IP Law Daily, TRADEMARK—2d Cir.: FDNY improperly enjoined from using ‘MSOC’ mark for emergency rescue conference, (Apr 17, 2024)

By Brian Craig, J.D.

When a mark corresponds so closely to the product it designates, the mark is suggestive and the mark “Medical Special Operations Conference” is inherently descriptive.

Concluding that the federal district court in Brooklyn, New York, erred in assessing the strength of the trademarks “Medical Special Operations Conference” and its acronym, “MSOC,” the federal appeals court in New York has vacated a preliminary injunction entered in favor of a conference organizer against the Fire Department of New York (FDNY). The U.S. Court of Appeals for the Second Circuit concluded that the marks “Medical Special Operations Conference” and MSOC are inherently descriptive, and the district court overestimated the trademark strength of the marks (City of New York v. Henriquez, April 16, 2024, Carney, S.).

A rescue paramedic, Juan Henriquez, who has worked for the FDNY, began in 2010 to organize conferences for emergency rescue medical professionals. The conference organizer began using the “Medical Special Operations Conference” name and “MSOC” acronym for conferences. The conference organizer registered the “Medical Special Operations Conference” name and “MSOC” acronym with the USPTO in 2020. The FDNY filed a lawsuit in the federal district court in Brooklyn, New York in 2022 against the conference organizer requesting a declaratory judgment of non-infringement and cancellation of the federally registered MSOC mark. The FDNY planned to host a May 2023 conference with the “MSOC” name. The conference organizer planned to host his own MSOC event in the spring in 2023 in New York. The conference organizer filed a counter-claim against the FDNY for trademark infringement and sought a preliminary injunction. The district court entered a preliminary injunction against the FDNY from using the marks. The FDNY appealed.

Likelihood of confusion. The appeals court held that the district court erred in its likelihood of confusion analysis and finding that the paramedic would likely prevail on the merits of his trademark infringement claim. The district court concluded that the marks “Medical Special Operations Conference” and “MSOC” were at least strongly suggestive. The Second Circuit held that this conclusion was erroneous when considering the marks in the proper context. The mark “Medical Special Operations Conference” is only inherently descriptive. The district court did not consider the conference organizer’s concessions that the marks are descriptive. The district court also did not consider the USPTO’s determination that the marks are descriptive. When a mark corresponds so closely to the product it designates, the mark is suggestive, the panel held. For the same reasons, the acronym “MSOC” is also descriptive. Recognizable abbreviations for inherently descriptive marks are usually themselves inherently descriptive.

Because the district court erred in concluding the likelihood of success on the merits and abused its discretion by issuing a preliminary injunction against the FDNY, the Second Circuit vacated the entry of the preliminary injunction. On remand, the appeals court directed the district court conduct the appropriate analysis based on marks’ inherent strength.

Licensee-estoppel theory. The Second Circuit declined to consider the conference organizer’s licensee-estoppel theory that was not analyzed by the district court. The conference organizer argued that even if the marks are descriptive, he holds rights over the marks under a licensee estoppel theory. The conference organizer helped organize the FDNY’s conferences from 2013 to 2019. The conference organizer argued that the FDNY, having previously recognized his rights, cannot now change course and is estopped. The Second Circuit remanded the case to the district court to fully evaluate the licensee-estoppel theory.

The Case is No. 23-325.

Attorneys: MacKenzie Fillow (New York City Law Department) for City of New York. Jordan Fletcher (Fletcher Law, PLLC) for Juan Henriquez.

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