Last week, the U.S. Court of Appeals for the Second Circuit issued an opinion in City of New York v. Henriquez, No. 23-325-cv (April 16, 2024), vacating the district court’s grant of a preliminary injunction against the Fire Department of New York (“FDNY”).
In 2011-2012, appellant Juan Henriquez, a rescue paramedic with FDNY, began to organize conferences geared toward civilian emergency responders called “Medical Special Operations Conferences” or “MSOC” (collectively, the “marks”). Initially, Henriquez collaborated with FDNY, but by 2018 he asked FDNY to remove references to the marks from its website. In 2019, Henriquez sought federal registration of the marks. While his application was initially rejected because the PTO found the marks merely descriptive, Henriquez ultimately succeeded in obtaining registration in 2020 after attesting he had been using the marks on a substantially exclusive and continuous basis for at least five years.
FDNY, also claiming rights in the marks, asked Henriquez to stop using them in 2019, before eventually bringing suit in the Eastern District of New York to cancel Henriquez’s registration. Henriquez countersued for trademark infringement and sought a preliminary injunction, which the district court granted. FDNY appealed.
On appeal, the Second Circuit held that the district court committed legal error by overestimating the strength of the marks and finding them to be suggestive, rather than descriptive. Because the Court found this legal error was central to the district court’s decision, it held the issuance of the preliminary injunction was an abuse of discretion.
The Court held that the district court made three missteps in evaluating the marks’ strength under the Polaroid factors. First, the district court ignored Henriquez’s own implicit concessions that the marks are descriptive. Second, the district court misunderstood the PTO’s determination. The district court presumed the marks were inherently distinctive, citing the principle that registration without proof of secondary meaning creates such a presumption. Here, however, the PTO determined the marks were merely descriptive, and only registered them after receiving evidence of secondary meaning, so the proper presumption is that they are inherently descriptive with acquired secondary meaning. Finally, the district court failed to properly consider whether the intended audience—prospective MSOC attendees—would consider the marks descriptive. Ultimately, the Court determined the marks are weak and entitled to only “extremely narrow” protection. Because Henriquez did not rely on any other Polaroid factors to defend the preliminary injunction, the Court vacated and remanded.
