IP Law Daily, TRADEMARK—S.D.N.Y.: Preliminary injunction denied in trademark dispute involving competing South Asian film festivals, (Aug 20, 2024)

By Patricia K. Ruiz, J.D.

A contrary ruling would harm competitors as well as consumers, who are likely to understand such terms in their descriptive sense rather than as an indication of source, the court held.

The U.S. District Court for the Southern District of New York denied a motion for preliminary injunction in a lawsuit seeking protection of the mark SOUTH ASIAN FILM FESTIVAL and its acronym SAFF. The court found the marks to be merely descriptive of the place where an article is manufactured or produced and held that they cannot be monopolized as a trademark (Amin v. Hingorani, No. 1:22-cv-09851-PGG (S.D.N.Y. Aug. 16, 2024)).

Applications for trademark protection. The plaintiff founded and operates the South Asian International Film Festival (SAIFF), which has held a festival in New York City since 2004. On October 25, 2019, the plaintiff applied to the U.S. Patent and Trademark Office (PTO) for registration of the following marks related to his film festival: SOUTH ASIAN FILM FESTIVAL; the acronym SAFF; SOUTH ASIAN INTERNATIONAL FILM FESTIVAL; and the acronym SAIFF. The PTO rejected the applications, finding that the phrases and acronyms specified in his applications are not eligible for trademark protection because they are geographically descriptive.

The plaintiff requested reconsideration, not addressing the PTO’s basis for refusal but merely stating he “exclusively” and “continuously” used each mark in commerce for the past 18 years. The PTO again rejected the applications but invited the plaintiff to amend his applications to specify that he was proceeding under section 2(f) of the Lanham Act, acquired distinctiveness premised on substantially exclusive and continuous use of the marks in commerce for five years. The same day, the plaintiff resubmitted the same statement he had filed in seeking reconsideration of the initial rejection. Without explanation, the PTO reversed its original decision and granted registration of SOUTH ASIAN FILM FESTIVAL and SOUTH ASIAN INTERNATIONAL FILM FESTIVAL under section 2(f). The PTO granted registration of SAFF and SAIFF under section 1(a) of the Lanham Act for “actual use of the mark in commerce.”

Lawsuit. Competitor defendants conduct festivals featuring South Asian films and debuted a South Asian film festival in New York City, using the name NYC South Asian Film Festival (NYC SAFF). In 2022, the plaintiff filed suit alleging that the competitors are infringing on his registered trademarks by using NYC South Asian Film Festival, NYC SAFF, Long Island South Asian Film Festival, LI SAFF, and Dallas/Fort Worth South Asian Film Festival, and DFW SAFF. The lawsuit sought an order enjoining the competitors from using its trademarks to market their film festivals, compelling the competitors to publish a disclaimer on their promotional or advertising materials that they are not associated in any manner with SAIFF, and requiring the competitors to provide an accounting of all gross revenue derived from their festivals since 2015 and expenses incurred in producing such revenue. The plaintiff also sought a temporary restraining order and a preliminary injunction to enjoin the competitors form using the trademarks registered to the plaintiff or any variations thereof or similar marks in a film festival scheduled to take place the next day.

Reconsideration, new motion. The parties attempted to settle and failed, and the court denied the motion for preliminary injunction. The plaintiff moved for reconsideration arguing his trademarks enjoy a presumption of secondary meaning and filed a second motion for preliminary injunction seeking substantially the same relief as in his first application. The court denied the reconsideration motion as moot, as the new motion incorporated the same arguments as in the motion for reconsideration.

Preliminary injunction denied. The court concluded the plaintiff failed to show a likelihood of success on the issue of whether SOUTH ASIAN FILM FESTIVAL has acquired secondary meaning or serious issues going to the merits of that determination. Thus, the words “South Asian film festival” are merely descriptive of the place where an article is manufactured or produced and cannot be monopolized as a trademark. A contrary ruling, the court held, would not only harm competing South Asian film festivals but also consumers, who are likely to understand such terms in their descriptive sense rather than as an indication of source. Because SOUTH ASIAN FILM FESTIVAL and SAFF are synonymous and used interchangeably, the court found the plaintiff failed to demonstrate a likelihood of success on, or serious issues going to the merits of, his claim that the term SAFF is protectable.

The Case is No. 1:22-cv-09851-PGG.

Judge: Gardephe, P.

Attorneys: Alexander Edward Eisemann (Alexander E. Eisemann, Attorney at Law) for Shilen Amin. Lawrence Seldin Rosenthal (Rosenthal IP Law) for Jitin Hingorani.

Companies: Jingo Media; DFW South Asian Film Festival; NYC South Asian Film Festival; Li South Asian Film Festival; Tidal Growth Consultants

Cases: Trademark NewYorkNews