FDNY Prevails in Trademark Case With Medic

The US Second Circuit Court of Appeals has handed down a ruling in favor of FDNY concluding that a trademark owned by an FDNY paramedic in the name of “Medical Special Operations Conference” cannot be enforce because it is descriptive.

FDNY brought the action following a dispute with medic Juan Henriquez. As explained by the Second Circuit:

• Juan Henriquez is a rescue paramedic with the Fire Department of New York.
• Since 2007, he has been under the FDNY’s “special operations command.”
• In 2009 or 2010, Henriquez attended a conference organized by the Special Operations Medical Association (“SOMA”), a group dedicated to emergency medical response in the military. Henriquez was impressed by SOMA’s offerings-so much so that he and some colleagues began planning their own conferences, which he indicated were “based off of” the SOMA meetings, but geared toward civilian emergency responders.
• Henriquez did not need to look far for a name. He called his gatherings “Medical Special Operations Conferences,” sometimes using the acronym “MSOC.”
• In 2011 and 2012, Henriquez and his colleagues organized two MSOCs, one in Ohio and one in Georgia.
• For six years starting in 2013, Henriquez helped organize annual MSOCs in New York.
• These were called “MSOC at FDNY,” “FDNY MSOC [year],” or “MSOC [year] at FDNY.” 
• During that six-year period, Henriquez continued convening MSOCs outside New York, with no FDNY involvement.
• But things started to go sideways. In late 2017, Henriquez came to believe that the FDNY was misusing its MSOC funds.
• The next year, he began asking the FDNY to remove any references to MSOC from its website and printed media. And in 2019, Henriquez participated in his last FDNY MSOC.
• Seeing trouble, Henriquez turned to trademark law. The “core federal trademark statute” is the Lanham Act.
• That statute “establishes a system of federal trademark registration” under the auspices of the U.S. Patent and Trademark Office (“P.T.O.”).
• While registration is not strictly necessary to receive judicial protection, it “gives trademark owners valuable benefits” against potential infringement.
• In late 2019, Henriquez asked the P.T.O. to register the mark “Medical Special Operations Conference” under his name.
• The P.T.O. rejected his application because, in its view, “Medical Special Operations Conference” simply described the events Henriquez organized. Under the Lanham Act, “merely descriptive” marks usually cannot be registered.
• That rejection was not the end of the matter.
• The Lanham Act on occasion allows registration even of “descriptive” marks.
• To take advantage of this … an applicant must attest he has been using the mark on a “substantially exclusive and continuous” basis for the five years preceding his application.
• In April 2020, Henriquez amended his application to do just that.
• This time, he was successful: in August 2020, the P.T.O. registered “Medical Special Operations Conference” under Henriquez’s name.
• The FDNY, too, claimed rights over “Medical Special Operations Conference.”
• First, in 2019, the FDNY asked Henriquez to stop using that name for his events.
• Then, in May 2022, following a two-year, pandemic-induced hiatus, the FDNY hosted an MSOC without Henriquez’s involvement.
• Eventually, the FDNY brought this action in which, among other things, it sought cancellation of Henriquez’s trademark.
• Henriquez counterclaimed, alleging, in part, infringement by the FDNY.

The district court agreed with Henriquez concluding that the name is more than just descriptive, has inherent strength as a trademark, and issuing a preliminary injunction against FDNY’s use of it. That prompted the city to appeal. The Second Circuit reversed, concluding that the name “Medical Special Operations Conference” is indeed descriptive. The case was remanded back to the district court for further consideration of the likelihood of confusion, and some ancillary licensing issues, namely: whether FDNY’s use of the trademark was under a license from Henriquez, or whether FDNY’s use during the five year period resulted in Henriquez’s use not being exclusive.

Here is a copy of the decision: