reed, 736 F.3d at 1251)).
124. No. CA 11-270 S, 2011 WL 6026129 (D.R.I. Oct. 4, 2011).
125. Id. at *6.
126. 933 F. Supp. 2d 655, 664 (S.D.N.Y. 2013) (“There is no question, especially in light of
[defendant’s] acknowledgment in the License Agreement itself that any breach would result in

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agreements do not contain acknowledgments of irreparable harm from the

franchisee’s unauthorized, post-termination, or post-expiration use of the
franchisor’s trademarks should consider adding such acknowledgments to
their agreements.
G. A Note of Caution—Beware of the Impact of Unreasonable Delay

Franchisors should be mindful that an unreasonable delay in seeking in-
junctive relief may result in denial of a motion for injunctive relief, even
where ample evidence of irreparable harm is provided.127
V. Conclusion
The Roberts concurrence in eBay cited Martin v. Franklin Capital Corp.128

for the proposition that “[d]iscretion is not whim, and limiting discretion ac-
cording to legal standards helps promote the basic principle of justice that
like cases should be decided alike.”129 Unfortunately, in the world of injunc-
tions sought to protect trademark rights following the Supreme Court’s de-
cisions in eBay and Winter, it can fairly be said that like cases have routinely
been decided differently. Unless and until the Supreme Court weighs in on
the issue of irreparable harm in the context of trademark claims, franchisors
that desire to obtain the types of injunctions they obtained in the past to pro-
tect their trademarks should not rely upon the presumption of injury, but
should be prepared to offer systemic arguments regarding the inherent irrep-
arable nature of the harm caused by holdover franchisees as well as specific
evidence of irreparable harm.
irreparable harm . . . , that such injuries are difficult to measure and that [plaintiff ] should not be
expected to suffer them.”).
127. Oakland Trib., Inc. v. Chronicle Pub. Co., 762 F.2d 1374, 1377 (9th Cir. 1985) (a “long
delay before seeking a preliminary injunction implies a lack of urgency and irreparable harm”);
27–24 Tavern Corp. v. Dutch Kills Centraal, No. 14-CV-1625-FB-RER, 2015 WL 5772158, at
*21 (E.D.N.Y. Sept. 29, 2015) (“[T]he Court is compelled to find that plaintiff ’s unexplained
delay of five months undercuts its claim of irreparable harm.”); Flint v. Dennison, 336 F. Supp. 2d
1065, 1070 (D. Mont. 2004) (“A preliminary injunction is sought upon the theory that there is an
urgent need for speedy action to protect the plaintiff ’s rights. By sleeping on its rights a plaintiff
demonstrates the lack of need for speedy action. . . .”) (internal citations omitted); Headwaters,
Inc. v. Bureau of Land Mgmt., Medford Dist., 665 F. Supp. 873, 876 (D. Or. 1987) (holding that
delay in seeking preliminary injunction is factor to be considered in weighing propriety of
relief ).
128. 546 U.S. 132 (2005).
129. Id. at 139.

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To Presume, or Not to Presume, Irreparable Injury in Trademark Disputes Involving

Franchises Following eBay and Winter

Stable URL: https://www.jstor.org/stable/10.2307/26421639

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The recent tenth anniversary of the Supreme Court’s

1. 547 U.S. 388 (2006).

Scott McIntosh (scott.mcintosh@quarles.com) is a partner and Jonathan Labukas ( jonathan.

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franchise agreement, involve trademark claims. Most claims involving trade-

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I. eBay and Winter Have Created Uncertainty Regarding the

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II. The Circuits Have Split Regarding the Issue of Presumption

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A. The Fifth Circuit Has Specifically Retained the Presumption of Irreparable

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28. Id. at 929.

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B. The Third and Ninth Circuits Have Specifically Rejected the

34. 736 F.3d 1239 (9th Cir. 2013).

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C. Status of the Presumption in the Remaining Circuits

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it applied to the trademark claims, concluding that “irreparable harm . . . is

53. Id. at 280.

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tions” in trademark infringement cases.59 In North American Medical Corp. v.

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Similarly, the Tenth Circuit in Lorillard Tobacco Co. v. Engida declined to

3. Circuits That Have Not Yet Had an Opportunity to Rule on the

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courts in those jurisdictions has led to an irregular approach to the applica-

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III. There Are Strong Systemic Reasons for Finding Irreparable

81. Id. at *5 (quoting Abbott, 971 F.2d at 16).

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From the perspective of the customer, the location or telephone number is

91. Petro Franchise Sys., LLC, 607 F. Supp. 2d at 795.

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IV. How Does a Party Establish the Requisite Irreparable Injury

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A. Franchisors Will Improve Their Prospects of Establishing Irreparable Injury

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seeking an injunction.104 In the non-franchise context, for example, the U.S.

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the termination of the franchise agreement.110 Accordingly, because the for-

110. Id. at *4.

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D. Harm to the Brand, Goodwill, or Business Reputation of the

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ment that a holdover franchisee’s appropriation of the franchisor’s goodwill

E. Ongoing Actual Confusion

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F. Acknowledgments of Irreparable Harm in the Franchise Agreement

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agreements do not contain acknowledgments of irreparable harm from the

G. A Note of Caution—Beware of the Impact of Unreasonable Delay

The Roberts concurrence in eBay cited Martin v. Franklin Capital Corp.128

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