## Facts

- Herb Reed Enterprises, LLC (HRE) managed Herb Reed’s business affairs and asserted trademark rights in “The Platters,” a vocal group formed in 1953 with Reed as a founding member.
- In 1956, the original members signed employment contracts assigning rights in the name “The Platters” to their manager’s corporation, Five Platters, Inc. (FPI).
- After the group’s breakup, competing groups performed under variations of “The Platters,” leading to extensive disputes over ownership of the mark.
- Reed continued to perform as “Herb Reed and The Platters” and entered a 1987 settlement giving him the right to perform under that designation, plus a contingent right to use “The Platters” alone if a final order later determined FPI lacked rights in the mark.
- Marshak (Florida Entertainment Management, Inc. and Larry Marshak) claimed the right to use “The Platters” through an asserted chain of title from FPI to other entities and ultimately to Marshak.
- In 2012, HRE obtained a default judgment against FPI in Nevada declaring FPI had no valid rights in “The Platters” and awarding HRE rights to the mark.
- HRE then sued Marshak in Nevada for trademark infringement and sought a preliminary injunction barring Marshak’s use of “The Platters” in connection with any vocal group.
- Marshak raised defenses including res judicata (based on prior New York litigation), laches, and abandonment.
- The district court granted a broad preliminary injunction, concluding HRE was likely to succeed and treating reputational harm and loss of control over the mark as sufficient to show irreparable harm.

## Issues

1. Whether prior New York litigation barred HRE’s claims under res judicata.
2. Whether laches barred HRE from seeking preliminary injunctive relief.
3. Whether Marshak strictly proved HRE abandoned the mark.
4. Whether, after eBay and Winter, a trademark plaintiff must affirmatively prove likely irreparable harm to obtain a preliminary injunction, rather than relying on a presumption tied to likely confusion or success on the merits.

## Decision

- The Ninth Circuit held the prior New York actions did not bar HRE’s claims under res judicata.
- The court held laches did not bar HRE’s request for preliminary relief on the record presented.
- The court affirmed the rejection of abandonment because Marshak did not strictly prove it.
- The court held that, under eBay and Winter, a trademark plaintiff seeking a preliminary injunction must establish a likelihood of irreparable harm; irreparable harm cannot be presumed.
- The court reversed the preliminary injunction because the record did not contain evidence supporting a finding that irreparable harm was likely absent preliminary relief.

## Legal Principles

- Preliminary injunctive relief requires proof of: (1) likely success on the merits, (2) likely irreparable harm absent relief, (3) equities favoring the movant, and (4) public interest favoring relief.
- In trademark cases, irreparable harm is not presumed from likely confusion or likely success; the plaintiff must produce evidence that irreparable injury is likely.
- Generalized assertions about harm to reputation, goodwill, or loss of control over a mark, without evidentiary support tied to likely injury, are insufficient to establish irreparable harm.
- Trademark abandonment is an affirmative defense that must be strictly proved by the party asserting it.

## Conclusion

The Ninth Circuit reversed a trademark preliminary injunction because the plaintiff did not support irreparable harm with evidence, holding that post-eBay and Winter courts may not presume irreparable harm from likely confusion or likely success on the merits.


Herb Reed Enters., LLC v. Fla. Entm't Mgmt., Inc., 736 F.3d 1239 (9th Cir. 2013)