In the United States Court of Appeals For the Second Circuit ________

AUGUST TERM 2023

ARGUED: JANUARY 19, 2024 DECIDED: APRIL 16, 2024

No. 23-325-cv

THE CITY OF NEW YORK, by and through the FDNY, and FDNY FOUNDATION, INC., Plaintiffs-Counter Defendants-Appellants,

v.

JUAN HENRIQUEZ, Defendant-Counter Claimant-Appellee,

MEDICAL SPECIAL OPERATIONS COMMUNITY, INC., Defendant. ________

Appeal from the United States District Court for the Eastern District of New York. ________ Before: LIVINGSTON, Chief Judge, AND WALKER AND CARNEY, Circuit Judges. ________ 2 No. 23-325-cv

To first responders, “medical special operations” has a special meaning: providing care in extraordinary circumstances, such as combat zones or urban disasters. It is only natural that a meeting for those working in this field might be called a “Medical Special Operations Conference.” And, indeed, Appellee Juan Henriquez convened several meetings under that name. But the most natural name is often not the one that receives the most protection under our trademark law. We conclude that “Medical Special Operations Conference” does nothing more than describe what Henriquez’s meetings involved. The district court (Matsumoto, J.) thought otherwise and enjoined Appellants the City of New York and the FDNY Foundation from calling their own events “Medical Special Operations Conferences.” That judgment rested upon a misunderstanding of how we ascertain how much protection a trademark warrants. We therefore VACATE the preliminary injunction and REMAND for further proceedings.

________

MACKENZIE FILLOW (Richard Dearing, Devin Slack, on the brief), for Sylvia O. Hinds-Radix, Corporation Counsel for the City of New York, New York, NY, for Plaintiffs-Counter Defendants- Appellants the City of New York, by and through the FDNY, and FDNY Foundation.

JORDAN FLETCHER, Fletcher Law, PLLC, New York, NY, for Defendant-Counter Claimant-Appellee Juan Henriquez.

________ JOHN M. WALKER, JR., Circuit Judge:

To first responders, “medical special operations” has a special meaning: providing care in extraordinary circumstances, such as 3 No. 23-325-cv combat zones or urban disasters. It is only natural that a meeting for those working in this field might be called a “Medical Special Operations Conference.” And, indeed, Appellee Juan Henriquez convened several meetings under that name. But the most natural name is often not the one that receives the most protection under our trademark law. We conclude that “Medical Special Operations Conference” does nothing more than describe what Henriquez’s meetings involved. The district court (Matsumoto, J.) thought otherwise and enjoined Appellants the City of New York and the FDNY Foundation from calling their own events “Medical Special Operations Conference.” That judgment rested upon a misunderstanding of how we ascertain how much protection a trademark warrants. We therefore VACATE the preliminary injunction and REMAND for further proceedings.

BACKGROUND 1

Juan Henriquez is a rescue paramedic with the Fire Department of New York (“FDNY”). Since