CITY OF NEW YORK BY AND THROUGH FDNY FDNY v. HENRIQUEZ (2025)

Memorandum and Order

At issue in this case, on remand from the Second Circuit, are Mr. Henriquez's trademarks for the words MEDICAL SPECIAL OPERATIONS CONFERENCE (“MSOC Name Mark”) and the acronym “MSOC” (“MSOC Acronym Mark,” collectively, the “MSOC Marks”), used to describe a series of conferences created and organized by Mr. Henriquez and founding members of MSOC for civilian emergency rescue medical professionals. Presently before the court is Defendant and Counter-Plaintiff Juan Henriquez's (“Mr. Henriquez” or “Counter-Plaintiff”) motion for a preliminary injunction against Counter-Defendants the City of New York by and through the FDNY and the FDNY Foundation, Inc. (together the “FDNY Parties” or “Counter-Defendants”) on remand from the Second Circuit. For the reasons set forth below, Counter-Plaintiff's motion for a preliminary junction is GRANTED.

BACKGROUND

I. Factual Background

The Court assumes familiarity with the factual background of the case and adopts in full the findings of fact based on the Parties’ submissions, evidence, and testimony presented at the evidentiary hearing held on January 17 and January 18, 2023, previously set forth in the Court's February 23, 2023 Memorandum Opinion and Order. City of N.Y. v. Henriquez, No. 22-cv-3190 (KAM)(PK), 2023 WL 2186340, at *1–8 (E.D.N.Y. Feb. 23, 2023) (“Henriquez I”).

II. Procedural Background

The FDNY Parties initiated this action on May 31, 2022 requesting declaratory judgment of non-infringement; declaratory judgment declaring Mr. Henriquez's copyright of his MSOC Design logo invalid; a cancellation of the federally registered MSOC Marks; and unfair competition. (ECF No. 1, Complaint.) The Complaint was amended on July 8, 2022, and thereafter, the FDNY Parties filed a Second Amended Complaint on November 10, 2022, amending their claims to request a declaratory judgment of non-infringement and cancellation of Mr. Henriquez's federally registered MSOC Marks. (ECF No. 8, First Amended Complaint (“FAC”); ECF No. 26, Second Amended Complaint (“SAC”).) On November 1, 2022, Mr. Henriquez filed a pre-motion conference request regarding his anticipated motion for a preliminary injunction and filed an answer to the SAC with counterclaims against the FDNY Parties alleging federal trademark infringement, common law trademark infringement, federal unfair competition, and whistleblower retaliation on December 15, 2022. (ECF No. 32, Answer.) The Court set a briefing schedule for Mr. Henriquez's preliminary injunction motion to be fully submitted by January 11, 2023 and held an evidentiary hearing on January 17 and January 18, 2023.

On February 23, 2023, the Court granted Mr. Henriquez's motion for a preliminary injunction pursuant to Federal Rule of Civil Procedure 65 enjoining the FDNY Parties from (1) using the “Medical Special Operations Conference” Mark and “MSOC” Mark without Counter-Plaintiff Mr. Henriquez's permission in connection with charitable fundraising, special events, training courses, and other goods or services and (2) using the “Medical Special Operations Conference” Mark or “MSOC” Mark, name, logo, design, or source designation in connection with the FDNY Parties’ services and goods that are produced, provided, sponsored, authorized by, or connected to Counter-Plaintiff Mr. Henriquez's. Henriquez I, 2023 WL 2186340, at *29.

On March 3, 2023, the Court amended its February 23 Order granting the preliminary injunction to prohibit the FDNY Parties from (1) using Mr. Henriquez's trademarked MSOC Name Mark and MSOC Acronym Mark without his permission, in connection with charitable fundraising, special events, training courses, and other goods or services; and (2) using the MSOC Name Mark and MSOC Acronym Mark, and any name, logo, design, or source designation in connection with the FDNY Parties’ services and goods in any manner that is confusingly similar to Mr. Henriquez's MSOC Name Mark or MSOC Acronym Mark or likely to cause public confusion that such services or goods are produced, provided, sponsored, authorized by, or connected to Mr. Henriquez, including the use of the words “medical” and “special” and “operations” in a same, or similar, or different sequence. (ECF Dkt. Order dated Mar. 3, 2023.)

On March 10, 2023, the FDNY Parties filed a Notice of Appeal. (ECF No. 79, “Not. of App.”) On May 8, 2024, the Second Circuit issued a mandate vacating this Court's grant of the preliminary injunction and remanding the case for further analysis based on the Second Circuit's finding that the Court erred in its analysis of the first likelihood of confusion factor set forth in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961), the strength of the marks at issue, because the MSOC Marks are inherently descriptive, rather than strongly suggestive. City of N.Y. v. Henriquez, 98 F.4th 402, 415 (2d Cir. 2024). The Second Circuit vacated the preliminary injunction and remanded this action to this Court to “conduct the appropriate analysis based on [the Second Circuit's] view” of the strength of the MSOC Marks. Henriquez, 98 F.4th at 415. The Second Circuit did not, however, vacate this Court's finding that every other Polaroid factor favored Mr. Henriquez, nor did it vacate this Court's finding that the MSOC Marks are valid marks entitled to protection, that the FDNY Parties failed to rebut the presumption of harm, and that the balance of equities and public interest weighed in favor of granting the preliminary injunction. See generally Henriquez, 98 F.4th 402.

Discussion

I. Preliminary Injunction Standards

A party seeking preliminary injunctive relief must demonstrate “(1) irreparable harm absent injunctive relief; (2) either a likelihood of success on the merits, or a serious question going to the merits to make them a fair ground for trial, with a balance of hardships tipping decidedly in the plaintiff's favor; and (3) that the public's interest weighs in favor of granting an injunction.” Red Earth LLC v. United States, 657 F.3d 138, 143 (2d Cir. 2011) (quoting Metro. Taxicab Bd. Of Trade v. City of N.Y., 615 F.3d 152, 156 (2d Cir. 2010)).

To establish a likelihood of success on the merits in a trademark action, the claimant must show (1) that “a plaintiff's mark is entitled to protection,” and (2) that defendant's use of the mark is likely to cause “confusion as to the origin or sponsorship of defendant's products.” Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003); Standard & Poor's Corp. v. Commodity Exch., Inc., 683 F.2d 704, 708 (2d Cir. 1982) (“In the preliminary injunction context, a showing of likelihood of confusion as to source or sponsorship establishes the requisite likelihood of success on the merits as well as risk of irreparable harm.”).

To evaluate whether there is a likelihood of confusion, courts in the Second Circuit apply the eight-factor test set forth in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961):

(1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may ‘bridge the gap’ by developing a product for sale in the market of the alleged infringer's product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market.

Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009) (quoting Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 384 (2d Cir. 2005)). “The application of the Polaroid test is ‘not mechanical, but rather, focuses on the ultimate question of whether, looking at the products in their totality, consumers are likely to be confused.’ ” Id. (quoting Star Indus., 412 F.3d at 384).

“In trademark cases, a showing of likelihood of confusion as to source or sponsorship establishes the requisite likelihood of success on the merits as well as risk of irreparable harm.” Am. Cyanamid Co. v. Campagna Per Le Farmacie in Italia, S.P.A., 847 F.2d 53, 55 (2d Cir. 1988) (internal quotation marks and citations omitted); see also Two Hands IP LLC v. Two Hands Am., Inc., 563 F. Supp. 3d 290, 300 (S.D.N.Y. 2021); 15 U.S.C. § 1116(a). “Thus, if (1) the plaintiff establishes that it has a likelihood of success on the merits (that is, it establishes both the validity of its mark and a likelihood of confusion), and (2) the defendant fails to rebut the presumption, the plaintiff satisfies its burden of showing irreparable harm.” Two Hands, 563 F. Supp. 3d at 300.

Finally, when evaluating whether the balance of equities weigh in favor of the plaintiff and granting a preliminary injunction would be in the public interest, courts “must balance the competing claims of injury and must consider the effect on each party of the granting or withholding of the requested relief.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7, 24, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008). “In exercising their sound discretion, courts of equity should pay particular regard for the public consequences in employing the extraordinary remedy of injunction.” Id. (quoting Weinberger v. Romero-Barcelo, 456 U.S. 305, 312, 102 S.Ct. 1798, 72 L.Ed.2d 91 (1982)).

Based on the Court's review of the Second Circuit's decision, the Parties’ submissions on remand, the case record, and applicable law, and for the reasons set forth below, the Court finds that Mr. Henriquez has established all elements required for granting preliminary injunctive relief.

A. Validity of the Trademarks

As an initial matter, the Second Circuit did not disturb, and the Court adopts in full its reasoning and findings in Henriquez I that Mr. Henriquez possesses valid common law and statutory rights to the MSOC Marks. Henriquez I, 2023 WL 2186340, at *10–14 (common law mark); *14–15 (registered USPTO mark).

To establish a common law trademark, the first person to use a mark “obtains an enforceable right to exclude others from using it, as long as the initial appropriation and use are accompanied by an intention to continue exploiting the mark commercially.” La Societe Anonyme des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271 (2d Cir. 1974); Stern Elecs., Inc. v. Kaufman, 523 F. Supp. 635, 640 (E.D.N.Y. 1981), aff'd, 669 F.2d 852 (2d Cir. 1982). As the Court explained in Henriquez I, Mr. Henriquez was the “first creator, user, and appropriator in commerce” of the MSOC Marks and demonstrated an intent to continuously use the Marks commercially. Henriquez I, 2023 WL 2186340, at *14. He “created the term Medical Special Operations Conference, MSOC Acronym, and logo in 2010” in consultation with Mr. Joseph Hernandez, and Mr. Henriquez was among the organizers of the first MSOC conference in Ohio in 2011. Id. at *11. There is “no evidence” that Dr. Doug Isaacs, then FDNY Assistant Medical Director, or any of the FDNY Parties created or used the MSOC Marks “prior to Mr. Henriquez's creation and uses of the name in 2011 in Ohio, and 2012 in Georgia.” Id. at *12. Moreover, since creating the MSOC name, acronym, and logo in 2010, “Mr. Henriquez and his fellow MSOC friends have repeatedly and continuously held MSOC events since 2011, multiple times a year, in multiple states, in ‘an active and public attempt to establish a trade’ around the training and certification of medical special operations.” Id. at *14 (citing ECF No. 49 ¶ 27; ECF No. 49-9, Ex. G); La Societe Anonyme, 495 F.2d at 1271 (“To prove bona fide usage, the proponent of the trademark must demonstrate that his use of the mark has been deliberate and continuous, not sporadic, casual or transitory.”). This, coupled with the fact that Mr. Henriquez has demonstrated his “commercial interest” in the MSOC Marks establishes his common law trademark in the MSOC Marks and standing to protect those marks. Henriquez I, 2023 WL 2186340, at *14; see also La Societe Anonyme, 495 F.2d at 1271.

Additionally, even with a duly registered descriptive mark that “merits little protection under federal trademark law,” Henriquez, 98 F.4th at 410, “[t]here is a ‘presumption of validity’ that attaches to the issuance of a trademark registration. This rebuttable presumption merely shifts the burden of persuasion to the party seeking cancellation, or the alleged infringer.” Quality Serv. Grp. v. LJMJR Corp., 831 F. Supp. 2d 705, 712 (S.D.N.Y. 2011) (citing Cold War Museum, Inc. v. Cold War Air Museum, 586 F.3d 1352, 1357 (Fed. Cir. 2009)); Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F. 3d 206, 217 n.10 (2d Cir. 2012) (“In order to rebut the presumption of validity, the allegedly infringing party must show, by a preponderance of the evidence that the mark is ineligible for protection.”); 15 U.S.C. § 1115(a)(a party seeking to invalidate a registration must prove the existence of a “legal or equitable defense or defect ․ which might have been asserted if such mark had not been registered”). Indeed, “[a] certificate of registration with the PTO is prima facie evidence that the mark is registered and valid (i.e., protect[a]ble), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce.” Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999).

Here, after the USPTO determined that Mr. Henriquez satisfied the conditions for registering a descriptive mark by providing evidence that the mark had secondary meaning, the USPTO granted Mr. Henriquez registration of the words Medical Special Operations Conference. Henriquez, 98 F.4th at 414. This Court also found that the “FDNY Parties offer no evidence to undermine the validity of the registered” MSOC Marks. Henriquez I, 2023 WL 2186340, at *15. Accordingly, the Court's finding in Henriquez I, that Mr. Henriquez has “established he owns a valid protectable mark” and has possessed a “validly registered USPTO Mark to the ‘Medical Special Operations Conference’ name since 2020” remains undisturbed. Id.

B. Likelihood of Confusion

The Court will next evaluate the Polaroid factors, based on the descriptive nature of the marks, and consider whether Mr. Henriquez is entitled to injunction relief. Having determined that Mr. Henriquez has a “protectible property interest in [his] mark, [the Court must] take up the question of whether [the FDNY Parties have] infringed upon that right” by evaluating whether there is a likelihood of confusion that “an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question.” Centaur Comms., Ltd. v. A/S/M Comms., Inc., 830 F.2d 1217, 1225 (2d Cir. 1987), overruled on other grounds by Paddington Corp. v. Attiki Importers & Distribs., Inc., 996 F.2d 577, 585 (2d Cir. 1993) (quoting Mushroom Makers, Inc. v. R.G. Barry Corp., 580 F.2d 44, 47 (2d Cir. 1978)). Specifically, the Second Circuit directed this Court to reevaluate the first Polaroid factor, the strength of the mark, in light of its determination that the MSOC Marks are inherently descriptive rather than suggestive. Henriquez, 98 F.4th at 416.

For the reasons set forth below, the Court finds that the MSOC Marks are protectable descriptive marks with secondary meaning, because they have acquired sufficient public recognition identifying the source, and have achieved relative strength in their market context. See Bernard v. Commerce Drug Co., 964 F.2d 1338, 1340 (2d Cir. 1992) (finding descriptive marks receive trademark protection where they acquire “public association of the trademark with the holder's product or service”). For the reasons set forth below, the Court's finding as to the strength of the descriptive MSOC Marks does not disturb the Court's prior conclusion in Henriquez I that the Polaroid factors weigh in favor Mr. Henriquez. Henriquez I, 2023 WL 2186340, at *19–23. Accordingly, “looking at the products in their totality,” Starbucks Corp., 588 F.3d at 115, the Court again finds there will be a likelihood of confusion should the FDNY Parties and Mr. Henriquez “continue to host events using the MSOC Marks in New York and throughout the country.” Henriquez I, 2023 WL 2186340, at *16.

1. Strength of the Mark

“[T]he strength of a mark depends ultimately on its distinctiveness, or its ‘origin-indicating’ quality, in the eyes of the purchasing public.” McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1131–32 (2d Cir. 1979), superseded on other grounds by Fed. R. Civ. P. 52(a). “The strength of a trademark is assessed based on either or both of two components: (1) the degree to which it is inherently distinctive; and (2) the degree to which it has achieved public recognition in the marketplace, sometimes called acquired strength” or secondary meaning. RiseandShine Corp. v. PepsiCo, Inc., 41 F.4th 112, 120 (2d Cir. 2022) (citing W.W.W. Pharm. Co., Inc. v. Gillette Co., 984 F.2d 567, 572 (2d Cir. 1993)).

a. Inherent Distinctiveness

The four categories of inherent distinctiveness, in ascending order of strength, are: (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. Easy Spirit, LLC v. Skechers U.S.A., Inc., 515 F. Supp. 3d 47, 71 (S.D.N.Y. 2021). Here, it is undisputed that the MSOC Marks are “inherently descriptive.” Henriquez, 98 F.4th at 415. A descriptive mark is “one that tells something about a product, its qualities, ingredients or characteristics.” Gruner + Jahr USA Pub. v. Meredith Corp., 991 F.2d 1072, 1076 (2d Cir. 1993). Descriptive marks are “presumptively unprotectable, but can acquire a degree of protection if they have acquired secondary meaning, i.e. an acquired public recognition as a mark identifying the source.” RiseandShine Corp., 41 F.4th at 121.

b. Secondary Meaning

A “mark acquires secondary meaning when ‘it [is] shown that the primary significance of the term in the minds of the consuming public is not the product but the producer.’ ” Centaur Comms., 830 F.2d at 1221 (quoting 20th Century Wear, Inc. v. Sanmark-Stardust Inc., 815 F.2d 8, 10 (2d Cir. 1987)). “The focus of secondary meaning therefore is the consuming public,” more specifically, the “relevant group of consumers” for the product at issue, here emergency rescue medical professionals and first responders. Id. at 1221–22.

The Court is unconvinced by the FDNY Parties’ argument that Mr. Henriquez must “establish that the [MSOC] marks acquired secondary meaning before [the FDNY Parties] began using its allegedly infringing mark” in 2013. (ECF No. 107 at 25.) This argument “ignores the fact of Mr. Henriquez's prior use and that [Mr. Henriquez] permitted the FDNY [Parties’] 2013 use.” Henriquez I, 2023 WL 2186340, at *11. It is well settled that “an owner of a descriptive mark must demonstrate that the mark had acquired secondary meaning before its competitor commenced use of the mark.” PaperCutter, Inc. v. Fay's Drug Co., Inc., 900 F.2d 558, 564 (2d Cir. 1990) (citing Saratoga Vichy Spring Co. v. Lehman, 625 F.2d 1037, 1043 (2d Cir. 1980)) (emphasis added). Here, the FDNY Parties did not become Mr. Henriquez's competitors until he withdrew his permission to use the MSOC Marks and discovered the FDNY Parties nevertheless planned to host an MSOC-branded conference in 2022. Henriquez I, 2023 WL 2186340, at *8.

This is supported by undisputed evidence that “Mr. Henriquez, and not Dr. Isaacs or anyone else associated with the FDNY leadership, was the creator and prior user of the Medical Special Operations words and MSOC acronym” and, since 2011, “Mr. Henriquez and his fellow MSOC friends have repeatedly and continuously held MSOC events ․ multiple times a year, [and] in multiple states.” Henriquez I, 2023 WL 2186340, at *11, *14. After Mr. Henriquez “invited Dr. Isaacs to a military-oriented conference in Florida and told him about their MSOC events using the MSOC Marks in 2011,” Dr. Isaacs approached Mr. Henriquez about bringing the MSOC events to the FDNY, and Mr. Henriquez worked with and permitted the FDNY Parties to use the MSOC Marks at the MSOC events hosted by the FDNY from 2013 to 2019. Henriquez I, 2023 WL 2186340, at *12. Mr. Henriquez notified the FDNY parties by email in November 2019 that they were no longer authorized to use his MSOC Marks and logo. Id. at *7. The FDNY Parties did not host an MSOC-branded conference in 2020 or 2021. Id. It was not until April 2022 that Mr. Henriquez first discovered the “FDNY planned on holding another MSOC-branded conference in the following month, May 2022, without Mr. Henriquez's permission or participation.” Id. at *8 (citing ECF No. 49). Indeed, on May 10, 2022, “Mr. Henriquez, through counsel, sent a cease-and-desist letter to FDNY and the Foundation regarding their use of his MSOC Marks.” Id. (citing ECF No. 52-24). Accordingly, as of this time, the FDNY Parties became Mr. Henriquez's competitor, and the Court will consider whether the MSOC marks gained secondary meaning “at the time of [the FDNY Parties’] alleged infringement” in 2022. Kelly-Brown v. Winfrey, 659 F. App'x 55, 60 (2d Cir. 2016) (summary order).

Secondary meaning, or acquired distinctiveness, “is determined by analyzing six factors: [1] advertising expenditures, [2] consumer studies linking the mark to a source, [3] unsolicited media coverage of the product, [4] sales success, [5] attempts to plagiarize the mark, and [6] the length and exclusivity of the mark's use.” Car-Freshner Corp. v. Am. Covers, LLC, 980 F.3d 314, 329 (2d Cir. 2020). “No single factor is determinative, and every element need not be proved.” Thompson Med. Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985); see also Centaur Comms., 830 F.2d at 1222 (same).

As this Court set forth in Henriquez I, these secondary meaning factors weigh in favor of Mr. Henriquez. Henriquez I, 2023 WL 2186340, at *18. First, Mr. Henriquez has “provided evidence as to the time and costs of his promotional and marketing efforts since 2010, to both create, organize, and launch the MSOC events, and maintain them, not only for the FDNY Parties, but also with many other host agencies, vendors, and participants throughout the years.” Id. This has included investing hundreds of dollars each year of his own money on “paid social media advertising,” investing thousands of dollars of his own money for “website, advertising, materials, and equipment expenses for the FDNY-hosted MSOC conferences,” and devoting his own time to promoting MSOC events “heavily [with the rest of the MSOC Community” through word of mouth and ․ extensive industry relationships.” (ECF No. 49, Henriquez Decl. ¶¶ 18–20, 49.) Indeed, Mr. Henriquez did not just advertise the FDNY-sponsored MSOC conference, but also prepared and distributed publicity and organizing materials for MSOC-branded events hosted with other organizations outside of New York. (ECF No. 49 ¶ 27.) These marketing efforts have resulted in the MSOC Marks and MSOC Conferences becoming well known and associated with Mr. Henriquez within the first responder community. As to the third factor, unsolicited media coverage, Mr. Henriquez has attested that MSOC events were also “regularly covered in several emergency response trade publications” and “were also covered by local news stations on [several] occasions.” (ECF No. 49 ¶ 50.) Based on these activities, the Court again finds that Mr. Henriquez's “efforts were effective in causing the relevant group of consumers to associate” the MSOC events with Mr. Henriquez. Centaur Comms., 830 F.2d at 1222.

Mr. Henriquez also satisfies the fourth factor, sales success, because the MSOC events demonstrate success based on a “substantial increase in attendance every year since 2011, with roughly 500 attendees participating in the 2022 MSOC event he coordinated.” Henriquez I, 2023 WL 2186340, at *18. Indeed, the 2017 FDNY-sponsored MSOC event in which Mr. Henriquez played a substantial role, brought in approximately $400,000 in net profits. (ECF No. 49 ¶ 48.)

Regarding the fifth and sixth factor, attempts to plagiarize the mark and the length and exclusivity of the mark, Mr. Henriquez has satisfied his burden as to both. The Second Circuit has held where, as here, defendant has intentionally copied plaintiff's mark, defendant “will be presumed to have intended to create a confusing similarity of appearance and will be presumed to have succeeded.” Perfect Fit Indus., Inc. v. Acme Quilting Co., Inc., 618 F.2d 950, 954 (2d Cir. 1980). The FDNY Parties planned to continue using the MSOC Marks, despite lacking authority from Mr. Henriquez, “who explicitly requested that they cease and desist,” Henriquez I, 2023 WL 2186340, at *18, and this deliberate and unauthorized copying of Mr. Henriquez's marks is “persuasive, if not conclusive, evidence of consumer recognition and goodwill.” 20th Century Wear, 815 F.2d at 10.

Further, although “no absolute time span can be posited as a yardstick in cases involving secondary meaning, ․ the length and exclusivity of a mark's use is evaluated in light of the product and its consumers.” Centaur Comms., 830 F.2d 1217 (citing Ralston Purina Co. v. Thomas J. Lipton, Inc., 341 F. Supp. 129, 133–34 (S.D.N.Y. 1972)). As this Court found in Henriquez I, “Mr. Henriquez has provided abundant evidence of the length and exclusivity of his use of MSOC Marks, having held his first MSOC event in 2011, and the continuation of MSOC events, in New York and elsewhere in the United States, including MSOC events during the pandemic years of 2020-2021, even when FDNY did not host an MSOC event.” Henriquez I, 2023 WL 2186340, at *18.

Courts also recognize that “[a]ctual confusion shows at least some amount of secondary meaning.” Grout Shield Distribs., LLC v. Elio E. Salvo, Inc., 824 F. Supp. 2d 389, 412 (E.D.N.Y. 2011) (quoting N.Y. State Elec. & Gas Corp. v. U.S. Gas & Elec., Inc., 697 F. Supp. 2d 415, 430 (W.D.N.Y. 2010)); see also ERBE Elektromedizin GmbH v. Canady Tech. LLC, 629 F.3d 1278, 1290 (Fed. Cir. 2010) (listing actual confusion as a factor in analyzing secondary meaning). Here, Mr. Henriquez “credibly testified to vendors, the public, past participants, volunteers, and instructors expressing confusion about the FDNY's plan for a 2023 MSOC event.” Henriquez I, 2023 WL 2186340, at *21 (citing ECF No. 83 at 136–39). He presented undisputed evidence that he “received inquiries from two conference vendors who were confused about the relationship, if any, between [him] and the Defendant's proposed event in May 2023” that Mr. Henriquez did not approve, and that he received “communications during November 2022 from multiple industry colleagues who, based on the FDNY and Foundation's use of the MSOC and Acronym Marks, appeared to believe that [he] and the MSOC Community [were] producing the FDNY's May 2023 event.” (ECF No. 49 ¶ 43.)

In past events that Mr. Henriquez organized for the FDNY Parties he had arranged with government agencies for participants to receive “trainings, courses, certifications, and accreditations” and funding. Henriquez I, 2023 WL 2186340 at *13, *29 (citing ECF No. 49 ¶ 3; ECF No. 83 at 136–39). After he withdrew consent to the FDNY Parties to utilize his protected Marks for their 2023 conference, Mr. Henriquez also “described participants registering for the FDNY's MSOC-branded events being confused about whether certain courses and certifications that were provided in the past were still going to be available from the FDNY-hosted 2023 event,” and testified as to “at least seven instances of groups of medical professionals signing up for the FDNY-hosted event, expecting to take the pre-conference courses Mr. Henriquez and others provided in past MSOC events, and inquiring about refunds when they realized that the courses would not be available at the FDNY's event planned for 2023.” Henriquez I, 2023 WL 2186340, at *21 (citing ECF No. 83 at 136–39). Taken together, this is sufficient evidence of actual confusion showing “at least some amount of secondary meaning.” Grout Shield Distribs., 824 F. Supp. 2d at 412.

Accordingly, “given the findings of intentional copying of the mark, its duration and exclusive use, and the relative significance of advertising expenditures, considered in the context of the relevant consumer group” of first responders, as well as the undisputed evidence of actual confusion, there is ample evidence for this Court to conclude that the MSOC Marks have achieved secondary meaning in the relevant marketplace of first responders, particularly as they constituted a “small market that does not require a large circulation base in order to acquire consumer identification.” Centaur Comms., 830 F.2d at 1225–26; Henriquez I, 2023 WL 2186340, at *18 (“Thus, even assuming the Medical Special Operations Conference marks are ‘merely descriptive’, ․ the Marks appear to have achieved market distinctiveness and secondary meaning among the community of attendees, trainers, and sponsors of the MSOC branded events.”).

Where, as here, this small market is coupled with the promotional activities described above, the Second Circuit has held that “consumers in that small market would associate the mark with its source” and found, as a result, that the marks at issue had “achieved relative—if not great—strength in [their] market context.” Centaur Comms., 830 F.2d at 1226. Based on the Second Circuit's guidance and the record before this Court, the conclusion in Henriquez I pertains here, that the MSOC marks are protectable descriptive marks that have achieved secondary meaning based on their relative strength in their market context. Id. at 1225 (upholding the district court's finding that Plaintiff's descriptive mark was entitled to protection because it had achieved secondary meaning).¹ “Whether or not this evidence is sufficient to prove secondary meaning to the satisfaction of the ultimate trier of fact, it at least raise[s] serious questions going to the merits, which is sufficient at this stage of the litigation.” LeSportsac, Inc. v. K mart Corp., 754 F.2d 71, 78 (2d Cir. 1985).

2. Similarity of the Marks

As noted above, having reassessed the strength of the MSOC Marks, the Court's finding that they have achieved relative strength in their market context does not disturb the Court's prior conclusion in Henriquez I that the Polaroid factors weigh in favor of Mr. Henriquez. Henriquez I, 2023 WL 2186340, at *15 (“Mr. Henriquez further establishes likelihood of success on the merits, by successfully demonstrating there would be a likelihood of confusion between his and the FDNY Parties’ uses of his MSOC Marks.”). Nevertheless, for completeness, the Court shall address each of the remaining factors in turn. See Henriquez, 98 F.4th at 415 (noting analysis of the remaining Polaroid factors “sometimes depend[s] upon the mark's strength.”) (citing Brennan's Inc. v. Brennan's Rest., L.L.C., 360 F.3d 125, 135 (2d Cir. 2004)); Souza v. Exotic Island Enters., Inc., 68 F.4th 99, 115 (2d Cir. 2023) (noting it is “discouraged” for courts to fail to “engage in a deliberate review of each factor, and, if a factor is inapplicable to a case, to explain why.”).

The second Polaroid factor, “similarity,” is a “holistic consideration that turns on the marks’ sight, sound, and overall commercial impression under the totality of the circumstances.” Akiro LLC v. House of Cheatham, Inc., 946 F. Supp. 2d 324, 334 (S.D.N.Y. 2013) (citing Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 538 (2d Cir. 2005)). Courts evaluate the “overall impression created by the [marks] and the context in which they are found and consider the totality of factors that could cause confusion among prospective purchasers.” Gruner + Jahr, 991 F.2d at 1078.

Here, the FDNY Parties’ “use of the Medical Special Operations Conference name and MSOC acronym in publicizing its conference is identical to the use and sequence of Mr. Henriquez's registered Medical Operations Special Conference trademark, except for the addition of the FDNY logo.” Henriquez I, 2023 WL 2186340, at *19. The FDNY Parties are the “junior user” and “[i]t is extremely unusual for the mark of a junior user to include two identical words of a senior user's mark in sequence.” Car-Freshner, 980 F.3d at 330. Further, as noted above, the FDNY Parties and Mr. Henriquez are operating in a small market and there is undisputed evidence of actual confusion due to the FDNY Parties’ identical use of the MSOC Marks. Thus, having considered the “totality of the circumstances,” the Court finds the similarity of the marks factor weighs heavily in favor of Mr. Henriquez. Akiro LLC, 946 F. Supp. 2d at 334.

3. Proximity of the products and their competitiveness with one another

The third Polaroid factor, “[t]he proximity-of-the-products inquiry[,] concerns whether and to what extent the two products compete with each other.” Cadbury Beverages, Inc. v. Cott Corp., 73 F.3d 474, 480 (2d Cir. 1996) (internal quotation marks omitted). When evaluating this factor, the Court considers both the “market proximity and geographic proximity.” Brennan's, 360 F.3d at 134. “Market proximity asks whether the two products are in related areas of commerce and geographic proximity looks to the geographic separation of the products. Both elements seek to determine whether the two products have an overlapping client base that creates a potential for confusion.” Brennan's, 360 F.3d at 134.

Here, as previously determined, the Parties have clear market proximity as they have “an identical client base, with a nearly identical product.” Henriquez I, 2023 WL 2186340, at *19. There has already been evidence of confusion from this “overlapping client base” as Mr. Henriquez credibly testified as to “at least seven instances of groups of medical professionals signing up for the FDNY-hosted event, expecting to take the pre-conference courses Mr. Henriquez and others provided in past MSOC events, and inquiring about refunds when they realized that the courses would not be available at the FDNY's event planned for 2023.” Henriquez I, 2023 WL 2186340, at *21 (citing ECF No. 83 at 136–39); Virgin Enters., 335 F.3d at 150 (“[T]he closer the secondary user's goods are to those the consumer has seen marketed under the prior user's brand, the more likely that the consumer will mistakenly assume a common source.”). Further, there is “evidence of resources being stretched or diverted between the two [P]arties” as there is a “limited pool of federal grant monies available to support training conferences in the specialized field of urban search and rescue medical training events.” Henriquez I, 2023 WL 2186340, at *19–20. Indeed, Mr. Henriquez had sought and obtained grants and funding for the conferences he has organized, including with the FDNY parties. Id. at 20; (ECF No. 49 ¶¶ 44–45; ECF No. 54 ¶ 12.)

The Parties also have geographic proximity as they both intend to host conferences in New York. Although Mr. Henriquez also hosts MSOC events in other geographic markets throughout the United States, “the MSOC brand is national, with medical responders from all over the country, including the FDNY, traveling to various conferences outside of New York. Therefore, even if the FDNY event takes place only in New York, it likely will affect Mr. Henriquez's MSOC events in New York and other geographic markets, placing the two parties in competition.” Henriquez I, 2023 WL 2186340, at *20.

Accordingly, based on the market and geographic proximity of the parties, the Court finds that the Parties compete with each other and there is an “overlapping client base that creates a potential for confusion.” Brennan's, 360 F.3d at 134. This factor weighs in favor of Mr. Henriquez.

4. Evidence that the senior user may “bridge the gap”

The fourth Polaroid factor “addresses the question of whether the two companies are likely to compete directly in the same market.” Gucci Am., Inc. v. Guess?, Inc., 868 F. Supp. 2d 207, 239-40 (S.D.N.Y. 2012). This is referred to as the likelihood a defendant will “bridge the gap.” Polaroid Corp., 287 F.2d at 495. Where, as here, the parties both compete in the New York metropolitan market and “the parties’ goods are the same, this Polaroid factor is irrelevant because there is no gap to bridge.” 3M Co. v. Performance Supply, LLC, 458 F. Supp. 3d 181, 195 (S.D.N.Y. 2020) (citing Mister Softee, Inc. v. Tsirkos, No. 14-cv-1975 (LTS)(RLE), 2014 WL 2535114, at *5 (S.D.N.Y. June 5, 2014) (issuing a preliminary injunction and noting the fourth Polaroid factor was irrelevant where both parties sold ice cream)).

5. Evidence of actual consumer confusion

The fifth Polaroid factor considers any evidence that consumers are actually confused as to the origin of a particular product or service or as to whether the junior user of a mark is sponsored by or affiliated with the senior user. Disney Enters., Inc. v. Sarelli, 322 F. Supp. 3d 413, 435 (S.D.N.Y. 2018). Evidence of actual consumer confusion “may consist of anecdotal or survey evidence.” LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A., 209 F. Supp. 3d 612, 672 (S.D.N.Y. 2016), aff'd sub nom. LVL XIII Brands, Inc. v. Louis Vuitton Malletier SA, 720 F. App'x 24 (2d Cir. 2017) (internal quotation marks and citation omitted).

Although no surveys were conducted in this case, as described in detail above, there is ample undisputed anecdotal evidence of actual confusion. (See e.g. ECF No. 83 at 136–39 (testimony from Mr. Henriquez as to vendors, the public, past participants, volunteers, and instructors expressing confusion as to the FDNY Parties’ plan for a 2023 MSOC event); ECF No. 49 ¶ 43 (Mr. Henriquez declaration stating vendors and industry colleagues were confused about the relationship between the FDNY-hosted conference and Mr. Henriquez's MSOC events)). Accordingly, the Court finds that the “confusion represented by the [attendees, vendors, and speakers] could inflict commercial injury in the form of either a diversion of sales, damage to goodwill, or loss of control over reputation” for Mr. Henriquez and this factor weighs heavily in Mr. Henriquez's favor. Lang v. Ret. Living Pub. Co., Inc., 949 F.2d 576, 582 (2d Cir. 1991).

6. Evidence that the Marks were adopted in bad faith

The sixth Polaroid factor, bad faith, “generally refers to an attempt by a junior user of a mark to exploit the good will and reputation of a senior user by adopting the mark with the intent to sow confusion between the two companies’ products.” Star Indus., 412 F.3d at 388. Bad faith cannot merely be inferred because a defendant adopted plaintiff's mark with knowledge of plaintiff's rights in the mark, but can be inferred where “prior knowledge is accompanied by similarities so strong that it seems plain that deliberate copying has occurred.” Paddington Corp. v. Attiki Importers & Distribs., Inc., 996 F.2d 577, 587 (2d Cir. 1993).

Here, “the FDNY Parties continued to use the MSOC Marks, after Mr. Henriquez [notified them that he] withdrew his permission” and with the knowledge that Mr. Henriquez had been coordinating MSOC events using his MSOC Marks as early as 2011, before Mr. Henriquez helped organize and plan the first FDNY-hosted MSOC event in 2013. Henriquez I, 2023 WL 2186340, at *22 (citing ECF No. 49-9, Ex. I). At the time of the planned May 2023 FDNY-hosted conference without Mr. Henriquez, the FDNY Parties also had knowledge that Mr. Henriquez had obtained USPTO approval of his MSOC trademark registration. (ECF No. 51 ¶ 2.) Accordingly, this factor weighs in favor of Mr. Henriquez because, despite knowledge of Mr. Henriquez's rights in the MSOC Marks, the FDNY Parties nonetheless “commenced planning the 2023 conference, using the MSOC Marks, without authority from Mr. Henriquez.” Henriquez I, 2023 WL 2186340, at *22.

7. Respective quality of the products

The seventh Polaroid factor considers “whether the senior user's reputation could be jeopardized by virtue of the fact that the junior user's product is of inferior quality.” Louis Vuitton Malletier S.A. v. Sunny Merchandise Corp., 97 F. Supp. 3d 485, 498 (S.D.N.Y. 2015). Mr. Henriquez presented “undisputed, credible evidence that the FDNY-hosted events will lack certain courses and accreditation resources that attendees at past MSOC events need and expect.” Henriquez I, 2023 WL 2186340, at *22 (citing ECF No. 49 ¶ 46; ECF No. 54 ¶ 12; ECF No. 83 at 136–39). Indeed, certain attendees who signed up for the FDNY-hosted MSOC event in 2023 who had previously attended the FDNY-hosted conference Mr. Henriquez was involved in “expressed disappointment and requested refunds upon discovering that certain programs and accreditations previously offered at MSOC events, including those hosted by the FDNY, [were] not offered at the 2023 FDNY event.” Id. (citing ECF No. 83 at 136–39). Accordingly, the Court finds this factor weighs in favor of Mr. Henriquez because his reputation and goodwill “could be jeopardized” by the FDNY-hosted event and its use of the MSOC Marks. Louis Vuitton, 97 F. Supp. 3d at 497–98.

8. Sophistication of consumers in the relevant market

Finally, the Court considers “ ‘the general impression of the ordinary purchaser, buying under the normally prevalent conditions of the market and giving the attention such purchasers usually give in buying that class of goods.’ ” Star Indus., 412 F.3d at 390 (internal citations omitted). In general, “the more sophisticated the purchaser, the less likely he or she will be confused by the presence of similar marks in the marketplace.” Savin Corp. v. Savin Group, 391 F.3d 439, 461 (2d Cir. 2004). Parties may demonstrate consumer sophistication either through “direct evidence such as expert opinions or surveys” or indirect evidence such as “the nature of the product or its price.” Star Indus., 412 F.3d at 390 (citing Patsy's Brand, Inc. v. I.O.B. Realty, Inc., 317 F.3d 209, 219 (2d Cir. 2003)). Here, “the parties have not submitted any relevant expert opinions or surveys, and [the Court is] left to rely solely on such indirect indications of sophistication.” Id.

Indeed, the Parties have submitted very little evidence regarding the sophistication of their consumers. The Court understands, though, that the relevant consumer base is the emergency medical first responder civilian community, and that first responders “come to MSOC-branded events specifically because they want to obtain specific federal certifications.” (ECF No. 54 ¶ 12.) Accordingly, it is reasonable to assume some level of sophistication from these consumers. “That said, ‘the sophistication of buyers cannot be relied on to prevent confusion,’ particularly in instances where, as here, there is ‘evidence of actual confusion among several highly sophisticated ․ professionals,’ ” such as the first responders, medical professionals, volunteers, and instructors that have already confused the two conferences. Mintable Pte. Ltd. v. Mintology Inc., 23 Civ. 8215 (LJL), 2024 WL 3454825, at *9 (S.D.N.Y. Jul. 18, 2024) (citing Morningside Grp. Ltd. v. Morningside Cap. Grp., L.L.C., 182 F.3d 133, 143 (2d Cir. 1999)). This factor weighs slightly in Mr. Henriquez's favor. Id.

9. Weighing the Polaroid Factors

Although “[n]o single [Polaroid] factor is dispositive,” Souza, 68 F.4th at 110, “the strength of the mark and similarity of the marks are among the most important ones.” RiseandShine Corp. v. PepsiCo, Inc., 23 Civ. 1176, 2024 WL 5165388, at *4 (2d Cir. 2024) (citing Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254, 258 (2d Cir. 1987)). Here, the MSOC Marks have achieved relative strength, the marks are virtually identical, the Parties “operate in the same areas of commerce, and even sophisticated parties have confused the marks.” Mintable Pte., 2024 WL 3454825, at *9. In sum, the “most significant” Polaroid factors weigh in favor of Mr. Henriquez. Mobil Oil, 818 F.2d at 258 (identifying the first three Polaroid factors as the “most significant”). Moreover, the FDNY Parties adopted the MSOC Marks in bad faith and there is clear evidence that the “FDNY-hosted events will lack certain courses and accreditation resources that attendees at past MSOC events need and expect.” Henriquez I, 2023 WL 2186340, at *22 (citing ECF No. 49 ¶ 46; ECF No. 54 ¶ 12; ECF No. 83 at 136–39). Considering these factors, the Court concludes that the Polaroid factors weigh in favor of Mr. Henriquez, and he has established a likelihood of confusion and a likelihood of success on the merits.

C. Irreparable Harm and the Balance of Equities

“Following the enactment of the Trademark Modernization Act of 2020, a plaintiff seeking a preliminary injunction is entitled to a rebuttable presumption of irreparable harm upon a court's finding a likelihood of success on the merits.” Two Hands, 563 F. Supp. 3d at 300 (citing 15 U.S.C. § 1116(a)). “Thus, if (1) the plaintiff establishes that it has a likelihood of success on the merits (that is, it establishes both the validity of its mark and a likelihood of confusion), and (2) the defendant fails to rebut the presumption, the plaintiff satisfies its burden of showing irreparable harm.” Id.

Here, the FDNY Parties have presented no further evidence or arguments to rebut the presumption of harm to Mr. Henriquez. The Court recognizes that the MSOC Marks are descriptive and have achieved secondary meaning. Therefore, the Court adopts in full its reasoning and findings based on the credible evidence in Henriquez I that Mr. Henriquez has proven that “he will suffer irreparable harm in the absence of an injunction” by demonstrating a likelihood of success on the merits, and “Mr. Henriquez's claim of irreparable harm is not rebutted by any delay.” Henriquez I, 2023 WL 2186340, at *23–28.

Likewise, the Court further adopts in full its reasoning and findings in Henriquez I that the balance of equities and the public interest weigh in favor of granting a preliminary injunction. Id. at *28–29. When Mr. Henriquez's motion for a preliminary injunction was first before the Court in 2023, the Court found that the “FDNY Parties may incur some expenses in ceasing the use of the [MSOC Marks, but] have demonstrated their ability to rebrand by using a new design.” Henriquez I, 2023 WL 2186340, at *29. Today, the FDNY Parties have “elected to proceed with using another MSOC design” for their conference, thereby eliminating the minimal hardship that may have been caused by re-branding. Id. Further, as the Court set forth in Henriquez I, it is Mr. Henriquez “who has expended considerable personal time and funds creating, organizing, and maintaining the MSOC events, and marketing the conferences in New York and in other states” and who “has demonstrated that he would be irreparably harmed by the FDNY Parties’ continued unauthorized use” of the MSOC Marks. Henriquez I, 2023 WL 2186340, at *29. As such, the “equities ․ weigh decidedly in favor of the Counter-Plaintiff, Mr. Henriquez.” Id. Moreover, it is well settled that there is a “strong interest in preventing public confusion,” ProFitness Physical Therapy Ctr. v. Pro-Fit Orthopedic & Sports Physical Therapy P.C., 314 F.3d 62, 68 (2d Cir. 2002), and, as set forth above, the “FDNY Parties’ use of the MSOC Marks has caused, and continues to cause, substantial confusion in the market, and the public interest would be served by eliminating that confusion.” Henriquez I, 2023 WL 2186340, at *29.

Accordingly, based on the foregoing, the Court concludes that Counter-Plaintiff Mr. Henriquez is entitled to a preliminary injunction enjoining Counter-Defendants, the FDNY Parties, from using the trademarked words “Medical Special Operations Conference” name and “MSOC” acronym.

D. Scope of the Preliminary Injunction

“[A] preliminary injunction is a specific equitable remedy and thus, must be framed in such a way as to strike a delicate balance between competing interests. By necessity, the scope of the injunction must be drawn by referencing to the facts of the individual case, reflecting a careful balancing of the equities.” Sunward Elecs., Inc. v. McDonald, 362 F.3d 17, 26 (2d Cir. 2004) (quoting Joseph Scott Co. v. Scott Swimming Pools, Incl., 764 F.2d 62, 67 (2d Cir. 1985)). “A preliminary injunction should ‘enjoin only those uses that are likely to create appreciable confusion, and no more.’ ” Id.

With these considerations in mind, the Court finds that Mr. Henriquez is entitled to a preliminary injunction enjoining the FDNY Parties from (1) using Mr. Henriquez's trademarked Medical Special Operations Conference Mark and MSOC Acronym Mark without his permission, in connection with charitable fundraising, special events, training courses, and other goods or services; and (2) using the MSOC Name Mark and MSOC Acronym Mark, and any name, logo, design, or source designation in connection with the FDNY Parties’ services and goods in any manner that is confusingly similar to Mr. Henriquez's MSOC Name Mark or MSOC Acronym Mark or likely to cause public confusion that such services or goods are produced, provided, sponsored, authorized by, or connected to Mr. Henriquez, including the use of the words “medical” and “special” and “operations” in a same, or similar, or different sequence. See The Sports Auth., Inc. v. Prime Hosp. Corp., 89 F.3d 955, 962 (2d Cir. 1996) (holding that the junior user's name including two of the same three words of the senior user's name was likely to cause confusion); Lebewohl v. Heart Attack Grill LLC, 890 F. Supp. 2d 278, 294 (S.D.N.Y. 2012) (“[W]hen the dominant words in two marks are the same, courts have found that their similarity can cause consumer confusion.”).

II. Licensee Estoppel and Implied License for Trademarks

Having determined that Mr. Henriquez has demonstrated a likelihood of success on the merits together with irreparable harm and a balance of hardships tipping in his favor such that he is entitled to a preliminary injunction, the Court need not reach the Parties’ licensee estoppel arguments. Nevertheless, the Court addresses them briefly here, because the Second Circuit suggested that the district court do so. Henriquez, 98 F.4th at 416.

“The general rule of licensee estoppel provides that when a licensee enters into an agreement to use the intellectual property of a licensor, the licensee effectively recognizes the validity of that property and is estopped from contesting its validity in future disputes.” Idaho Potato Comm. v. M & M Produce Farm & Sales, 335 F.3d 130, 135 (2d Cir. 2003). In the absence of a written or oral licensing agreement, “[a] trademark license can sometimes be implied from the conduct of the parties.” McCarthy on Trademarks § 18:43.50; see also Rainbow Apparel Distrib. Center Corp. v. Gaze U.S.A., Inc., 295 F.R.D. 18, 24 (E.D.N.Y. 2013) (finding where plaintiffs had limited permission to use defendants mark, “it is plausible to infer that an actual or implied license arose from this course of dealing”).

Though uncommon, courts recognize that the doctrine of an implied license may be used affirmatively, rather than defensively, to demonstrate “evidence of [a party's] ownership of the marks, as opposed to as a defense to an infringement action.” Dep't of Parks & Rec. v. Bazaar del Mundo Inc., 448 F.3d 1118, 1129 (9th Cir. 2006). When evaluating whether an implied license exists between parties, courts turn to the “ordinary principles of state contract law.” Power Lift, Inc. v. Weatherford Nipple-Up Sys., Inc., 871 F.2d 1082, 1085 (Fed. Cir. 1989). In New York, “an implied license can be shown to exist by circumstantial evidence, but that evidence must establish the elements of contract formation—including mutual assent evincing the intention of the parties to be bound by specific contractual terms.” Privado Marketing Group LLC v. Eleftheria Rest Corp., No. 13-cv-3137 (ER), 2017 WL 1167332, at *12 (S.D.N.Y. Mar. 27, 2017).²

The Parties point out that, in the context of copyright, the Second Circuit has “not yet ruled ‘on the precise circumstances under which an implied non-exclusive license will be found.” ABKCO Music, Inc. v. Sagan, 50 F.4th 309, 320 (2d Cir. 2022) (evaluating an implied license in the context of copyright). Other Circuit Courts, though, have recognized implied licenses in the context of trademarks and formulated a standard by which to evaluate whether an implied license existed between parties. see, e.g. Dep't of Parks, 448 F.3d at 1129–30 (“an implied license to use a trademark for certain services may arise”); McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917, 920 (Fed. Cir. 1995), cert. denied, 516 U.S. 1174, 116 S.Ct. 1268, 134 L.Ed.2d 215 (1996) (“In some circumstances, however, the entire course of conduct between a patent or trademark owner and an accused infringer may create an implied license.”); Doeblers’ Penns. Hybrids, Inc. v. Doebler, 442 F.3d 812, 824 (3d Cir. 2006) (“[A] trademark license can also be implied ․ It is irrelevant whether the parties thought of the arrangement at the time in terms of an implied license. The test for whether or not an implied license existed is based solely on the objective conduct of the parties.”).

In the absence of a written or oral agreement, courts have found that “[p]ermission to use the marks along with the exercise of reasonable control over such use can lead to the conclusion that an implied license existed even where no written agreement was made.” Northwest Airlines, Inc. v. NWA Fed. Credit Union, No. 3-cv-3625 (DWF) (SRN), 2004 WL 1968662, at *13 (D. Minn. Sept. 2, 2004); Villanova Univ. v. Villanova Alumni Educ. Found., Inc., 123 F. Supp. 2d 293, 307 (E.D. Pa. 2000) (“Permission to use the trademarks coupled with the exercise of reasonable control over such use can lead to the conclusion that an implied license existed between the parties, even where no contract was made.”) (citing U.S. Jaycees v. Philadelphia Jaycees, 639 F.2d 134 (3d Cir. 1981)). This principle reflects the basic tenant of trademark licensing: that a trademark may be validly licensed “only if the licensor exercises control” over the licensee's use. McCarthy on Trademarks § 18:38; Doeblers’ Penn., 442 F.3d at 823 (“A trademark license is typically written and contains express terms giving the licensor power to engage in quality control to ensure that the licensee does not engage in mere ‘naked’ use of the mark.”).

As noted above, the Court already determined in Henriquez I that Mr. Henriquez is the senior user of the MSOC marks and “held a valid common law trademark for the Medical Special Operations Conference name and MSOC acronym since 2010.” Henriquez I, 2023 WL 2186340, at *10–11. The Court further found that the FDNY Parties used the MSOC marks with Mr. Henriquez's permission at the MSOC events hosted by the FDNY from 2013 to 2019, after which Mr. Henriquez withdrew his permission for their use. Id. at *11. Mr. Henriquez also appeared to exercise some degree of control over the marks while they were being used by the FDNY in that he added the FDNY “rocker” to his MSOC logo at the request of the FDNY Parties, and “created virtual[ly] all of the marketing, publicity, and written organizational materials for the FDNY-MSOC events,” which stated that the FDNY was hosting the MSOC event, i.e. “MSOC at FDNY.” Henriquez I, 2023 WL 2186340, at *4; (ECF No. 49 ¶ 24.) Mr. Henriquez also “organized the conference sessions, identified and sourced conference instructors, organized ticket sales, maintained participant lists, designed and updated course syllabi, produced internal organizing documents, originated and facilitated vendor and sponsor relationships, and arranged for federal grant funding.” (ECF No. 49 ¶ 24.) Indeed, Mr. Henriquez further demonstrated control when he “corrected Dr. Isaacs’ proposed use of certain publicity materials featuring the MSOC Mark” and rejected Dr. Isaac's proposal that a media sponsor take over administration of the 2015 FDNY-hosted MSOC event because it “did not align with the overall values of MSOC-branded events.” (ECF No. 49 ¶¶ 25–26.)

Although these factors weigh in favor of finding an implied license, a license cannot be implied from the conduct of a person who has no authority to bind the trademark owner. Jackson v. Odenat, 9 F. Supp. 3d 342, 363 (S.D.N.Y. 2014). Accordingly, a threshold matter for this Court to address is whether Dr. Isaacs acted with authority on behalf of the FDNY Parties, either actual or implied, when dealing with Mr. Henriquez.

A. Apparent Authority

“ ‘New York common law provides that an agency relationship results from a manifestation of consent by one person to another that the other shall act on his behalf and subject to his control, and the consent by the other to act.’ ” Bigio v. Coca–Cola Co., 675 F.3d 163, 175 (2d Cir. 2012) (quoting N.Y. Marine & Gen. Ins. Co. v. Tradeline (L.L.C.), 266 F.3d 112, 122 (2d Cir. 2001)). “[K]nowledge acquired by an agent acting within the scope of its agency is imputed to the principal, even if the information was never actually communicated.” N.Y. Marine, 266 F.3d at 122 (citation omitted). To bind a principal in the first place, however, “an agent must have authority,” whether actual (as established through express or implicit circumstances) or implied. Merrill Lynch Interfunding, Inc. v. Argenti, 155 F.3d 113, 122 (2d Cir. 1998).

Under New York law, “an agent has actual authority if the principal has granted the agent the power to enter into contracts on the principal's behalf, subject to whatever limitations the principal places on this power, either explicitly or implicitly.” Highland Capital Mgmt. LP v. Schneider, 607 F.3d 322, 327 (2d Cir. 2010). Where a putative agent lacks actual authority, however, “he may nonetheless bind his principal to a contract if the principal has created the appearance of authority, leading the other contracting party to reasonably believe that actual authority exists.” Id. at 328. “Apparent authority exists when a principal, either intentionally or by lack of ordinary care, induces [a third party] to believe that an individual has been authorized to act on its behalf.” Peltz v. SHB Commodities, Inc., 115 F.3d 1082, 1088 (2d Cir. 1997) (internal quotation marks omitted); see also Wells Fargo Home Mortg., Inc. v. Hiddekel Church of God, Inc., 781 N.Y.S.2d 628, 2004 WL 258144, *6 (N.Y. Sup. Ct. 2004) (“Essential to the creation of apparent authority are words or conduct of the principal, communicated to a third party, that give rise to the appearance and belief that the agent possesses authority to enter into a transaction.”) (internal quotation marks omitted) (emphasis added).

Although “an agent himself cannot create apparent authority,” Property Advisory Group, Inc. v. Bevona, 718 F. Supp. 209, 211 (S.D.N.Y. 1989), “[w]here a principal by his voluntary act placed an agent in such a situation that a person of ordinary prudence conversant with business usages and the nature of the particular businesses is justified in assuming that such agent has authority to perform a particular act and deals with the agent upon that assumption, the principal is estopped as against such third person from denying the agent's authority.” 2 N.Y. Jur. 2d Agency § 89. “To recover under a theory of apparent authority, a plaintiff-third party must establish that ‘(1) the principal was responsible for the appearance of authority in the agent to conduct the transaction in question and (2) the third party reasonably relied on the representations of the agent.’ ” Star Funding, Inc. v. Tire Centers, LLC, 717 F. App'x 38, 41 (2d Cir. 2017) (quoting Herbert Constr. Co. v. Cont'l Ins. Co., 931 F.2d 989, 993–94 (2d Cir. 1991)).

Although it may be that Dr. Isaacs did not act with actual authority, the factual record is not sufficiently developed for the Court to determine whether Dr. Isaacs acted with apparent authority. This is a fact intensive inquiry that “requires a factual inquiry into the principal's manifestations to third persons.” First Fidelity Bank, N.A. v. Gov't of Antigua, 877 F.2d 189, 193 (2d Cir. 1989).

First, regarding the principals’ conduct, it appears that Mr. Henriquez had limited direct communications with the FDNY and the FDNY Foundation when planning the MSOC events and communicated almost exclusively with and through Dr. Isaacs, who often copied Mr. Henriquez on emails with the FDNY Parties. (ECF No. 84 at 379; ECF No. 83 at 168–69, 276–77; ECF No. 50 ¶ 13). Accordingly, to assess whether Dr. Isaacs had apparent authority to bind the FDNY Parties, the Court shall consider the “custom in the industry” because “[t]he appointment of a person to a position with generally recognized duties may create apparent authority.” Property Advisory Group, 718 F. Supp. at 211. The parties have presented no evidence on this issue, though, making it impossible to resolve the merits of this dispute at this stage of the case.

Further, Dr. Isaacs states in his sworn declaration that he “did not and do[es] not have any authority whatsoever, either express or implied, over matters pertaining to intellectual property owned by the City” and has “no authority to bind the FDNY or the FDNY Foundation to contracts.” (ECF No. 52-4 ¶ 6). It is well settled, though, that “[t]he authority of an agent cannot be secretly limited by his principal so as to affect a third party dealing with such an agent in ignorance of the limitation,” and that “[i]n order for a limitation that is not a standard in the industry to be effective, it must be communicated to third parties with whom the agent deals.” Property Advisory Group, 718 F. Supp. at 213 (citing Strip Clean Floor Refinishing v. N.Y. Dist. Council No 9 Bhd. of Painters, 333 F. Supp. 385, 396 (E.D.N.Y. 1971)). Here again, there appears to be undeveloped facts as to whether or how this limitation was communicated to Mr. Henriquez or Mr. Joseph Hernandez, as well as standard industry practice that bears on whether Dr. Isaacs had apparent authority to bind at least the FDNY Foundation to an implied license.³

Second, if Mr. Henriquez can demonstrate that the FDNY Parties were responsible for the appearance of authority in Dr. Isaacs, the Court must then consider whether it was reasonable for Mr. Henriquez to rely on that representation. “Reasonable reliance is often a question of fact for the jury, rather than a question of law for the court.” STMicroelectronics, N.V. v. Credit Suisse Secs. (USA) LLC, 648 F.3d 68, 81 (2d Cir. 2011). Accordingly, “the Court is unwilling, without giving the [Parties] the opportunity to test the point in discovery, to resolve whether [Counter-Plaintiff] had a duty to inquire into [Dr. Isaac's] authority.” Themis Cap., LLC v. Democratic Republic of Congo, 881 F. Supp. 2d 508, 528–29 (S.D.N.Y. 2012).

Thus, until the parties have had an opportunity to engage in discovery, the Court finds that it is premature to resolve the question of apparent authority, particularly at the preliminary injunction stage of the case. See Themis Cap., 881 F. Supp. 2d at 526 (“until the parties have had an opportunity to take targeted discovery on [the issue of apparent authority], it is premature to resolve these claims”); N.Y. Land Co. v. Republic of Philippines, 634 F. Supp. 279, 290 (S.D.N.Y. 1986) (“It should be noted that a ruling on a preliminary injunction is not a fact finding.”).

Conclusion

For the foregoing reasons, the Court concludes that Counter-Plaintiff Mr. Henriquez is entitled to a preliminary injunction enjoining Counter-Defendants, the FDNY Parties, from using the trademarked words “Medical Special Operations Conference” name and “MSOC” acronym, because Mr. Henriquez has established not only the validity of his common law and statutory rights to the Marks, but he has also demonstrated a likelihood of success on the merits; irreparable harm absent injunctive relief; that the balance of hardships tips decidedly in his favor; and that the public interest weighs in favor of granting him an injunction.

Federal Rule of Civil Procedure 65(c) provides that “[n]o preliminary injunction shall issue except upon the giving of security by the applicant, in such sum as the court deems proper.” “[T]he District Court is vested with wide discretion in the matter of security and it has been held proper for the court to require no bond where there has been no proof of likelihood of harm, or where the injunctive order was issued ‘to aid and preserve the court's jurisdiction over the subject matter involved.’ ” Doctor's Assocs., Inc. v. Stuart, 85 F.3d 975, 985 (2d Cir. 1996) (quoting Ferguson v. Tabah, 288 F.2d 665, 675 (2d Cir. 1961)). As noted above, when Mr. Henriquez's motion for a preliminary injunction was first before the Court in 2023, the FDNY Parties were faced with the prospect of eliminating Mr. Henriquez's Marks from their 2023 conference marketing materials. That no longer appears to be the case and the FDNY Parties “have not shown that they will likely suffer harm absent the posting of a bond” by Mr. Henriquez. Doctor's Assocs., 85 F.3d at 985. Thus, the Court shall not require a bond in issuing this preliminary injunction. Clarkson Co., Ltd. v. Shaheen, 544 F.2d 624, 632 (2d Cir. 1976) (“[B]ecause, under Fed. R. Civ. P. 65(c), the amount of any bond to be given upon the issuance of a preliminary injunction rests within the sound discretion of the trial court, the district court may dispense with the filing of a bond.” (citations omitted)).

In accordance with the foregoing, IT IS HEREBY ORDERED that Counter-Plaintiff's application for a preliminary injunction is GRANTED as follows, Counter-Defendants are prohibited from: (1) using Mr. Henriquez's trademarked Medical Special Operations Conference Mark and MSOC Acronym Mark without his permission, in connection with charitable fundraising, special events, training courses, and other goods or services; and (2) using the MSOC Name Mark and MSOC Acronym Mark, and any name, logo, design, or source designation in connection with the FDNY Parties’ services and goods in any manner that is confusingly similar to Mr. Henriquez's MSOC Name Mark or MSOC Acronym Mark or likely to cause public confusion that such services or goods are produced, provided, sponsored, authorized by, or connected to Mr. Henriquez, including the use of the words “medical” and “special” and “operations” in a same, or similar, or different sequence. This injunction shall remain in effect until further order of this Court.

So ordered.

FOOTNOTES

1.   The FDNY Parties have moved to take the deposition of W. Geoffrey Burkart, the Chief Executive Officer and founder of the Guardian Centers of Georgia, LLC, d/b/a Guardian Centers. (See ECF No. 105, Counter-Defs. Mot. for Depo.; ECF No. 109, Counter-Pl. Resp.) They argue that this deposition is relevant to determining whether the MSOC Marks had “acquired distinctiveness and a secondary meaning among the relevant market of first responders before the FDNY staring [sic] using the marks in 2013” because the testimony allegedly supports the FDNY Parties’ argument that an MSOC Conference was never held at the Guardian Centers in Perry, Georgia in 2012. (ECF No. 105 at 1.) As set forth in Henriquez I, the MSOC Conference Mr. Henriquez helped organize in 2012 was held in Perry, Georgia and “for reasons related to national security, the Guardian Centers had allowed a limited number of medical professionals to informally visit and test out the center's simulation grounds in 2012, before opening it to the public, later that year.” Henriquez I, 2023 WL 2186340, at *3 n.2. Accordingly, although parts of the 2012 MSOC Conference were “located at the soon-to-be opened Guardian Centers,” the entire conference was held elsewhere in Perry, Georgia, as stated on the logo designed by Mr. Henriquez. Id. Moreover, as stated on the record during the Pre-Motion Conference on June 14, 2020, the purpose of this Memorandum and Order is to address the issues identified by the Second Circuit and determine whether Mr. Henriquez is entitled to preliminary injunctive relief based on the already well-developed evidentiary record. (ECF No. 110, Transcript.) The Parties have had ample opportunity to develop the factual record before the Court as to secondary meaning during the evidentiary hearing held on January 17 and January 18, 2023, and, in light of the Court's finding, based on this record, that the MSOC Marks have achieved secondary meaning and that the 2012 MSOC Conference was not held at the Guardian Centers, the FDNY Parties’ motion is denied without prejudice to renew should the Parties proceed to discovery.

2.   Here, Counter-Plaintiff alleges an implied license not an oral license existed between the parties. (ECF No. 106 at 5–11.) The FDNY Counter-Defendants conflate the standard for evaluating an oral license and an implied license in New York, arguing the Court should evaluate the alleged license between the parties against the higher standard for finding an oral license. (ECF No. 107 at 13–14.) “To prove that an oral license exists, Plaintiffs must establish ‘all essential terms’ of the contract, such as offer, acceptance, and consideration ‘with sufficient definiteness that the Court can interpret its terms.’ ” Privado, 2017 WL 1167332, at *12 (quoting Oscar Prods., Inc. v. Zacharius, 893 F. Supp. 250, 255 (S.D.N.Y. 1995)). In contrast, “an implied license can be shown to exist by circumstantial evidence, but that evidence must establish the elements of contract formation—including mutual assent evincing the intention of the parties to be bound by specific contractual terms.” Id. The Court will apply the standard for determining an implied license to evaluate Counter-Plaintiff's claims.

3.   The FDNY Parties argue that “non-waivable municipal contracting rules preclude recognition and enforcement of an implied license” with a municipal organization. (ECF No. 107 at 15.) The Court expresses no opinion as to this argument at this stage, but notes that although this argument may apply, at a minimum, to the FDNY as a municipal organization, Counter-Plaintiffs make a compelling argument that this principle does not apply to the FDNY Foundation, the true licensee given the FDNY Foundation's role in planning and hosting the conference, as a non-municipal 501(c)(3) non-profit organization. (ECF No. 108 at 5–11.)

Kiyo A. Matsumoto, United States District Judge: