The City of New York v. Henriquez

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORK

-------------------------------------X

THE CITY OF NEW YORK, by and through

the FDNY, and the FDNY FOUNDATION,

INC., MEMORANDUM & ORDER

Plaintiffs, 22-CV-3190 (KAM)(PK)

-against-

JUAN HENRIQUEZ

Defendant.

-------------------------------------X

MATSUMOTO, United States District Judge:

At issue in this case are the Defendant’s trademarks

of the words MEDICAL SPECIAL OPERATIONS CONFERENCE (the “MSOC

Mark”), and the acronym “MSOC” (“Acronym Mark”) (collectively,

the “Marks”), used to describe a series of conferences organized

by Mr. Henriquez and founding members of MSOC for emergency

rescue medical professionals. Defendant and founding members of

MSOC hosted conferences starting in 2010, in collaboration with

different municipalities and city agencies throughout the

country, including, for some years, with the Fire Department of

New York (“FDNY”). Pending before the Court is Defendant and

Counterclaim Plaintiff Juan Henriquez’s (“Mr. Henriquez” or

“Counter-Plaintiff”) motion for a preliminary injunction

pursuant to Federal Rule of Civil Procedure 65. Mr. Henriquez

moves the Court to enjoin the City of New York, by and through

the FDNY, and the FDNY Foundation, Inc. (the “FDNY Parties” or

“Counter-Defendants”), and their agents, from: “(1) using Mr.

Henriquez’s trademarked MSOC Mark and Acronym Mark in connection

with charitable fundraising, special events, training courses,

and other goods or services confusingly similar thereto; and (2)

using any trademark, name, logo, design, or source designation

in connection with the [FDNY Parties’] services that are

confusingly similar to Mr. Henriquez’s MSOC Mark or Acronym Mark

or likely to cause public confusion that such services are

produced, provided, sponsored, authorized by, or connected to

Mr. Henriquez.”

The Court held an evidentiary hearing on January 17

and 18, 2023. (ECF No. 28, Evidentiary Hearing Transcript

(“Tr.”).) Having reviewed the submissions and evidence and

assessed the credibility of the witnesses, pursuant to Federal

Rule of Civil Procedure 65, the Court sets forth herein its

findings of fact and conclusions of law and GRANTS Defendant’s

motion for a preliminary injunction against Counter-Defendants.

BACKGROUND

I. FINDINGS OF FACT

The Court makes the following findings of fact based

on the parties’ submissions, evidence, and testimony presented

at the preliminary injunction hearing.1

1(See ECF Nos. 47, Motion for Preliminary Injunction (“Mot.”); 48, Memorandum

in Support for Preliminary Injunction (“PI Mem.”); 49-49-7, Juan Henriquez

Declaration in Support of Preliminary Injunction (“Henriquez Decl.”) and

Defendant and Counter-Plaintiff Juan Henriquez is a

rescue paramedic who has worked for FDNY since 2001 and has

received numerous awards and citations for his service,

including the FDNY’s top medal multiple times. (ECF No. 49,

Henriquez Decl. ¶ 3.) In 2009 or 2010, Mr. Henriquez and other

medical first responders trained in the field of urban search

and rescue, including Mr. Joseph Hernandez and Mr. Vincent

Johnson, attended a conference that provided training on

military special operations skills. (Id. ¶ 4; see also ECF No.

50, Hernandez Decl. ¶¶ 6-7.) The conference was organized by

the Special Operations Medical Association (“SOMA”). After the

SOMA training, Mr. Henriquez, Mr. Hernandez, and other medical

first responders decided to bring military-level special

operations medical skills and training to the wider medical

first responder community through a series of conferences.

(Id.)

In or around 2010, on his own time and separate from

his FDNY duties, Mr. Henriquez began to organize and implement

the Medical Special Operations Conference idea with Mr.

exhibits attached thereto; 50-50-3, Joseph Hernandez Declaration in Support

of Preliminary Injunction (“Hernandez Decl.”) and exhibits attached thereto;

51-51-1, Jordan Fletcher Declaration in Support of Preliminary Injunction

(“Fletcher Decl.”) and exhibits attached thereto; 52-1-52-35, Opposition to

Motion for Preliminary Injunction (“FDNY Opp.”) and exhibits attached

thereto; 53, Reply in Support for Preliminary Injunction (“PI Reply”); 54-54-

6, Juan Henriquez Reply Declaration in Support of Preliminary Injunction

(“Henriquez Supp. Decl.”) and exhibits attached thereto; Jordan Fletcher

Reply Declaration in Support of Preliminary Injunction (“Fletcher Supp.

Decl.”) and exhibits attached thereto.

Hernandez and other medical responders passionate about the

field of medical special operations training for civilian

medical first responders. (ECF No. 49, Henriquez Decl. ¶ 4.)

Mr. Henriquez created the name “Medical Special Operations

Conference” and acronym “MSOC” to brand these conferences.

(Id.) On October 7, 2010, Mr. Hernandez wrote an email to Mr.

Henriquez that stated in relevant part, “I think we are really

moving along and everyone seems really excited to participate.

I like your idea for the medical operations conference name

better. Let me know when you have time to talk. I spoke to a

few of the guys from SOMA follow up.” (ECF No. 49-2, Henriquez

Decl., Ex. B at pp. 1-3.)

Around this time, in approximately 2010 or 2011, Mr.

Henriquez and Mr. Hernandez also invited Dr. Doug Issacs, then

the FDNY Assistant Medical Director, to attend a military-

oriented conference organized by SOMA in Tampa, Florida. (Id;

Tr. at p. 256.)(“We invited [Dr. Isaacs] to try to attend [the

SOMA conferences]. We kept trying to persuade him and see if he

would be interested in the idea that we had, and I believe that

he attended in 2010 or 2011, not real sure.”) Around 2010 or

2011, Mr. Henriquez and Mr. Hernandez shared with Dr. Isaacs

their idea of bringing military-oriented medical special

operations training to the medical profession, but there is no

evidence that Dr. Isaacs communicated Mr. Henriquez’s and Mr.

Hernandez’s ideas to the FDNY at that time. (Id.)

Mr. Henriquez continued to organize materials and

publicity for the Medical Special Operations Conference idea.

He designed a graphic logo with the words Medical Special

Operations Conference. (ECF No. 49, Henriquez Decl., Ex. A at

p. 5.) Mr. Henriquez testified at the hearing, that in 2011, he

finalized the MSOC logo, with each image used in the logo

carefully designed to symbolize meanings for those working in

the medical special operations community. (Tr. at pp. 65-66)(He

explained, “Each one of those things that are in [the MSOC

logo], as far as like the eagle, the shovel, the Maltese cross,

the Star of Life, the hazardous materials trefoil, and the

hurricane sign, along with the world, they each have a meaning.

And none of it relates to the FDNY.”) On March 28, 2012, Mr.

Hernandez emailed Mr. Henriquez, “I love the MSOC logo. Great

job! . . . . I also sent it out to . . . the team from Ohio.”

(ECF No. 49-2, Henriquez Decl., Ex. B.) Versions of Mr.

Henriquez’s MSOC logo were used for other MSOC-branded events

that Mr. Henriquez, Mr. Hernandez, and others organized and

presented, outside of New York City. (ECF Nos. 50, Hernandez

Decl. ¶ 10; 49-7, Henriquez Decl., Ex. G.)

From January 30 and February 1, 2011, Mr. Henriquez

and his collaborators produced a conference, with support from

private commercial entities including FERNO, FERNO Military

Systems, and Mr. Hernandez’s company, Disaster Medical Solutions

(“DMS”), in Wilmington, Ohio and used the Medical Special

Operations Conference name and MSOC acronym. (ECF No. 49-1,

Henriquez Decl.,Ex. A at pp. 1-3.) In connection with this

event, Mr. Henriquez began developing materials and speakers—

such as agendas, programs, publicity flyers, Event Action Plans

(“EAP”)—for the Medical Special Operations Conference. (ECF No.

49, Henriquez Decl., Ex. A at pp. 2-4.) At the top of the 2011

Ohio MSOC event agenda, the name Medical Special Operations

Conference is placed prominently, and at the bottom of page two

are the words, “Prepare[d] by: Juan Henriquez.” (Id.) The

flyer for the 2011 Ohio MSOC event described the target audience

as: “Medical professionals working in Urban Search and Rescue,

Disaster Medicine, Civilian pre-hospital care, equipment

development and Military Special Operations.” (Id.) The

conference flyer also stated: “To register pleas [sic] email:

msoc@yahoo.com.” (Id.) This email address was created and

registered by Mr. Henriquez. (Id.)

In 2012, Mr. Henriquez, Mr. Hernandez, and other

medical professionals planned another Medical Special Operations

Conference in Perry, Georgia, parts of which were to be located

at the soon-to-be opened Guardian Centers, an emergency training

center. (ECF No. 49, Henriquez Decl. ¶ 7.) Like the MSOC Ohio

event, the flyer for the August 2012 Georgia MSOC event stated,

“Open to all first responders . . . Medical professionals

working in Urban Search and Rescue, Disaster Medicine, Civilian

pre-hospital care, equipment development and Military Special

Operations are all invited to attend the Medical Special

Operations Conference (MSOC) in Perry Georgia.”2 (ECF No. 49-1,

Henriquez Decl., Ex. A at pp. 6-9.) The 2012 Perry, Georgia

MSOC agenda listed Mr. Henriquez and Mr. Hernandez as points of

contact. (Id.)

Mr. Henriquez also developed an Event Action Plan for

the 2012 MSOC Georgia event, which included the logo designed by

Mr. Henriquez, with the location, Perry, Georgia, incorporated

into the logo. (Id.) Mr. Henriquez explained that he

incorporates into his MSOC logo, and continues to incorporate,

the names of the various locales and entities hosting MSOC

events for that specific event and refers to the location

addition as a “rocker.” (Tr. at p. 67) (“Yeah, the rocker . . .

was added, . . . depending on where we were going to be and who

was sponsoring it or who was the supporter for that.”)

2 The FDNY Parties assert in their brief that no event took place in 2012 at

the Guardian Centers, but Mr. Henriquez explained at the hearing, that, 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. (Tr. at pp. 161-62.)

Throughout this time, Dr. Isaacs stayed in touch with

Mr. Henriquez and Mr. Hernandez, together attending events

focused on military-oriented and urban medical operations. (ECF

No. 49, Henriquez Decl. ¶¶ 9-10.) Mr. Henriquez and Dr. Isaacs

had a relationship outside of the FDNY and considered one

another a friend. (Tr. at pp. 159-60, 267.) Mr. Henriquez and

Dr. Isaacs discussed the various events that Mr. Henriquez and

Mr. Hernandez were hosting in Ohio and Georgia. (Id.)

Beginning from 2010 to 2011, Mr. Isaacs was aware of the first

MSOC events and expressed interested in bringing the MSOC event

to New York. (Id.)

In 2012, Dr. Isaacs approached Mr. Henriquez about

bringing MSOC events to New York to partner with FDNY. (ECF No.

49, Henriquez Decl. ¶ 11.) On June 29, 2012, Mr. Henriquez

emailed Dr. Isaacs, “I attached a draft to show how we would do

[an MSOC event] in NY. It follows the same structure as the

previous MSOC events. The formula is the same just tweaked it

to what we have available here. It all depends on how much

support we get from the rest of the FDNY. Joe [Hernandez] and

Vinny [Johnson] are all in.” (ECF No. 49-3, Henriquez Decl.,

Ex. C.) Dr. Isaacs responded that day, “Thanks Juan!” (Id.)

On July 9, 2012, Mr. Henriquez emailed Dr. Isaacs, “The

following are a small example of what exists out there in

regards to special operations [urban search and rescue] medical

conferences/ discussions outside of the usual med-spec classes,

working group meetings and redundant literature . . . . I have

several other ideas, but I’ll [j]ust keep going on forever.”

(ECF No. 52-14, FDNY Opp., Ex. 1.) Mr. Henriquez attached

different websites and resources, and Dr. Isaacs responded,

“Thanks Juan! I will review the various sites.” (Id.)

Mr. Henriquez and Mr. Hernandez believed that Dr.

Isaacs understood that the FDNY would act as a “host” for the

Medical Special Operations Conference. Mr. Hernandez stated

that there was never any discussion in 2012 or 2013 about the

MSOC events at FDNY becoming a long-term arrangement. (ECF No.

50, Hernandez Decl. ¶ 14.) In fact, Mr. Henriquez testified

that after the first FDNY hosted conference, “every year [Dr.

Isaacs] had to try and present [the MSOC event] to FDNY

[leadership] to see if they would carry the conference.” (Tr.

at p. 274.)

Mr. Henriquez helped organize annual MSOC events with

FDNY from 2013 to 2019, providing unpaid hours of work outside

of his duties as an FDNY paramedic, by creating “MSOC at FDNY”

conference materials, sourcing and communicating with vendors

and sponsors, and contributing thousands of dollars of his own

personal funds for expenses related to marketing (some of which,

Mr. Henriquez testified, were never reimbursed by FDNY). (ECF

Nos. 49 Henriquez Decl. ¶¶ 18-20, 48-49; Tr. at pp. 169-70.)

Mr. Henriquez volunteered his own time, resources to MSOC

events, and efforts because he intended that any proceeds,

awards, grants, or donations should be used to assist the

personnel who responded to medical emergencies. (Tr. at p. 52,

87) (Mr. Henriquez described participation in the MSOC events as

“we all contribute whatever resources we have to make [the

conference] happen” and that the “money that [agencies are]

charging for the conference attendance is supposed to go back

into the . . . first responder community.”) Mr. Henriquez

testified that the discussions with FDNY in hosting MSOC

included an understanding that the profits from the conference

would “go back to the FDNY EMS Special Operation Command and

also the [Special Operations Command].” (Id. at 88.)

Dr. Isaacs relied heavily on Mr. Henriquez to

coordinate the MSOC events hosted by FDNY. On November 24,

2012, Dr. Isaacs emailed Mr. Henriquez, “Juan, I hope you are

finally getting some much needed R&R this weekend . . . . Also,

if you could forward me the draft of the assigned lecturers we

had discussed at the station the other week. Let me know where

the speakers recommended by Mike and Joe would fit in.” (ECF

No. 49-4, Ex. D at p. 2.)

Dr. Issacs also often acknowledged to FDNY leadership

Mr. Henriquez’s role in coordinating and organizing the MSOC at

FDNY events. On March 19, 2013, Dr. Isaacs emailed FDNY leaders

the “MSOC 2013 at FDNY” brochure and included Mr. Henriquez,

writing: “Between myself and Juan we have spoken to you about

the overall concept for the conference (brochure is attached)

including the skill station component . . . . In the meantime if

you have any questions, please do not hesitate to contact either

Juan or myself.” (ECF No. 49-4, Henriquez Decl., Ex. D at p.

3.) The attached brochure stated, “Medical Special Operations

Conference” at the very top left and on the right-hand side, it

stated, “MSOC 2013 at FDNY.” (ECF No. 49-4, Henriquez. Decl.,

Ex. D at p. 4.) Mr. Henriquez testified that the titles of

“MSOC [year] at [location]” clarified that the MSOC Mark was

used with his consent in multiple years and in multiple venues.

(Tr. at pp. 226-27.) He further explained that the language of

“MSOC at [location]”, like all of the other rockers added to the

logo, was framed “to identify [] where that MSOC conference is

being held, so there’s really no difference [between “MSOC at

FDNY” or “MSOC FDNY”] because everyone knows what an MSOC is.

It’s just a matter of where that particular [MSOC event] is

being held at.” (Id.)

On December 20, 2013, Dr. Isaacs sent an email to

several FDNY officials, including the FDNY Foundation Executive

Director, Jean O’Shea. Dr. Isaacs again acknowledged Mr.

Henriquez’s role in MSOC by writing, “Attached is the draft MSOC

Flyer for your review. Juan once again has done an amazing

job.” (ECF No. 49-4, Henriquez Decl., Ex. D at p. 5.) In a

January 14, 2014 email, Mr. Henriquez wrote to FDNY leadership,

“I made those changes last night. The lectures will be posted

using a script that will prevent downloading.” (Id. at 6.) On

March 13, 2014, Dr. Isaacs wrote to FDNY officials, “We feel

this is truly an important conference for our special operations

community and we hope to ‘grow it’ . . . . Please let me know if

you need any further information. I included Juan Henriquez,

one of our senior Rescue Medics and USAR Medical Specialist, who

has been instrumental in the development of this conference and

making it the success that [it has] has become.” (Id. at 9.)

Indeed, between 2013 to 2019, Mr. Henriquez was highly

involved in the FDNY-hosted MSOC events, coordinating everything

from identifying speakers and organizing courses and programs at

the conferences, to marketing the FDNY-hosted event to the

community of attendees. In July 2014, Dr. Isaacs emailed Mr.

Henriquez requesting that he send his and Mr. Hernandez’s 2012

contact list from their MSOC event in Georgia. (ECF No. 54,

Henriquez Supp. Decl., Ex. L.) Mr. Henriquez did so in order to

assist the FDNY with marketing. (Id. ¶ 2.) On October 9, 2014,

Mr. Henriquez sent Dr. Isaacs an email about the MSOC at FDNY

2014 event, saying, “I have been working on it and everything

should be done two weeks from now . . . . So that we can start

meetings with MSOC staff, foundation, Randall’s [Island] and

[Special Operations Command] . . . . I just have to speak to two

potential presenters that will bring some international and

military presentations. I’ll show you the schedule with

topics.” (Id. at 30.) Mr. Henriquez was responsible for

promoting the 2015 MSOC at FDNY event, for example emailing Dr.

Isaacs on March 15, 2015, stating, “I’ve been sending out promo

email, updating the portal (info.fdnymsoc.com), sending out the

objectives and creating the social media promotion/highlight

excerpts . . . . Let me know if you need more specific

instructions. Just a general outline of what should be

covered.” (Id. at 49-50.) In 2017, Dr. Isaacs emailed Mr.

Henriquez and Mr. Hernandez, stating, “Need to start finalizing

details for MSOC. Joe [Hernandez], attached is a rough draft of

topics and ideas Juan [Henriquez] and I had started . . . . Juan

we need to also figure out the costs for all the preconference

courses.” (Id. at 55.)

Exhibits before the Court also demonstrate both Mr.

Henriquez led coordination of the MSOC at FDNY events between

2013 and 2019, and further establish that the FDNY served as a

host for the MSOC events, as other municipalities had done. Dr.

Isaacs provided Event Action Plans for the 2013 to 2019 MSOC at

FDNY events to FDNY and FDNY Foundation leadership that clearly

stated “Prepared by Juan Henriquez” throughout various sections.

(Id. at 11-14, 46, 51, 54; ECF No. 49-7, Ex. G at pp. 2, 5.)

The Event Action Plan and draft agenda for an MSOC event hosted

by FDNY in 2014 prominently displayed Medical Special Operations

Conference at the very top of the planning documents, and

underneath, “MSOC 2014 at FDNY.” (ECF No. 49-7, Henriquez

Decl., Ex. G. at pp. 11-14.) The 2015 Event Action Plan

included the logo Mr. Henriquez created and was also labeled

“Medical Special Operation Conference” at the top of the page,

with the subtitle, “MSOC 2015 at FDNY” underneath. (Id. at 32-

33.) Again, the title “MSOC [year] at [location]” was used by

Mr. Henriquez to distinguish MSOC from the hosting entity, such

as the FDNY or FDNY Foundation. (Tr. at pp. 226-27.)

Mr. Henriquez also created and maintained the website,

www.fdnyfoundation.org, for the FDNY Parties and MSOC

collaborated events, with the knowledge and authority of the

FDNY and FDNY Foundation. On January 14, 2014, Dr. Isaacs

emailed other FDNY officials about the MSOC event at FDNY

saying, “I included Juan Henriquez who developed the web site.”

(ECF No. 49-4, Henriquez Decl., Ex. D at p. 7.)

Mr. Henriquez credibly testified at the hearing about

first creating a website for the Medical Special Operations

Conference in other locations, before ever partnering with FDNY.

(Tr. at pp. 61-63.) In 2013, FDNY used Mr. Henriquez’s server

and website for its first event with MSOC. (Id.) In 2014,

after the FDNY decided that it did not want the MSOC event to be

on Mr. Henriquez’s server, which he also used for his other MSOC

events, Mr. Henriquez entered into a donation agreement drafted

by and at the request of the FDNY Foundation, stating that the

impetus for the donation agreement was that the FDNY Foundation

was “hosting a Medical Special Operations Conference” from May

15-18, 2014, to train medical personnel, operating in the

special operations environment (emphasis added). (ECF No. 49-5,

Henriquez Decl., Ex. E at pp. 2-3; Tr. at pp. 61-63.) At the

request of the FDNY parties, Mr. Henriquez had purchased the

domain name, www.fdnyfoundation.org, to create the website for

the FDNY’s hosting of the MSOC event, but was never reimbursed

by the FDNY Foundation for his purchase. (Tr. at pp. 169-70.)

The donation agreement noted Mr. Henriquez’s agreement to donate

his services to develop, host, and maintain a website

specifically for the 2014 MSOC event hosted by the FDNY

Foundation. The donation agreement for the 2014 MSOC event

hosted by the FDNY Foundation, provided, inter alia, with

respect to the FDNY’s “name, trademarked logo, or other FDNY

trademarks in connection with the website,” “[t]he Foundation

represents that any copyrighted material that it requests that

Author place on its website will be owned by the Foundation, or

the Foundation will have permission to use such material.” (ECF

No. 49-5, Henriquez Decl., Ex. E at p. 2.) The 2014 donation

agreement also stated: “Author expressly acknowledges that all

services provided to the Foundation in connection with the

creation of the website are specifically created for use in

connection with MSOC and hereby irrecoverably transfers and

assigns all right title and interest, including copyrights,

renewals and extensions thereto, to the Foundation or its

assignees.” (Id.)

Mr. Henriquez, who was not represented by counsel in

connection with the donation agreement, understood that the

donation agreement was entered into because FDNY wanted to have

control over the website Mr. Henriquez created for the 2014

conference, which utilized the FDNY logo and FDNY trademark on

materials related to the 2014 MSOC event hosted by the FDNY.

During the donation agreement discussions, the FDNY Parties and

Mr. Henriquez did not discuss the terms Medical Special

Operations Conference or MSOC Marks. (Tr. at pp. 172-73.)

According to Mr. Henriquez, the purpose of the donation

agreement was primarily to “keep things separated” between the

MSOC at FDNY event branding and his other MSOC event branding,

because Mr. Henriquez would also be posting the FDNY logo on his

personal MSOC website and documents he created for the FDNY

hosted MSOC event.3 (Id.) Mr. Henriquez created a version of

3 Though Mr. Henriquez does not elaborate on what the FDNY intended regarding

“keep[ing] things separate” in his testimony, presumably, the FDNY Parties

requested the donation agreement to control its own FDNY trademark because it

was concerned about the FDNY trademark being used in any of Mr. Henriquez’s

outside MSOC work, demonstrating an acknowledgement that Mr. Henriquez

the MSOC logo for FDNY by adding FDNY’s name to the bottom of

the MSOC logo—in the same fashion as Mr. Henriquez had

incorporated the Perry, Georgia, location into the MSOC logo for

the 2012 Georgia event. (Tr. at p. 64.) As usual, Mr.

Henriquez stated the rocker was added to the logo “to describe

where that MSOC is being held at or what agency or what entity's

deploying.” (Id.)

While Mr. Henriquez assisted the FDNY with hosting

MSOC events, from 2015 to 2019, Mr. Henriquez continued to

organize MSOC events in other years and states, including in:

Georgia (2015); Palm Beach County, Florida (2015); Maryland

(2017); Florida (2018); Kansas (2019); online due to the COVID-

19 pandemic (2021); and South Carolina (2022). (ECF Nos. 49,

Henriquez Decl. ¶ 27; 49-7, Ex. G.) Whenever Mr. Henriquez

developed and coordinated an MSOC event with a different state

or city, he would continue to incorporate the name of the host

into the bottom of the general MSOC logo that he created. (Tr.

at p. 67.) One MSOC brochure provided to the Court advertised

“Sponsorship Opportunities” with details below stating: “WHEN

conducted MSOC activity “separate” from the FDNY Foundation. (Tr. at 172.)

Tayo Kinnane, then Deputy Counsel in the FDNY Bureau of Legal Affairs,

declared that, “In December 2013, I prepared a Donation Agreement between the

FDNY Foundation (the “Foundation”) and Juan Henriquez (“Henriquez”)

pertaining to services that Henriquez was providing to the Foundation in

connection with a website, www.fdnymsoc.com, for a “Medical Special

Operations Conference” or “MSOC” that the Foundation was hosting at the Fire

Academy on Randall’s Island,” in 2014. (ECF No. 52-11, Kinnane Decl. ¶ 4.)

YOU BECOME A MEDICAL SPECIAL OPERATIONS COMMUNITY4 (MSOC) SPONSOR

THROUGH VENDOR SUPPORT, YOU ARE PARTNERING WITH THE LEADING

ORGANIZATION REPRESENTING URBAN SEARCH AND RESCUE MEDICAL

OPERATIONS ACROSS THE COUNTRY.” (ECF No. 49-7, Henriquez Decl.,

Ex. G at p. 6.) The flyer refers to and establishes that MSOC

events took place in multiple cities and with multiple agencies,

before, during, and after the first MSOC event hosted by the

FDNY Parties.

Throughout this period, Dr. Isaacs was aware that Mr.

Henriquez continued to host other MSOC events while Mr.

Henriquez concurrently helped plan the MSOC at FDNY events. To

the extent Dr. Isaacs testified “he did not recall” being aware

of Mr. Henriquez’s involvement in MSOC events outside of New

York City (Tr. at pp. 454, 457-60, 462-64, 467-77), the Court

finds him not credible. In February of 2015, Dr. Isaacs

traveled to Palm Beach County, Florida to teach at an MSOC-

branded event organized by Mr. Henriquez and hosted by Palm

Beach County Fire Rescue. (ECF No. 49, Henriquez Decl. ¶ 28.)

Dr. Isaacs flew to Palm Beach that year, and he was listed as an

4 Mr. Henriquez’s trademarked term is Medical Special Operations Conference,

but in this flyer, Mr. Henriquez and other coordinators refer to the Medical

Special Operations Community, in reference to the same conferences being

planned all over the country. (Tr. at p. 25)(Mr. Henriquez explained that

the Medical Special Operations Community was a “group of us from the national

system” who “would get together every time that we were somewhere either

delivering training or at an event to share those ideas [about medical

special operations], and that’s kind of how the MSOC evolved, the Medical

Special Operations conferences evolved, or were created.”)

instructor and FDNY Assistant Medical Director. (ECF No. 49-8,

Henriquez Decl., Ex. H at pp. 2-3.) The PowerPoint/hand-out for

the 2015 MSOC event-hosted by Palm Beach County had the same

MSOC logo that Mr. Henriquez had designed in 2010, and used many

times, situated on the page beside the Palm Beach County Fire

Rescue logo. (Id.) In 2018, Mr. Hernandez texted Dr. Isaacs

about attending another MSOC conference: “Hi Doug are you still

in for the class in Ocala on Aug 27-30.” (ECF No. 50-1,

Hernandez Decl., Ex. A at p. 1.) Later that year, Mr.

Hernandez’s organization, Disaster Medical Solutions, an entity

that often helped Mr. Henriquez organize MSOC events, “paid to

fly Dr. Isaacs to Ocala, Florida to be an instructor at another

MSOC-branded event sponsored by DMS.” Dr. Isaacs attended

multiple MSOC events outside of New York City that were

independent of the FDNY. (ECF Nos. 49, Henriquez Decl. ¶ 30;

50, Hernandez Decl. ¶ 22.)

In approximately 2017, Mr. Henriquez was able to

review FDNY and FDNY Foundations records that he believed

demonstrated the FDNY Parties’ mishandling and misuse of MSOC

funds and grants, diverting funds that were meant to benefit

emergency medical responders as originally agreed by the FDNY

Foundation. (ECF No. 49, Henriquez Decl. ¶¶ 31-32.) He

reported the alleged financial impropriety to the New York City

Department of Investigations, as well as to FDNY attorney Moira

Archer and New York City Assistant Corporation Counsel Gerald

Singleton, who has appeared in this litigation. (Id.) Both Ms.

Archer and Mr. Singleton deny that Mr. Henriquez reported any

financial improprieties. (ECF Nos. 52-2, Singleton Decl. ¶¶ 12-

13, 15; 52-3, Archer Decl. ¶ 12.) Mr. Henriquez testified at

the evidentiary hearing that he did not want FDNY’s misuse of

funds and any impropriety around the MSOC at FDNY events to

affect the national reputation of MSOC, as events were still

occurring in different locations outside of New York City. (Tr.

at pp. 232-33.) Mr. Henriquez explained, “Obviously, my goal,

even until this day, is not to disrupt anything. I haven’t even

told everyone exactly what the FDNY is trying to do because I

don’t want that to get out there and cause any issues for the

larger community, for the people that actually benefit from

this.” (Tr. at p. 103.)

On November 8, 2018, Mr. Henriquez texted Dr. Isaacs

to “please ask the Foundation to take down my designs, images,

themes, and layouts from their website and any other published

media or advertising.” (ECF No. 49-9, Henriquez Decl., Ex. I at

p. 1.) On November 9, 2018, Dr. Isaacs texted Mr. Hernandez

that, “The conference has become a nightmare and may have to be

canceled.” (ECF No. 49, Henriquez Decl., Ex. B.) In late

December 2018 to January 2019, Mr. Henriquez and Mr. Hernandez

had discussions with Dr. Issacs that if the FDNY and MSOC

relationship would no longer work, the coordinators could move

the MSOC event to California or another state instead. (Tr. at

pp. 206-07; ECF No. 50, Hernandez Decl. ¶ 24.) On December 14,

2018, Mr. Hernandez texted Dr. Isaacs, “If [medical professional

teams] don’t get to go up there [to New York] because it doesn’t

work out . . . . We will bring them down to [Florida] and offer

housing and meals as package. My web site mentions nothing

about the [FDNY] foundation . . . [a]nd doesn’t want to.” (ECF

No. 50, Hernandez Decl., Ex. C.) Dr. Isaacs responded to Mr.

Hernandez’s text with, “Understood.” (Id.) Mr. Hernandez

further stated, “[The FDNY] Foundation can never offer this on

its own,” and Dr. Isaacs responded, “They have no plans to do so

but they are concern[ed] about their nonprofit status.” (Id.)

Mr. Hernandez then said, “We don’t need [the FDNY] for

anything,” and Dr. Isaacs responded, “Agree.” (Id.)

In January 2019, Mr. Henriquez emailed Dr. Isaacs,

copying other FDNY and FDNY Foundation leaders, again

“requesting to please unpublish any references to the MSOC

artwork/patches, MSOC and MSOC branding.” (ECF Nos. 49,

Henriquez Decl. ¶ 35; 49-9, Ex. I at p. 3.) Despite the erosion

of trust, however, in 2019, Mr. Henriquez produced one last MSOC

event with FDNY, credibly testifying that he believed and hoped

that any conflicts would be resolved. (Tr. at p. 131.) Mr.

Henriquez testified at the hearing that Dr. Isaacs and other

FDNY officials repeatedly relayed to him that “there was a

misunderstanding” and encouraged Mr. Henriquez to finish

coordinating the 2019 FDNY-hosted MSOC event. (Id.) Mr.

Henriquez testified that he did not perceive there to be a

dispute with the FDNY Parties about the MSOC name because of Dr.

Isaacs’s and other FDNY officials’ assurances that any

“misunderstanding[s]” would be resolved, and “people who are in

a dispute don’t work together.” (Tr. at pp. 134-35.)

In late 2019, Henriquez officially filed an

application to register the words “Medical Special Operations

Conference” with the United States Patent and Trademark Office

(“USPTO”) under Section 2(f) of the Lanham Act, based on the

provision that he had been using the applied-for mark on a

substantially exclusive and continuous basis during the five-

year period preceding his application, and the USPTO granted his

registration in August 2020. (ECF No. 49, Henriquez Decl. ¶ 38;

52-1, FDNY Opp. at pp. 4-5.) When Mr. Henriquez first filed for

the trademark, the USPTO rejected his application due to the use

of the word “conference.” (Tr. at p. 123.) Mr. Henriquez

provided more evidentiary documents, including his MSOC event

organization documents and publicity materials, to demonstrate

his substantially exclusive and continued use of the Medical

Special Operations Conference name since he created them. (Tr.

at p. 129.) In 2020, the USPTO approved the Trademark

registration of “Medical Special Operations Conference,”

documenting the first use of the words in 2011. (ECF No. 49,

Henriquez Decl. ¶ 38; 49-10, Ex. J.)

From 2019 through 2021, the FDNY Parties began to ask

Mr. Henriquez to cease and desist from using his Medical Special

Operations Conference name and acronym for the MSOC events he

was planning in other states. (ECF No. 49, Henriquez Decl. ¶

39.) The FDNY Parties stated that Mr. Henriquez made an

“unauthorized use of intellectual property belonging to the [the

FDNY Parties]” by hosting an event “clearly modeled after the

original Medical Special Operations Conference (“MSOC”), which

has been produced and held annually by [the FDNY Parties] in New

York City in 2013.” (ECF No. 52-22, FDNY Opp., Ex. 9.)

On November 13, 2019, Mr. Henriquez sent an email to

FDNY attorney, Moira Archer, Assistant Corporation Counsel, Mr.

Singleton, and Deputy General Counsel, Carol Moran, showing his

use of his MSOC Marks “prior to [him] bringing the event to the

FDNY,” and requesting that the FDNY and Foundation “remove any

references” to the MSOC Mark and the Acronym Mark in association

with the FDNY. (ECF Nos. 49, Henriquez Decl. ¶ 37; 49-9, Ex. I.

at p. 4.) Mr. Henriquez had heard that the FDNY Parties would

not be hosting a 2020 conference and would be re-branding away

from MSOC if they did host a conference. (Tr. at pp. 131-32.)

In 2020, FDNY did not host a conference with MSOC due to the

COVID-19 pandemic, but Mr. Henriquez hosted an MSOC event in

2020, without the involvement of the FDNY, outdoors and

virtually for medical first responders. (Id.) In 2021, FDNY

again did not host a conference, but Mr. Henriquez virtually

hosted another MSOC event that year. (Tr. at p. 241; ECF No.

49-9, Ex. G.)

As the FDNY Parties began to request that Mr.

Henriquez stop using his MSOC Marks, they also initiated a

proceeding with the FDNY Bureau of Investigations and Trials

(“BIT”) against Mr. Henriquez. (ECF No. 49, Henriquez Decl. ¶

39.) Mr. Henriquez testified that his job was threatened and he

believes the BIT investigation was brought in retaliation for

his assertion of his rights to the Medical Special Operations

Conference and MSOC Marks. (Tr. at pp. 104-07.) (“Mr.

Singleton, he told me that, you know, I better . . . he did say

if I value my job, you better, you know, think

about this or who you work for.”) The BIT ultimately determined

that all of the FDNY’s allegations against Mr. Henriquez were

“unsubstantiated” and “should not have been escalated as a

disciplinary matter.” (Id.; ECF No. 49-11, Henriquez Decl., Ex.

K; Tr. at p. 97.) In April 2022, Mr. Henriquez discovered that

the FDNY planned on holding another MSOC-branded conference in

the following month, May 2022 without Mr. Henriquez’s permission

or participation. (ECF No. 49, Henriquez Decl. ¶ 40.)

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.5 (ECF No. 52-24, FDNY Opp., Ex.

11.) On May 31, 2022, in return, the FDNY Parties filed the

instant action against Mr. Henriquez, seeking, inter alia, a

declaratory judgment of non-infringement and cancellation of the

federal trademark registration issued to Mr. Henriquez, based on

allegedly materially false statements in his application to the

USPTO for the registration. (Id. at 12; FDNY Opp. at p. 4.)

In June 2022, the FDNY Parties and Mr. Henriquez

entered into settlement discussions and continued to do so, at

the Court’s recommendation in September 2022. (ECF No. 55-1,

Fletcher Supp. Decl., Ex. B; Minute Entry dated Sept. 7, 2022.)

In October 2022, however, Henriquez learned that the FDNY

Parties were planning to host a May 2023 conference, yet again

using, without the permission of Mr. Henriquez, his MSOC Mark

and the Acronym Mark. (ECF Nos. 49, Henriquez Decl. ¶ 41.) Mr.

Henriquez then filed a pre-motion conference letter for an

anticipated preliminary injunction motion on November 1, 2022,

leading to the instant preliminary injunction motion before the

Court. (ECF No. 17, Henriquez Pre-motion Conf. Letter.)

5 The Court does not have sufficient information about the nature of the May

2022 MSOC at FDNY event from the parties to incorporate it into its analysis.

But the Court notes that Mr. Henriquez sent a cease-and-desist letter within

weeks of realizing there would be a May 2022 event, and that there were no

2021 or 2020 MSOC at FDNY events.

II. PROCEDURAL BACKGROUND

On May 31, 2022, the FDNY Parties filed this lawsuit

against Mr. Henriquez. The FDNY Parties’ claims included a

request for 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 Mark; and unfair competition. (ECF No. 1,

Complaint.) On July 8, 2022, the FDNY Parties filed an Amended

Complaint, amending their claims to a declaratory judgment of

non-infringement; cancellation of the federally registered MSOC

Mark; a declaratory judgment that the FDNY had a right to use

Mr. Henriquez’s MSOC Design Logo; a breach of fiduciary duty;

and unfair competition. (ECF No. 8, First Amended Complaint

(“FAC”).) On September 7, 2022, the Court held a pre-motion

conference for Defendant’s anticipated motion to dismiss.

The parties then followed this Court’s recommendation

to enter into settlement discussions with Magistrate Judge Kuo

rather than commencing motion practice at the time. (Minute

Entry on Sept. 7, 2022.) On November 10, 2022, the Plaintiffs

filed a Second Amended Complaint against Mr. Henriquez,

asserting the following claims: a declaratory judgment of non-

infringement and cancellation of Mr. Henriquez’s federally

registered MSOC Mark. (ECF No. 26, Second Amended Complaint

(“SAC”).)

Following Mr. Henriquez’s November 1, 2022 pre-motion

conference request, on November 10, 2022, the Court held a pre-

motion conference to discuss Mr. Henriquez’s anticipated motion

for a preliminary injunction. The Court set a briefing schedule

for the preliminary injunction motion to be fully submitted by

January 11, 2023. (Minute Entry on Nov. 10, 2022.) The Court

also ordered Mr. Henriquez, the Defendant, to properly file an

answer with any counterclaims, or a pre-motion conference

request for any anticipated motions to dismiss by December 12,

2022. (Id.) On December 12, 2022, Defendant Henriquez filed an

answer to the Second Amended Complaint with counterclaims

against the FDNY Parties alleging federal trademark

infringement; common law trademark infringement; federal unfair

competition; and whistleblower retaliation. (ECF No. 32,

Counterclaims and Answer.) On December 2, 2022, the Defendant

also filed a letter motion for a pre-motion conference for an

anticipated motion to dismiss the Second Amended Complaint.

(ECF No. 27, Henriquez Pre-motion Conf. Letter.) On December

12, 2022, the Court held a third pre-motion conference with the

parties to set a date for an evidentiary hearing for Mr.

Henriquez’s preliminary injunction motion and held the

scheduling of his motion to dismiss the Second Amended Complaint

in abeyance. (Minute Entry for Dec. 12, 2022.)

The evidentiary hearing was scheduled for January 17

and January 18, 2023. By January 12, 2023, the parties had

fully briefed Mr. Henriquez’s preliminary injunction motion.

(ECF Nos. 47-55.) On January 17-18, 2023, the evidentiary

hearing on the pending preliminary injunction was held. Since

the hearing, the FDNY Parties have also filed a pre-motion

conference for their anticipated motion to dismiss Mr.

Henriquez’s counterclaims. (ECF No. 59, FDNY Parties’ Pre-

motion Conf. Letter.)

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) (citation omitted).

The Lanham Act prohibits the use in commerce, without

the consent of the registrant, of any “registered mark in

connection with the sale, offering for sale, distribution, or

advertising of any goods” in a way that is likely to cause

confusion. 15 U.S.C. § 1114(1)(a). “The [Lanham] Act similarly

prohibits the infringement of unregistered, common-law

trademarks.” Time, Inc. v. Petersen Pub. Co. LLC, 173 F.3d 113,

117 (2d Cir. 1999) (citing 15 U.S.C. § 1125(a)(1)). Mr.

Henriquez asserts both common law and registered marks for the

Medical Special Operations Conference Mark and MSOC Acronym

Mark.

To establish a Lanham Act infringement claim,

plaintiff must establish (1) that “the plaintiff’s mark is

entitled to protection,” and (2) that “defendant’s use of the

mark is likely to cause consumers confusion as to the origin or

sponsorship of the defendant’s goods.” Virgin Enterprises Ltd.

v. Nawab, 335 F.3d 141, 146 (2d Cir. 2003); 1-800 Contacts, Inc.

v. WhenU.Com, Inc., 414 F.3d 400 (2d Cir. 2005), cert. denied,

546 U.S. 1033 (2005).

To establish a common law trademark infringement

claim, the claimant must first establish that it is the senior

user of the mark. See Woodstock Ventures LC v. Woodstock Roots,

LLC, 387 F. Supp. 3d 306, 315 (S.D.N.Y. 2019) (“the user who

first appropriates the mark obtains an enforceable right to

exclude others from using it”), aff’d, 837 F. App’x 837 (2d Cir.

2021). Then, the elements of common law trademark infringement

under New York law mirror those for the Lanham Act, and as a

result these claims may be analyzed together. Pulse Creations,

Inc. v. Vesture Grp., Inc., 154 F. Supp. 3d 48, 54 (S.D.N.Y.

2015). “The heart of a successful claim based upon [both] . . .

the Lanham Act . . . and common law trademark infringement is

the showing of likelihood of confusion as to the source or

sponsorship of defendant's products.” Standard & Poor’s Corp.

v. Commodity Exch., Inc., 683 F.2d 704, 708 (2d Cir. 1982).

To evaluate whether there is a likelihood of

confusion, courts in the Second Circuit apply the eight-factor

Polaroid balancing test. See Polaroid Corp. v. Polaroid Elecs.

Corp., 287 F.2d 492 (2d Cir. 1961). “The eight factors are: (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)

(citing Star Indus., Inc. v. Bacardi & Co., 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. “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 IP LLC, 563 F. Supp. 3d at

300; see also Tough Traveler, Ltd. v. Outbound Prod., 60 F.3d

964, 967 (2d Cir. 1995).

The presumption of irreparable harm does not apply if

“the plaintiff has delayed either in bringing suit or in moving

for preliminary injunctive relief.” Tough Traveler, Ltd., 60

F.3d at 968. “Though such delay may not warrant the denial of

ultimate relief, it may, ‘standing alone . . . preclude the

granting of preliminary injunctive relief,’ because the ‘failure

to act sooner undercuts the sense of urgency that ordinarily

accompanies a motion for preliminary relief and suggests that

there is, in fact, no irreparable injury[.]’” Id. (citations

omitted). “[D]elay may not, [however], negate the presumption

of irreparable harm if the delay was caused by the plaintiff’s

ignorance of the defendant’s competing product or the

plaintiff’s making good-faith efforts to investigate the alleged

infringement[.]” Id. (citations omitted); see also Citibank,

N.A. v. Citytrust, 756 F.2d 273, 276 (2d Cir. 1985).

The Court finds that Mr. Henriquez establishes all

four elements for a grant of preliminary injunctive relief. The

Court will first analyze the validity of Mr. Henriquez’s common

law trademarks of the Medical Special Operations Conference name

and MSOC acronym, and registered mark of the Medical Special

Operations Conference name. Next, the Court will conduct the

likelihood of confusion analysis by applying the Polaroid

factors. Then, the Court will address the FDNY Parties’

argument in rebuttal of Mr. Henriquez’s presumption of harm,

based on assertions of extraordinary delay on behalf of Mr.

Henriquez. Finally, the Court will conduct the balance of the

hardships and whether the public’s interest weighs in favor of

granting an injunction.

A. Likelihood of Success on the Merits: Validity of the

Common Law and USPTO Marks

The Court finds that Mr. Henriquez has established a

likelihood of success on the merits, because he has valid Marks

and he can establish a likelihood of confusion applying the

Polaroid factors.

First, the evidence before the Court unequivocally

establishes that it is Mr. Henriquez who has created, used, and

held a valid common law trademark for the Medical Special

Operations Conference name and MSOC acronym since 20106, and

further as a validly registered USPTO trademark of the Medical

Special Operations Conference name since 2020. Based on the

record and applicable law, the Court respectfully rejects the

primary contention of the FDNY Parties that they first

appropriated the Medical Special Operations Conference name and

MSOC acronym.

1. Common Law Trademark

The undisputed, credible evidence establishes that Mr.

Henriquez, in consultation with Mr. Hernandez, created the term

Medical Special Operations Conference, MSOC Acronym, and logo in

2010, as they discussed plans for a conference to be held in

2011 in Ohio. (ECF No. 49-2, Henriquez Decl., Ex. B at pp. 1-

3.) The Marks were used by Mr. Henriquez at the 2011 Ohio

conference, the 2012 Florida conference, with Mr. Henriquez’s

permission at an MSOC events hosted by the FDNY from 2013 to

2019, and at other MSOC events nationally and concurrently with

6 The Court notes that Mr. Henriquez first created the MSOC name in 2010, and

thus, has held the common law trademark to MSOC since 2010. He first used

the MSOC name at a conference in Ohio in 2011, and the USPTO registration

marks the first use as 2011.

the FDNY events taking place. (ECF No. 49, Henriquez Dec. ¶¶ 4-

7; 14-17; 27.)

The FDNY Parties’ opposition to Mr. Henriquez’s

preliminary injunction motion asserting that they “have been

using the MSOC Marks for the FDNY MSOC since 2013,” ignores the

fact of Mr. Henriquez’s prior use and that he permitted the

FDNY’s 2013 use. (ECF No. 52, FDNY Opp. at p. 1.) Moreover,

the FDNY Parties do not claim common law trademark infringement

against Mr. Henriquez and “have no objection to his continuing

use of the MSOC Marks because there is no likelihood of consumer

confusion as to the origin, sponsorship or endorsement of the

parties' separate conferences.” (Id.) Nonetheless, the FDNY

Parties appear to have asserted that they own the common law

trademark of Medical Special Operations Conference and MSOC

acronym, rather than Mr. Henriquez, by sending him a cease-and-

desist letter on September 27, 2019, and seeking cancellation of

his Marks. (ECF Nos. 26, SAC; 52-32, Singleton Decl., Ex. 21.)

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). “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.” Id. at 1271–72 (citing 3 Callmann, Unfair

Competition, Trademarks & Monopolies § 76.2(d) (1969)).

“Undoubtedly, the general rule is that, as between conflicting

claimants to the right to use the same mark, priority of

appropriation determines the question.” United Drug Co. v.

Theodore Rectanus Co., 248 U.S. 90, 100 (1918).

First, the Court finds, based on the undisputed facts,

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 Conference words and MSOC acronym.

Even if Dr. Isaacs and Mr. Henriquez created the MSOC name

together, which they did not, the Court cannot fathom how the

FDNY Parties alone could be considered the first appropriators

of the MSOC Mark and Acronym, and not, at the very least, users

of the name with permission of Mr. Henriquez as they

collaborated on the 2013-2019 MSOC events hosted by the FDNY.

The undisputed evidence from the exhibits, testimony, and

submissions provided to this Court and to the USPTO, establishes

that prior to the first 2013 MSOC event hosted by the FDNY with

Mr. Henriquez’s significant input, Mr. Henriquez created,

coordinated, and organized MSOC events in other cities that

utilized the words Medical Special Operations Conference and

MSOC acronym.7

In 2010, Mr. Henriquez created the Medical Special

Operations Conference name, MSOC acronym and MSOC logo to use as

a brand in connection with his idea to bring military-level

special operations medical skills and training to the first

responder community via a series of conferences. (ECF No. 49,

Henriquez. Decl. ¶ 4.) Also in 2010, three years before the

first MSOC event hosted by the FDNY, Mr. Hernandez acknowledged

to Mr. Henriquez in an email, “I think we are really moving

along and everyone seems really excited to participate. I like

your idea for the medical operations conference name better.

Let me know when you have time to talk. I spoke to a few of the

guys from SOMA [an organization not related to FDNY] [to] follow

up.” (ECF No. 49-2, Henriquez Decl., Ex. B at pp. 1-3.)

Mr. Henriquez, Mr. Hernandez, and others presented the

first MSOC event in early 2011, in Ohio, first using the Medical

Special Operations Conference name and MSOC acronym as a

trademark. Mr. Henriquez also created an MSOC graphic logo that

appeared on the 2011 Ohio MSOC event materials. (ECF No. 49,

Henriquez Decl. ¶¶ 4, 5.) The following year, Mr. Henriquez

added the words “Perry, Georgia” to the MSOC logo and conference

7 The Court repeats some of the primary facts and key events in support of

this conclusion, but notes that there is more evidence in support detailed

comprehensively in the Facts section.

materials used at an MSOC event in 2012 in Perry, Georgia. (Id.

¶¶ 6-8.) Mr. Henriquez and Mr. Hernandez invited Dr. Isaacs to

a military-oriented conference in Florida and told him about

their MSOC events using the MSOC Marks in 2011. (Id. ¶ 9.)

During 2011 to 2012, Mr. Henriquez continued discussing the MSOC

events and whether the FDNY would be interested in hosting an

MSOC event. (Id. ¶ 10.)

On June 29, 2012, Mr. Henriquez emailed Dr. Isaacs, “I

attached a draft to show how we would do [an MSOC event] in NY.

It follows the same structure as the previous MSOC events. The

formula is the same just tweaked it to what we have available

here. It all depends on how much support we get from the rest

of the FDNY. Joe [Hernandez] and Vinny [Johnson] are all in.”

(ECF No. 49-3, Henriquez Decl., Ex. C.) Dr. Isaacs responded

that day, “Thanks Juan!” (Id.) The Court finds, based on the

undisputed evidence, that Mr. Henriquez was the first creator,

appropriator, and user of the Medical Special Operations

Conference name and acronym. Consequently, Mr. Henriquez has

common law rights to the MSOC name and acronym marks and logo.

Moreover, the FDNY Parties have provided no evidence

that Dr. Isaacs or any of the FDNY Parties created or used Mr.

Henriquez’s trademarked Medical Special Operations Conference

name and MSOC acronym as a term or event associated with the

FDNY, prior to Mr. Henriquez’s creation and uses of the name in

2011 in Ohio, and 2012 in Georgia. The FDNY Parties assert that

Dr. Issacs created the term but offered no credible evidence or

exhibits showing the FDNY Parties’ use of the Marks in

communications coordinating any MSOC events prior to the first

MSOC event in 2013 hosted by the FDNY with the participation and

permission of Mr. Henriquez. Though affidavits from Dr. Isaacs

and various FDNY officials were submitted, the Court does not

find Dr. Isaacs’s hearing testimony to be reliable or credible,

given his claimed inability to recall emails regarding MSOC

events that he sent or received and emails in which he

repeatedly praised Mr. Henriquez’s significant efforts in

coordinating and organizing the FDNY-hosted MSOC events.

Moreover, Dr. Isaac’s declaration does not state that he created

or used the MSOC Marks prior to Mr. Henriquez’s documented first

use of the Medical Special Operations Conference name in 2010,

and the FDNY Parties do not offer any other evidence on this

point. United Drug Co., 248 U.S. at 100 (“Undoubtedly, the

general rule is that, as between conflicting claimants to the

right to use the same mark, priority of appropriation determines

the question.”)

Indeed, none of the FDNY parties’ declarations state

that the FDNY Parties created and/or first used the MSOC Marks.

Instead, although declarations and testimony of Dr. Isaacs and

Dr. Pamela Lai state that Dr. Isaacs created the idea and name

for the MSOC event, hosted by the FDNY in 2013, they do not

claim that the FDNY was the creator or first user of the MSOC

events that did not involve the FDNY. (ECF Nos. 52-4, Isaacs

Decl. ¶ 9 (“I came up with the idea for FDNY MSOC, not

Henriquez. Since 2012, I have planned and organized the FDNY

MSOC, albeit with Henriquez’s assistance.”); 52-5, Lai Decl. ¶ 5

(“To the best of my knowledge, Douglas Isaacs, M.D. came up with

the idea for the FDNY MSOC, as well as the name.”) When asked

at the hearing whether he came up with the words “Medical

Special Operations Conference,” Dr. Isaacs testified, “Well, it

was always called FDNY Medical Special Conference8” and stated

that he had no knowledge of the phrase “Medical Special

Operations Conference” used prior to its use with FDNY. (Tr. at

p. 452.) Dr. Isaacs’s testimony at the hearing directly

contradicts his written declaration, in which he stated, “I

chose the words Medical Special Operations Conference or MSOC as

the name for the FDNY MSOC because it was descriptive of the

nature of the proposed FDNY conference and the terms were

already well known in the relevant community for such a

conference.” (ECF No. 52-4, Isaacs Decl. ¶ 24.) Moreover,

given Dr. Lai’s lack of personal knowledge (her declaration and

testimony lacked specific details of Dr. Isaacs creating MSOC)

8 Dr. Isaacs did not say Operations in this part of his testimony. (Tr at

452.)

and close, personal and professional relationship with Dr.

Isaacs, her testimony was of scant probative value. (Tr. at

367.) The declarations and testimony of Dr. Isaacs and Dr. Lai

overlook Mr. Henriquez’s established common law rights to the

term “Medical Special Operations Conference” name and “MSOC”

acronym three years prior to 2013. (ECF No. 52-4, Isaacs Decl.

¶¶ 9, 21; Lai Decl. ¶ 5; Tr. at 451-53.)

If anything, Dr. Issacs’s declarations and testimony

consistently pointed to his work on the FDNY’s hosting of the

Medical Special Operations Conferences between 2013 and 2019 as

a collaborative effort with Mr. Henriquez and Mr. Hernandez.

(Tr. at pp. 522-23)(When asked why Mr. Henriquez and Mr.

Hernandez would have corresponded with Dr. Isaacs about programs

using the “MSOC” Marks around the country that were, clearly

unaffiliated with the FDNY, Dr. Isaacs merely responded, “It’s

friends discussing ideas.”). Moreover, Dr. Isaac’s declaration

and hearing testimony attempting to minimize Mr. Henriquez’s

critical contributions to organizing and coordinating the MSOC

events hosted by the FDNY were belied by his contemporaneous

emails to the leadership of the FDNY Parties acknowledging and

praising Mr. Henriquez’s efforts. (See ECF Nos. 49-4, Henriquez

Decl., Ex. D at p. 5 (In a December 20, 2013 email, Dr. Isaacs

wrote to FDNY officials, “Attached is the draft MSOC Flyer for

your review. Juan once again has done an amazing job.”); p. 7

(On January 14, 2014, Dr. Isaacs emailed FDNY officials about

the MSOC event at FDNY saying, “I included Juan Henriquez who

developed the web site.”); p. 9 (In a March 13, 2014 email to

FDNY officials, Dr. Isaacs described Mr. Henriquez as

“instrumental in the development of this conference and making

it the success that [it has] has become.”); see also 52-4,

Isaacs Decl. ¶ 10 (“Henriquez volunteered to work with me on the

FDNY MSOC conferences, beginning with the first [MSOC at FDNY]

conference in 2013[.]”).)

The Court also briefly addresses the FDNY Parties’

argument (raised after the briefing of Mr. Henriquez’s

preliminary injunction motion was completed) that Mr. Henriquez

does not have standing to assert a common law trademark because

he has “no commercial interest in the use of the MSOC

Marks as trademarks”. (ECF No. 59, FDNY Pre-Motion Conf. Letter

at p. 2.) A mark is used in commerce when it is “placed in any

manner on the goods . . . and the goods are sold or transported

in commerce.” 15 U.S.C. § 1127. To determine whether a

plaintiff has satisfied the “use in commerce” requirement,

courts ask “whether the trademark has been displayed to

consumers in connection with a commercial transaction.” Kelly-

Brown v. Winfrey, 717 F.3d 295, 306 (2d Cir. 2013). Mr.

Henriquez has shown that, based on over a decade of MSOC events

that he organized, registrants of the MSOC events all over the

country recognize the Medical Special Operations Conference name

and purchase their attendance at the MSOC events based on the

trademarked name recognition, in order to benefit from the

services (trainings, courses, certifications, and

accreditations). (ECF No. 49, Henriquez Decl. ¶ 3; Tr. at pp.

136-39.) Thus, Mr. Henriquez has satisfied that the Marks have

been used in commerce.

Even assuming, arguendo, that the FDNY Parties are

correct that the MSOC Marks have not been used in commerce, then

the FDNY Parties would also lack standing to assert a common law

trademark based on the FDNY-hosted MSOC events between 2013 to

2019, because according to Mr. Henriquez, the FDNY hosted MSOC

events were intended to be non-commercial, “public-spirited” and

“internationally inclusive”, in alignment with the “spirit and

intent behind the [ ] MSOC-branded events.” (ECF No. 49,

Henriquez Decl. ¶¶ 31-32, 47; Tr. at p. 88 (“In the FDNY’s case

. . . the discussion was that it was going to go back to the

FDNY EMS Special Operation Command and also the SOC command.”)

The FDNY Parties did not raise their challenge to Mr.

Henriquez’s common law trademark until after Mr. Henriquez

testified at the hearing that the proceeds from MSOC events were

intended to benefit the first responder medical community, and

were not primarily for profit. (Tr. at pp. 87-88)(As Mr.

Henriquez explained, “When you’re charging for attendance, it's

to cover for any resources, right, that you would need.

Anything left over is supposed to go back to the first responder

community.”)

The Second Circuit has held that for a common law

trademark to be created or exist, “[t]here must be a trade in

the goods sold under the mark or at least an active and public

attempt to establish such a trade.” Momentum Luggage & Leisure

Bags v. Jansport, Inc., No. 00-cv-7909(DLC), 2001 WL 830667, at

*5 (S.D.N.Y. July 23, 2001), aff'd, 45 Fed. Appx. 42 (2d Cir.

2002). The Court finds that after creating the “Medical Special

Operations Conference” Mark and “MSOC” Acronym Mark 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. (ECF Nos. 49, Henriquez Decl. ¶ 27;

49-9, Ex. G.)

Indeed, the FDNY parties themselves acknowledge the

Second Circuit’s concern in Colligan v. Activities Club of N.Y.,

Ltd., that “Congress' purpose in enacting § 43(a) [of the Lanham

Act] was to create a special and limited unfair competition

remedy, virtually without regard for the interests of consumers

generally and almost certainly without any consideration of

consumer rights of action in particular.” 442 F.2d 686 (2d Cir.

1971). Although Lanham Act standing is denied to consumers, the

focus of the Act is on the “unfair competition.” The Court

finds that Mr. Henriquez has suffered and would continue to

suffer from “unfair competition” if the FDNY Parties use his

protected common law trademarks and registered MSOC Mark in the

same year that Mr. Henriquez hosts an MSOC event in New York,

and in other states.

Moreover, Mr. Henriquez has demonstrated that there is

a commercial interest in the MSOC events involving the vendors,

sponsors, and attendees, even if he personally does not receive

profits as an individual. Instead, he intends that any proceeds

fund the MSOC events, participants who need funding, or the

agencies, with which MSOC partners, in order to help them

implement the MSOC training. Cf. Nordco A.S. v. Ledes, 95–

CV7753(RJW), 1997 WL 570546, at *3 (S.D.N.Y. Sept. 15, 1997)

(holding that plaintiff “failed to produce evidence

demonstrating that it has a commercial interest in the . . .

trademark . . . . Nor has [plaintiff] pointed to any actual

economic harm caused by [defendant’s] use of the trademark in

connection with its magazine.”) Accordingly, even if the MSOC

Marks were not by definition used in commerce, the Court finds

that Mr. Henriquez made “an active and public attempt to

establish [ ]a trade” of MSOC events across the country,

Momentum Luggage & Leisure Bags at *5, and that any lost

proceeds from Mr. Henriquez’s MSOC events would cause economic

harm to future MSOC events, participants, and partner agencies.

Accordingly, Mr. Henriquez has standing to protect his

common law trademarks of the Medical Special Operations

Conference name and MSOC acronym and holds common law trademarks

in both Marks as the first creator, user, and appropriator in

commerce.

2. Registered Trademark

The USPTO approved the registration of Mr. Henriquez’s

“Medical Special Operations Conference” Mark on August 18, 2020.

The FDNY Parties challenge the validity of Mr. Henriquez’s

registered Mark, asserting that Mr. Henriquez fraudulently

registered the Mark with the USPTO because he did not actually

use the Mark on a substantially exclusive and continuous basis.

(ECF No. 52-1, FDNY Opp. at p. 7.) The FDNY Parties also

contend that the trademark should not have been registered,

because the term Medical Special Operations Conference is not

distinctive, but is instead “merely descriptive” and has not

achieved “secondary meaning in the descriptive words.” (Id. at

11-14.) Based on the record before the Court, the contentions

of the Plaintiffs and Counter-Defendants are rejected.

Mr. Henriquez has established he owns a valid

protectable mark. Here, Mr. Henriquez successfully registered

the words Medical Special Operations Conference with the USPTO,

establishing “prima facie evidence that the mark is registered

and valid (i.e., protectible), that the registrant owns the

mark, and that the registrant has the exclusive right to use the

mark in commerce.” See Lane Capital Mgmt., Inc. v. Lane Capital

Mgmt, Inc., 192 F.3d 337, 345 (2d Cir. 1999); see also § 15

U.S.C. 1115(b). Based on the registration certificate issued to

Mr. Henriquez by the USPTO, “[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. Holding, 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, see id., 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”).

Because Mr. Henriquez’s trademark is registered, it is

also presumed to be distinctive. Lois Sportswear, U.S.A., Inc.

v. Levi Strauss & Co., 799 F.2d 867, 871 (2d Cir. 1986)

(citations omitted). The Court will further address the FDNY

Parties’ contention about distinctiveness in the Polaroid factor

section regarding the strength of the Marks. (ECF No. 52-1, FDNY

Opp. at pp. 11-13.)

The Court finds that Mr. Henriquez’s USPTO

registration of the words “Medical Special Operations

Conference” is valid. Mr. Henriquez credibly explained at the

evidentiary hearing that the USPTO’s initial issue with the MSOC

Marks was with the word “conference” being merely descriptive,

and then required Mr. Henriquez to submit proof of secondary

meaning by having him attest to the requisite (minimum) five

years of substantially exclusive and continuous use of the term,

“Medical Special Operations Conference”. (Tr. at p. 123.) This

fact is also substantiated by the USPTO’s disclaimer on Mr.

Henriquez’s approved MSOC trademark registration, “NO CLAIM IS

MADE TO THE EXCLUSIVE RIGHT TO USE ‘CONFERENCE’ APART FROM THE

MARK AS SHOWN.” (ECF No. 49-10, Henriquez Decl., Ex. J.) The

FDNY Parties offer no evidence to undermine the validity of the

registered Mark.

Mr. Henriquez provided evidence that the USPTO

requested to prove substantially exclusive and continuous use of

the MSOC Mark and Acronym, for much longer than five years. The

USPTO registration form expressly states: “FIRST USE: 20110130.

FIRST USE IN COMMERCE: 20110130,” documenting Mr. Henriquez’s

substantial and continuous use of the Medical Special Operations

Conference words since 2011.9 (ECF No. 49, Henriquez Decl., Ex.

J.)

For the foregoing reasons, the Court finds that Mr.

Henriquez holds both the common law trademarks to the “Medical

Special Operations Conference” name and MSOC acronym since 2010

and a validly registered USPTO Mark to the “Medical Special

Operations Conference” name since 2020.

B. Likelihood of Success on the Merits: Likelihood of

Confusion Applying Polaroid

In addition to establishing that the FDNY parties used

Mr. Henriquez’s valid marks without his consent, 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. The Court finds that Mr. Henriquez has shown that the

FDNY Parties’ use of that mark “is likely to cause confusion . .

. as to the affiliation, connection, or association of the [FDNY

Parties] with [Mr. Henriquez], or as to the origin, sponsorship,

or approval of the [FDNY Parties’] goods, services, or

commercial activities by [Mr. Henriquez].” 1-800 Contacts at

407; see also 15 U.S.C. § 1125(a)(1)(A). Once the movant

establishes a valid mark entitled to protection, “its possessor,

9 The USPTO registration does not state a date, just the year 2011.

in order to succeed on its infringement claim, must prove that

‘numerous ordinary prudent purchasers are likely to be misled or

confused as to the source of the product in question because of

the entrance in the marketplace of defendant's mark.’” Time,

Inc. v. Petersen Pub. Co. LLC at 117 (quoting Gruner + Jahr USA

Publishing v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir.

1993).

To determine the likelihood of confusion, the Court

will apply the Polaroid eight-factor test. See Polaroid Corp.,

287 F.2d at 492. Here, it is important to note, again, that the

MSOC Marks used by the FDNY Parties are exactly the same as Mr.

Henriquez’s protected Marks, except that the FDNY Parties added

its own trademarked “FDNY” acronym and FDNY logo to Mr.

Henriquez’s trademarked Medical Special Operations Conference

name and acronym. Based on its review of the evidence in light

of the Polaroid factors, the Court finds that Mr. Henriquez has

shown that a likelihood of confusion exists if both the FDNY

Parties and Mr. Henriquez continue to host events using the MSOC

Marks in New York and throughout the country.

1. Strength of the Marks

The Court finds that the strength of Mr. Henriquez’s

Medical Special Operations Conference Marks is at least strongly

suggestive, and not generic or merely descriptive. “[T]he

strength of a mark depends ultimately on its distinctiveness, or

its origin-indicating quality, in the eyes of the purchasing

public.” Easy Spirit, LLC v. Skechers U.S.A., Inc., 515 F.

Supp. 3d 47, 71 (S.D.N.Y. 2021) (quoting Savin Corp. v. Savin

Grp., 391 F.3d 439, 457 (2d Cir. 2004)). The four categories of

inherent distinctiveness, in ascending order of strength, are:

(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary

or fanciful. Id. (citing Brennan’s, Inc. v. Brennan’s Rest.,

L.L.C., 360 F.3d 125, 131 (2d Cir. 2004)).

“A generic term is a common name, like automobile or

aspirin, that describes a kind of product.” Gruner, 991 F.2d at

1075. “Generic marks are never entitled to trademark

protection.” Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d

137, 143 (2d Cir. 1997). A descriptive mark is “one that tells

something about a product, its qualities, ingredients or

characteristics.” Gruner at 1076. Descriptive terms are

protectable only with evidence of secondary meaning. Id. A

suggestive mark suggests the product, though it may take

imagination to grasp its nature. Id. An arbitrary mark has an

actual dictionary meaning, but that meaning does not describe

the product, and a fanciful mark is a made-up name. See id. at

1075–76.

Suggestive, arbitrary, and fanciful marks are

inherently distinctive and eligible for protection without proof

of secondary meaning. See id.; see also Gameologist Grp., LLC

v. Sci. Games Int'l, Inc., 838 F. Supp. 2d 141, 154 (S.D.N.Y.

2011), aff’d, 508 F. App’x 31 (2d Cir. 2013). As noted by the

Second Circuit, “[r]egistration by the [US]PTO without proof of

secondary meaning creates the presumption that the mark is more

than merely descriptive, and, thus, that the mark is inherently

distinctive.” Lane Cap. Mgmt., Inc. at 345 (2d Cir. 1999).

Given that the mark is registered with the USPTO and is thus

presumed to be inherently distinctive and not merely descriptive

or generic, it is the FDNY Parties who bear the burden of

overcoming that presumption. Reese Pub. Co. v. Hampton Int’l

Commc’s, Inc., 620 F.2d 7, 11 (2d Cir. 1980).

The FDNY Parties argue without documentary support,

that the strength of the Marks is weak because the words

“Medical Special Operations Conference” is a “ubiquitous term”

in the medical professionals industry, which suggests the USPTO

Mark is generic. To determine if a mark is generic, the Court

asks, “whether the consuming public understands and commonly

uses the term to denote a particular source or origin of a

product, even if that source is unknown (in which case the mark

is descriptive), as opposed to the nature or class of the

product (in which case the mark is generic).” See Jewish

Sephardic Yellow Pages, Ltd. v. DAG Media, Inc., 478 F. Supp. 2d

340, 360 (E.D.N.Y. 2007) (citing Kellogg Co. v. Nat’l Biscuit

Co., 305 U.S. 111, 113 (1938)); see also 15 U.S.C. § 1064(3).

Based on the evidence in the record, the Court concludes the

MSOC Mark and Acronym Mark are not generic or merely

descriptive, but are suggestive or arbitrary and are inherently

distinctive.

FDNY relies on a July 2022 Second Circuit case,

reversing a district court’s grant of a preliminary injunction

to a plaintiff alleging infringement of its registered marks,

finding on de novo review that the “district court failed to

recognize the inherent weakness of Plaintiff’s mark.” See

RiseandShine Corp. v. PepsiCo, Inc., 41 F.4th 112, 120 (2d Cir.

2022). In RiseandShine Corp., the Second Circuit found that the

“RISE” mark used for a canned coffee drink was inherently weak,

because there was a logical association between the word “Rise”

and coffee’s capacity to “ jumpstart [one’s] energy for the day”,

and the word “Rise” was “tightly linked with the perceived

virtues of coffee.” Id. at 122.

The RiseandShine Corp. analysis of the “Rise” term is

distinguishable from the case here, because the Court finds that

the words Medical Special Operations Conference are more

“suggestive” or “arbitrary” under Second Circuit case law, and

not “merely descriptive.” See Cross Com. Media, Inc. v.

Collective, Inc., 841 F.3d 155, 162-63 (2d Cir. 2016) (“The

meaning of a suggestive mark typically evokes an array of goods,

which means that consumers must make an additional mental effort

to identify the associated product in particular.”) “Both

descriptive and suggestive marks convey information about, and

thus are associated with, the product to which they are

attached. The difference between them lies in the immediacy of

association—how quickly and easily consumers grasp the nature of

the product from the information conveyed.” Id. Thus, “[i]f

the mental leap between the word and the product’s attributes is

not almost instantaneous, this strongly indicates

suggestiveness, not direct descriptiveness.” Id. (quoting 2 J.

Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §

11:67 (4th ed.)).

Applying the above guidance, the Court finds that the

words, “Medical Special Operations Conference,” singly or in

combination have defined meanings, but do not clearly identify

or describe the product. The words literally suggest a special

medical operation or surgery, rather than the distinct meaning

that Mr. Henriquez has provided since he first used the combined

words to describe his conference events. Contrary to the FDNY

Parties’ assertion, the mark is not merely descriptive; the MSOC

Mark and Acronym Mark “[do] not directly describe[ ] the goods

with which [the Marks are] associated,” nor “forthwith convey[ ]

an immediate idea of the ingredients, qualities or

characteristics of the goods [or services at issue].” Kohler

Co. v. Bold Int’l FZCO, 422 F. Supp. 3d 681, 719 (E.D.N.Y.

2018). There is “certainly a connotation” to the term “Medical

Special Operations Conference” that evokes the image of a

conference focused on a specialized surgery or operation in the

field of medicine, Giggle, 856 F. Supp. 2d at 630, but the mark

requires “some degree of imagination, perhaps assisted by

consideration of the product itself,” for consumers to “invest”

the mark with its “intended mental association.” Sunenblick v.

Harrell, 895 F. Supp. 616, 625 (S.D.N.Y. 1995), aff’d, 101 F.3d

684 (2d Cir. 1996).

The Court notes that the Medical Special Operations

Conference was created by Mr. Henriquez and hosted every year

since 2011 in multiple states to share information and provide

training for civilian emergency medical practitioners in a

specific field that includes “all first responders . . . medical

professionals working in Urban Search and Rescue, Disaster

Medicine, Civilian pre-hospital care, equipment development and

Military Special Operations.” Thus, the Medical Special

Operations Conference Mark and MSOC Acronym Mark demonstrate a

level of specificity and meaning that exceeds mere description

or even suggestion. (ECF No. 49-1, Henriquez Decl., Ex. A; Tr.

at p. 527 (Dr. Isaacs said about the conferences, “we do it for

the love of the field.”).) The words “Medical Special

Operations Conference” do not directly describe or suggest what

the conferences are and what services are provided, especially

to the average person, even including the average medical

professional.

In gauging a mark’s strength, the Court must also

consider both the inherent distinctiveness of the mark and the

mark’s distinctiveness in the marketplace. See Time, 173 F.3d

at 118. Suggestive marks, such as the one here, are inherently

distinctive. See Star Indus., Inc. v. Bacardi & Co., 412 F.3d

373, 385 (2d Cir. 2005). Suggestive marks, however, are not

necessarily distinct in the marketplace. See Gameologist, 838

F. Supp. 2d at 158 (“Although a suggestive mark is entitled to

protection without a showing of secondary meaning,

suggestiveness is not necessarily dispositive of the issue of

the strength of the mark without a showing of secondary

meaning.”). The burden is on Mr. Henriquez to prove market

distinctiveness with reference to this circuit’s well-

established secondary meaning factors: (1) advertising and

promotional expenses; (2) consumer studies linking the mark to

the source; (3) unsolicited media coverage of the product; (4)

sales success; (5) attempts to plagiarize the mark; and (6)

length and exclusivity of the mark’s use. Centaur Commc’ns,

Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d 1217, 1222 (2d Cir.

1987). No single factor is determinative and every element need

not be proved. Id. at 1222. (citing and quoting Thompson Med.

Co. v. Pfizer Inc., 753 F.2d 208, 217 (2d Cir. 1985)).

In this case, the market distinctiveness and secondary

meaning factors weigh in favor of Mr. Henriquez. 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 since

2011. (ECF No. 49, Henriquez Decl. ¶¶ 18-21, 49-50.) See

Gameologist, 838 F. Supp. 2d at 158. Mr. Henriquez said that

the MSOC events were regularly advertised and reported in trade

publications, and Mr. Henriquez recalls the events being covered

by local news sources outside of the New York City. (ECF No.

49, Henriquez Decl. ¶ 50.) Mr. Henriquez also testified to the

success of the MSOC events, based on a substantial increase in

attendance every year since 2011, with roughly 500 attendees

participating in the 2022 MSOC event he coordinated. (Tr. at p.

81.) Between 2013 and 2019, with Mr. Henriquez’s permission,

the FDNY Parties have used the MSOC Marks but have not proffered

any evidence that they created or started using the MSOC Marks

before Mr. Henriquez did. The FDNY Parties’ plan to continue

using the MSOC Marks, despite lacking authority from Mr.

Henriquez, who explicitly requested that they cease and desist,

provides support to the Centaur factor regarding attempts by the

FDNY Parties to plagiarize Mr. Henriquez’s mark. Finally, 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. (ECF Nos. 49-1, Henriquez Decl. Ex. A; 49-9, Ex. G;

Tr. at pp. 81, 133.)

Thus, even assuming the Medical Special Operations

Conference marks are “merely descriptive”, which the Court does

not find the trademarked words to be, the Marks appear to have

achieved market distinctiveness and secondary meaning among the

community of attendees, trainers, and sponsors of the MSOC

branded events. (ECF Nos. 49, Henriquez Decl. ¶¶ 49-50

(describing the medical first responder community promoting MSOC

events through “word of mouth” and coverage of MSOC-named events

in emergency responder trade publications); 54, Henriquez Supp.

Decl. ¶¶ 9-10 (referring to the members of “medical special

operations community” associating the MSOC name and acronym with

events they hosted together); 49-7, Henriquez Decl., Ex. G at p.

6 (flyer requesting sponsors for MSOC events.))

Accordingly, with respect to the strength of the

marks, the Court finds that the strength of Mr. Henriquez’s

Medical Special Operations Conference Marks are strongly

suggestive or arbitrary marks with inherent distinctiveness and

market distinctiveness.

2. Similarity of the Marks

The Court finds that the similarity of the marks

factor weighs heavily in favor of Mr. Henriquez. When analyzing

the similarity of the disputed marks, a court should address

“two key questions: (1) whether the similarity between the two

marks is likely to cause confusion and (2) what effect the

similarity has upon prospective purchasers. In deciding whether

the marks are similar as used, [a court does] not look just at

the typewritten and aural similarity of the marks, but how they

are presented in the marketplace.” Sports Auth., 89 F.3d at

962; see also Car-Freshner Corp. at 330–31 (“[W]e have found no

decision where differences in packaging dispelled the similarity

of a mark that used two identical words, neither of which is

descriptive of the products on which they appear, and the

defendant put them, in sequence, in a mark placed on competitive

products.”); 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.”) The Second Circuit has also noted that

“[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 Corp. at 330.

The Court finds that the similarity of the marks

factor weighs heavily in favor of Mr. Henriquez because the

FDNY’s use of the Medical Special Operations Conference name and

MSOC acronym in publicizing its conference is identical to the

use and sequence of the Mr. Henriquez’s registered Medical

Operations Special Conference trademark, except for the addition

of the FDNY logo. The FDNY Parties are also the junior user and

directly adopted the Medical Special Operations Conference name

and MSOC acronym in their entirety from Mr. Henriquez, after he

unequivocally withdrew his consent in November 2019.

3. Proximity of the products and their

competitiveness with one another

The Court finds that the proximity and competitiveness

of the products factor heavily weigh in favor of Mr. Henriquez.

In considering “to what extent the two products compete with

each other,” the Court takes into account both the “market

proximity and geographic proximity.” Brennan's, Inc. v.

Brennan's Rest., LLC, 360 F.3d 125, 134 (2d Cir. 2004). “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.” Id.

In this case, not only do the parties have close

market proximity, but they are in identical geographic markets

with an identical client base, with a nearly identical product.

The record before the Court establishes that the market

targeting civilian professionals for training in emergency urban

search and rescue medical skills did not appear to be

significant, or even exist, before Mr. Henriquez and his

colleagues first decided to host military-level special

operations medical skills and operations training and

conferences in different states. (ECF Nos. 49, Henriquez. Decl.

¶¶ 4-10; 54, Henriquez Supp. Decl. ¶ 9 (Mr. Henriquez described

his first MSOC event In 2011 as follows: “[W]e kind of just got

together somehow with whatever resources our agencies or our

departments or individuals could provide . . . . That first year

. . . it was a collective effort from people, now from around

the world, just getting [MSOC events] off the ground.”)

In 2012, the FDNY, through Dr. Isaacs, approached Mr.

Henriquez to host an MSOC event in 2013 with Mr. Henriquez and

Mr. Hernandez. Mr. Henriquez recently learned that the FDNY

Parties intend to host the same event (with different

programming) in New York in May 2023, targeting the same

audience, using the same instructors, vendors, sponsors, in the

same place using the MSOC name and acronym Marks, without the

consent of Mr. Henriquez. Though it is true that “both parties’

products exist[ing] within the same industry is not enough” to

satisfy competitive proximity, Hypnotic Hats, Ltd. v.

Wintermantel Enters., LLC, 335 F. Supp. 3d 566, 586 (S.D.N.Y.

2018), here, the parties’ products and use of the MSOC Marks are

identical and there is already evidence of resources being

stretched or diverted between the two parties.

Mr. Henriquez asserts 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, such as the MSOC events, and that federal

funding cuts were announced for 2023. (ECF No. 49, Henriquez

Decl. ¶¶ 44-45.) He also describes how the funding to which the

FDNY Parties may have access, previously were provided to

benefit the MSOC events organized by Mr. Henriquez for the FDNY

in the past. (Id; see also ECF No. 54, Henriquez. Supp. Decl. ¶

12 (“[Mr. Henriquez] and others outside of the FDNY worked to

lobby FEMA and state funding agencies to permit their grant

funds to be used by regional task force teams specifically for

MSOC-branded events.”)) Through the efforts of Mr. Henriquez,

the funding allowed MSOC event attendees to pay for their

attendance and related costs for travel and hotels using federal

and state funds and receive their federal certifications.

Not only are the two conferences competing for the

same resources, Mr. Henriquez and the FDNY Parties would also be

competing for attendees. Mr. Henriquez asserts that the FDNY

Parties’ intended use of the MSOC and Acronym Marks in May 2023

will create confusion among attendees at the May 2023 FDNY

event, because they may use federal and state grant funds

intended to assist members of state and national search and

rescue teams to obtain required certifications by attending the

MSOC events, but “the FDNY conference . . . will not give them

the required certifications.” (ECF No. 54, Henriquez Supp.

Decl. ¶ 12.) The FDNY Parties provided no evidence to the

contrary. There is no evidence that consumers or potential

conference attendees would understand that MSOC and FDNY are

competitors with two separate conferences, because they would

likely be confused by the FDNY’s unauthorized use of Mr.

Henriquez’s MSOC Marks in New York as planned in May 2023. In

any case, the Court concludes that there is market proximity

between the MSOC events hosted by Mr. Henriquez and events by

the FDNY parties using Mr. Henriquez’s Marks.

Mr. Henriquez’s MSOC events and the FDNY-hosted

conference are also geographically close. Both Mr. Henriquez

and the FDNY Parties both hope to host MSOC conferences in New

York. (ECF No. 49, Henriquez Decl. at ¶ 42.) Moreover, though

Mr. Henriquez’s other MSOC events take place in other geographic

markets—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 event in New York and other geographic markets,

placing the two parties in competition.

Given the market proximity and geographic proximity,

these factors heavily weigh in favor of Mr. Henriquez.

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

The “bridging the gap” factor also weighs heavily in

Mr. Henriquez’s favor. Though the “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), consideration of “‘[b]ridging

the gap’ refers to the likelihood that the senior user will

enter the junior user’s market in the future, or that consumers

will perceive the senior user as likely to do so.” Star Indus.,

Inc., 412 F.3d at 387. Here, both the New York market and the

product are the same. “When . . . the parties’ goods are the

same, [the ‘bridging the gap’] 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).

The Court notes that here, the senior user, Mr.

Henriquez, was the first to enter the national market with his

MSOC Marks. Because both Mr. Henriquez and the FDNY Parties

once collaborated to present the MSOC event at the FDNY, they

now plan to operate separate events using the Medical Special

Operations Conferences Marks in the same New York market.

Consequently, the “bridging the gap” factor weighs heavily in

Mr. Henriquez’s favor.

5. Evidence of actual consumer confusion

The Court finds that there is undisputed evidence of

actual consumer confusion. “It is self-evident that the

existence of actual consumer confusion indicates a likelihood of

consumer confusion.” Virgin Enters. Ltd., 335 F.3d at 151. As

such, “evidence of actual confusion [is] ‘particularly relevant’

to the inquiry.” Id. (citation omitted). Based on undisputed

evidence in the record, the Court also notes that actual

confusion “need not be shown to prevail under the Lanham Act,

since actual confusion is very difficult to prove, and the Act

requires only a likelihood of confusion as to source.” Beastie

Boys v. Monster Energy Co., 66 F. Supp. 3d 424, 456 (S.D.N.Y.

2014) (citing Lois Sportswear at 875). The Court finds that

there is both actual confusion and the likelihood of confusion

as to the source of the Medical Special Operations Conferences

if Mr. Henriquez and the FDNY Parties both use the MSOC Marks

for their conference names in 2023.

Because the MSOC events at FDNY were developed,

organized, and coordinated primarily by Mr. Henriquez between

2013 and 2019, but the FDNY, without permission from Mr.

Henriquez, intends to present a separate MSOC branded event in

May 2023, the Court presumes a high likelihood of confusion for

those who were previously involved with the MSOC events hosted

by the FDNY as participants, speakers, or vendors, as well as

for those newly introduced to the MSOC brand. It is not

disputed that Mr. Henriquez received inquiries in October and

November 2022 from vendors who were confused about the

relationship between the FDNY-hosted conference and the MSOC

events presented by Mr. Henriquez. (ECF No. 49, Henriquez Decl.

¶ 43.) Mr. Henriquez also declared that industry colleagues,

who might have served as instructors, suppliers, or

collaborators, also believed that Mr. Henriquez and the MSOC

community were involved with the FDNY Parties’ plans for a 2023

MSOC event, as they had been in all prior years. (Id.)

Mr. Henriquez also credibly testified to vendors, the

public, past participants, volunteers, and instructors

expressing confusion about the FDNY’s plan for a 2023 MSOC

event. (Tr. at pp. 136-39.) He 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. (Id.) Mr. Henriquez also testified

that there are 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. (Id.)

Mr. Henriquez explained in his declaration that he and

other MSOC coordinators have been participating in a process

that will allow them to present upgraded training and federal

certifications in accordance with new federal requirements.

(ECF No. 49, Henriquez Decl. ¶ 46.) Though the FDNY Parties

state that it is “speculative and unsubstantiated” that the

FDNY-hosted event would not be up to date (ECF No. 52, FDNY Opp.

at p. 40), there is no evidence disputing Mr. Henriquez’s

evidence showing that vendors, attendees, sponsors, and industry

colleagues are already confused by the FDNY’s unauthorized use

of Mr. Henriquez’s MSOC Marks. The FDNY Parties seemingly seek

to benefit from the confusion that participants may have, as to

whether the FDNY-hosted event in 2023 will be the same

conference as the past MSOC conference hosted by the FDNY, in

which Mr. Henriquez played a significant role between 2013 and

2019. (ECF No. 54, Henriquez Supp. Decl. ¶ 12; 54-6, Ex. Q

(demonstrating that in the past, Dr. Isaacs had already relied

on Mr. Henriquez’s efforts to secure federal grants for MSOC at

FDNY events to reassure the FDNY Foundation there would be

enough funding for future MSOC at FDNY events).) Mr. Henriquez

testified that, in fact, many instructors that he invited to

participate in his previous MSOC events are still going to

support or work at the FDNY-hosted event, because Mr. Henriquez

and other MSOC coordinators do not want to foster animosity and

still want to provide relevant and important resources to the

urban medical first responder community. (Tr. at 136-39.)

The Lanham Act is meant to protect “against mistaken

purchasing decisions and not against confusion generally.”

Restatement (Third) of Unfair Competition § 20 reporter's note

at 179. In particular, the Act seeks to avoid “consumer

confusion that enables a seller to pass off his goods as the

goods of another.” Lang v. Ret. Living Pub. Co., 949 F.2d 576,

582 (2d Cir. 1991). Based on the record, the Court finds that

due to the FDNY Parties’ continued unauthorized use of Mr.

Henriquez’s MSOC Marks, “[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.

Id. Because there is considerable undisputed evidence of actual

consumer confusion, this factor weighs heavily in Mr.

Henriquez’s favor.

6. Evidence that the Marks were adopted in bad faith

The Court finds that the FDNY Parties adopted the

Marks in bad faith, and this factor weighs heavily in favor of

Mr. Henriquez. “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, 412 F.3d

at 388. To demonstrate bad faith, Mr. Henriquez must show that

the FDNY Parties had “an intent to promote confusion or exploit

good will or reputation.” Id. Bad faith may be inferred where

a junior user has actual or constructive knowledge of the senior

user’s mark. Id.

From the facts discussed at length, the Court finds,

inter alia, that the FDNY Parties continued to use the MSOC

Marks, after Mr. Henriquez withdrew his permission for the FDNY

Parties to use his Marks, and despite the FDNY’s knowledge that

Mr. Henriquez also coordinated MSOC events using his MSOC Marks

since 2011 outside of New York, before the first MSOC at FDNY

2013 event. (ECF No. 49-9, Ex. I) (In an email to three FDNY

counsel Moira Archer, Gerald Singleton, and Carol Moran, Mr.

Henriquez reiterated his request that his MSOC Marks not be used

by the FDNY and wrote, “Attached are copies of some of the

documents we discussed, showing the use of ‘MSOC’ prior to us

bringing the event to the FDNY.”) The FDNY Parties also had

knowledge that Mr. Henriquez had established to the satisfaction

of the USPTO his substantial and continued use of the MSOC Marks

in order to obtain USPTO approval of his MSOC trademark

registration. (ECF No. 51, Fletcher Decl. ¶ 2.) Nonetheless,

the FDNY Parties commenced planning the 2023 conference, using

the MSOC Marks, without authority from Mr. Henriquez, and this

factor also weighs in favor of Mr. Henriquez.

7. Respective quality of the products

The Court finds that the factor regarding the quality

of the conferences weighs in favor of Mr. Henriquez. The

analysis of the quality of the MSOC event “is primarily

concerned with whether the senior user’s reputation could be

jeopardized by virtue of the fact that the junior user's product

is of inferior quality.” Arrow Fastener, 59 F.3d at 398. As

discussed above, Mr. Henriquez has provided undisputed, credible

evidence that the FDNY-hosted events will lack certain courses

and accreditation resources that attendees at past MSOC events

need and expect. (ECF Nos. 49, Henriquez Decl. ¶ 46; 54,

Henriquez Supp. Decl. ¶ 12; Tr. at pp. 136-39.) Furthermore,

the record clearly demonstrates that the MSOC events hosted by

the FDNY were largely developed, organized, and coordinated by

Mr. Henriquez between 2013 and 2019, and Mr. Henriquez is no

longer involved with the FDNY-hosted events. (Tr. at pp. 613-

14)(Dr. Isaacs admitted that Mr. Henriquez suggested major

topics, training, and speakers, and provided his contact lists,

materials, and resources.) Though it appears that the FDNY has

benefitted from Mr. Henriquez’s creation of previous Event

Action Plans and prepared materials, the Court finds it more

likely than not that there will be a difference in quality due

to Mr. Henriquez’s proven role in planning and coordinating the

past FDNY hosted MSOC events. As discussed above, Mr. Henriquez

has presented evidence that past attendees who have registered

for the upcoming FDNY event in 2023, have already expressed

disappointment and requested refunds upon discovering that

certain programs and accreditations previously offered at MSOC

events, including those hosted by the FDNY, are not offered at

the 2023 FDNY event. (Tr. at pp. 136-39.) Furthermore, many of

these potential attendees may only receive state or federal

grant monies to attend one conference on medical special

operations training, highlighting the importance that

registrants are correctly selecting the conference that would

actually provide them with the necessary accreditations. (ECF

No. 54, Henriquez Supp. Decl. ¶ 12.) Accordingly, the Court

finds that the factor regarding quality of the conferences, and

protecting Mr. Henriquez’s reputation and good will, weighs in

favor of Mr. Henriquez.

8. Sophistication of consumers in the relevant

Market

Finally, the factor regarding the sophistication of

consumers in relevant market weighs in favor of Mr. Henriquez.

In considering the sophistication of consumers, a court must

evaluate “[t]he 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.” McGregor-Doniger Inc. v. Drizzle Inc., 599

F.2d 1126, 1137 (2d Cir. 1979). In general, greater

sophistication of consumers reduces the likelihood of confusion.

Centaur, 830 F.2d at 1228. For purposes of this factor,

consumers of relatively inexpensive goods and consumers who make

impulsive purchases are generally considered unsophisticated.

See Sports Auth., 89 F.3d at 965.

In this case, however, there are not two separate

marks for the sophisticated or unsophisticated consumer to

distinguish between. The two parties both use Mr. Henriquez’s

registered Medical Special Operations Conference name and common

law MSOC Marks. Accordingly, though the medical professionals

who attend or participate in the conference are likely to be

“sophisticated” for the purposes of being able to distinguish

average everyday consumer goods, there is no evidence that the

sophistication of these consumers would prevent confusion

between the planned 2023 FDNY-hosted event and the MSOC events

produced and organized by Mr. Henriquez, both with the FDNY in

the past, and with other medical first responders nationwide.

Furthermore, the Court finds that though the MSOC events are

attended by “sophisticated” medical professionals, new

attendees, sponsors, vendors, and instructors have been added to

the MSOC events every year since Mr. Henriquez’s first event in

2011. (ECF No. 54, Henriquez Supp. Decl. ¶ 18). A 2019 MSOC in

Kansas event coordinated by Mr. Henriquez was attended by

approximately 300-350 paid attendees, while the 2022 MSOC in

South Carolina event was attended by more than 500 paid

participants. (Id.) Thus, there is a strong likelihood of

confusing the increasing the number of new participants and

partners interested in MSOC events hosted by Mr. Henriquez, and

also confusing past attendees incapable of distinguishing

between the previous MSOC at FDNY events and the 2023 FDNY-

hosted conference, regardless of the sophistication level of

these consumers. This last Polaroid factor regarding

sophistication of consumers in relevant market weighs in favor

of Mr. Henriquez.

C. Irreparable Harm

1. Delay

Now that the Court has found that Mr. Henriquez

established the likelihood of success on the merits, it will

consider whether, and does find that, Mr. Henriquez has shown

that he will suffer irreparable harm in the absence of an

injunction. Benihana, Inc. v. Benihana of Tokyo, LLC, 784 F.3d

887, 895 (2d Cir. 2015). The Court notes again that “if (1)

[Mr. Henriquez] establishes that [he] has a likelihood of

success on the merits (that is, [he] establishes both the

validity of [his] mark and a likelihood of confusion), and (2)

the [FDNY Parties] fail to rebut the presumption, the [moving

party] satisfies [his] burden of showing irreparable harm.” Two

Hands IP LLC, 563 F. Supp. 3d at 300; see also Tough Traveler,

Ltd. v. Outbound Prod., 60 F.3d 964, 967 (2d Cir. 1995).

The FDNY Parties primarily argue that any presumption

of harm to Mr. Henriquez is negated because Mr. Henriquez acted

with extraordinary delay and that both parties have been “using

the MSOC Marks as descriptive marks to hold separate

conferences, without any evidence of likely or actual consumer

confusion.” (ECF Nos. 52-1, FDNY Opp. at pp. 11-12; 69, Mr.

Singleton’s Feb. 22, 2023 Letter.) The Court respectfully

disagrees with the FDNY’s inaccurate view of the evidence. The

FDNY Parties has not proffered evidence that it held separate

conferences using Mr. Henriquez’s protected MSOC Marks. Indeed,

the record shows that after Mr. Henriquez notified the FDNY

Parties to cease using his Marks after he assisted with the 2019

MSOC events hosted by the FDNY, the FDNY did not host a

conference in 2020 or 2021, purportedly due to the Covid-19

pandemic. (Tr. at pp. 131-32, 241; ECF No. 49-9, Henriquez

Decl., Ex. G.)

Mr. Henriquez did not have knowledge of the FDNY

Parties’ intentions to use, without his consent, his identical

MSOC name and acronym Marks for the planned 2023 event, and

diligently pursued his legal rights to notify the Dr. Isaacs and

the FDNY Parties to enforce his Marks when he became aware of

the 2023 event. (ECF Nos. 49, Henriquez Decl. ¶ 41; 51,

Fletcher Decl. ¶ 2; Tr. at 136-39.) Furthermore, as early as

2018, Mr. Henriquez repeatedly communicated to Dr. Isaacs and

FDNY legal counsel and officials his request that FDNY cease

using his MSOC Marks. (ECF No. 49, Henriquez Decl. 35; 49-9,

Ex. I at p. 2.)

On November 8, 2018, Mr. Henriquez sent a text to Dr.

Isaacs requesting that the FDNY Parties stop using his Marks.

(ECF No. 49-9, Henriquez Decl., Ex. I at p. 2.) On January 14,

2019, Mr. Henriquez sent an email to Dr. Isaacs and the FDNY

Foundation leadership “requesting to please unpublish any

references to the MSOC artwork/patches, MSOC, and MSOCC

branding.” (Id. at p. 3.) In this email, Mr. Henriquez made it

clear that his licensed MSOC materials could not be used or

shared publicly until concerns between the FDNY Parties and him

were clarified. (Id.) Despite the break down in trust, in

2019, Mr. Henriquez produced one last MSOC event with and at the

request of the FDNY, credibly testifying (Tr. at p. 131) that he

believed and hoped that any conflicts would be resolved. Mr.

Henriquez further testified at the hearing that Dr. Isaacs and

other FDNY officials repeatedly relayed to him that “there was a

misunderstanding” and pushed Mr. Henriquez to finish

coordinating the 2019 conference. (Id.) The Court also finds

that Mr. Henriquez believed in good faith that there would be an

amicable resolution between the parties. Though the FDNY

Parties used Mr. Henriquez’s MSOC Marks in 2019, the use was in

partnership with, and with the consent of, Mr. Henriquez, as Dr.

Isaacs and others asked Mr. Henriquez to help produce the 2019

MSOC at FDNY event. (ECF No. 49, Henriquez Decl. ¶ 36.)

After the 2019 MSOC event hosted by FDNY, however, Mr.

Henriquez reiterated his request to the FDNY Parties to cease

using his MSOC Marks. In a November 2019 email to FDNY attorney

Moira Archer, New York City Assistant Corporation Counsel Gerald

Singleton, and FDNY Deputy General Counsel Carol Moran, Mr.

Henriquez requested again that the FDNY “remove any references

to MSOC/Medical Special Operations in association with the FDNY”

and included attachments of Mr. Henriquez’s previous use of the

MSOC Marks elsewhere in the country, before the MSOC at FDNY

event in 2013. (ECF Nos. 49, Henriquez Decl. ¶ 37; 49 -9, Ex. I.

at p. 3.) Mr. Henriquez expressed his continuing hope to

resolve the dispute in a positive manner. (Id.)

FDNY did not host conferences in 2020 and 2021, so Mr.

Henriquez had no reason to believe that his MSOC name and

acronym Marks would be used again by the FDNY. (Tr. at pp. 131-

32, 241.) In fact, Dr. Issacs’s text messages in November and

December 2019 to Mr. Henriquez’s friend and fellow MSOC

organizer, Mr. Hernandez, stated that the MSOC event had “become

a nightmare and may have to be cancelled,” and that the FDNY

Foundation had no intention of offering the MSOC conferences on

its own, without the support provided by Mr. Henriquez and Mr.

Hernandez, who stated they “did not need the [FDNY Foundation]

for anything.” (ECF Nos. 50-2, Hernandez Decl., Ex. B; 50-3,

Hernandez Decl., Ex C.) Between 2019 and 2021, the FDNY and

city also “engaged in a variety of hostile conduct against Mr.

Henriquez,” which he alleges was retaliating. (ECF No. 49,

Henriquez Decl. ¶ 39.)

In April 2022, after Mr. Henriquez found out that the

FDNY would be hosting a MSOC branded event in May 2022, without

his permission, and after the FDNY had not hosted any MSOC

events for two years in 2020 and 2021, Mr. Henriquez promptly

sent a cease-and-desist letter dated May 10, 2022. (ECF No. 51-

1, Fletcher Decl., Ex. A.) There is scant evidence before the

Court regarding any FDNY hosted conference in 2022. It was then

that the FDNY Parties responded by commencing this instant

lawsuit against Mr. Henriquez on May 31, 2022, and counsel for

Mr. Henriquez commenced good-faith settlement efforts, including

providing numerous documents and proposing various avenues to

Mr. Singleton to amicably resolve the case. (ECF Nos. 1,

Compl.; 55-1, Fletcher Supp. Decl., Ex. B; 51-2, Fletcher Supp.

Decl., Ex. C.)

Beginning in June 2022, the parties corresponded by

email about their respective settlement communications and

positions and continued their discussions at least until early

July 2022. (ECF Nos. 55-1, Fletcher Supp. Decl., Ex. B; 55-2,

Fletcher Supp. Decl., Ex. C.) At a conference on September 7,

2022, to discuss the instant preliminary injunction motion, this

Court ordered the parties to engage in settlement discussions

before Magistrate Judge Kuo, who held a settlement conference on

October 26, 2022. (Minute Entry dated Sept. 9, 2022; Minute

Entry dated Oct. 26, 2022.) Thereafter, Mr. Henriquez requested

a pre-motion conference on November 1, 2022 for the instant

motion. (ECF No. 17, Henriquez Pre-motion Conf. Letter; 51,

Fletcher Decl. ¶¶ 5-6.] In October 2022, while the parties were

in ongoing settlement discussions, Mr. Henriquez discovered that

the FDNY Parties intended to host yet another MSOC-branded event

in 2023, using the MSOC Mark and Acronym without Mr. Henriquez’s

permission, and without the involvement of the original MSOC

coordinators, such as himself and Mr. Hernandez. (ECF No. 49,

Henriquez Decl. ¶ 41.) Mr. Henriquez and Mr. Hernandez are

planning a spring 2023 MSOC event that will directly compete

with the FDNY event and has already caused confusion with

registration, participants, speakers, and vendors. (Tr. at 136-

39; ECF No. 54, Henriquez Supp. Decl. ¶ 12.) On November 1,

2022, within weeks of discovering the planned 2023 event, Mr.

Henriquez requested a pre-motion conference for his motion for a

preliminary injunction. (ECF No. 17, Pre-Motion Conf. Letter.)

Mr. Henriquez’s diligent efforts to protect his MSOC

Mark and Acronym Mark are readily distinguishable from the facts

in Tough Traveler, Ltd. v. Outbound Prod., 60 F.3d 964, 968 (2d.

Cir. 1995), a case also cited by the FDNY Parties in their most

recent submission. (ECF No. 69, Singleton Feb. 22, 2023

Letter.) The plaintiff in Tough Traveler waited four months

after commencing suit before seeking a preliminary injunction.

Similarly, Citibank, N.A., 756 F.2d at 276, is also

distinguishable where the plaintiff did not seek a preliminary

injunction until nine months after it received notice of

defendant’s intentions to open a competing store, as is another

case cited by the FDNY Parties, BS Premium Holdings, LLC v.

Premium Sweets & Desserts Inc., No. 21-CV-4872(EK)(TAM), 2022 WL

604064, at *7 (E.D.N.Y. Feb. 28, 2022), where the plaintiff did

not bring suit until a year after discovering a competing

restaurant’s use of a trademark, or Fashion Week, Inc. v.

Council of Fashion Designers of Am., Inc., 16-cv-5079 (JKG),

2016 WL 4367990, at *3, where the plaintiff did not bring suit

for roughly eighteen months after becoming aware the trademark

was being used. By contrast, after Mr. Henriquez learned that

the FDNY Parties planned to host a 2023 MSOC-branded event, Mr.

Henriquez engaged in settlement efforts, filed his answer and

counterclaims on the dates ordered by the Court, and sought

leave to move for a preliminary injunction within a month of

learning of the plans for the 2023 conference.

Furthermore, Mr. Henriquez has presented evidence of

the harm that FDNY-hosted MSOC events will cause to his goodwill

and the MSOC brand (ECF No. 49, Henriquez Decl. ¶¶ 42-49), by

diligently pursuing his legal rights by sending communications

to FDNY officials to cease using his Marks, registering his MSOC

trademark with the USPTO, and engaging in what he believed to be

good-faith discussions with the FDNY parties. (Tr. at pp. 134-

35.) Courts have consistently held that when a delay is caused

by “ignorance of [opponent’s] competing product or [the

movant’s] good-faith efforts to investigate the alleged

infringement,” such delay is not fatal to a claim of irreparable

harm. Tough Traveler, 60 F.3d at 968; see also Marks Org., Inc.

v. Joles, 784 F. Supp. 2d 322, 333 (S.D.N.Y. 2011) (noting that

a “plaintiff’s making good-faith efforts to investigate” may

justify delays in seeking relief (citation and quotation marks

omitted)); Guru Teg Holding, Inc. v. Maharaja Farmers Mkt.,

Inc., No. 22-cv-1375, 2022 WL 3045038, at *4 (E.D.N.Y. Aug. 2,

2022)(“Because plaintiff has diligently and swiftly sought to

defend its legal rights from the time of [discovery of

infringement], there is no delay negating the presumption of

irreparable harm.”)

The Court notes the unique facts of this case, that it

was the FDNY Parties who escalated their dispute with Mr.

Henriquez by filing a federal court lawsuit, after Mr. Henriquez

asserted his rights and engaged in good-faith efforts to resolve

all issues, and placed Mr. Henriquez in a defensive position.

Accordingly, any purported “delays” in Mr. Henriquez pursuing a

preliminary injunction and counterclaims against the FDNY

Parties will not negate irreparable harm because Mr. Henriquez

acted promptly and in good faith. Because Mr. Henriquez has

ardently and swiftly sought to protect his legal rights since he

learned that the FDNY Parties intended to host a 2023 event

using Mr. Henriquez’s protected Marks, the Court finds that

there was no delay negating the presumption of irreparable harm

to Mr. Henriquez.

The Court notes that Assistant Corporation Counsel

Gerald Singleton has declared that there “were no meaningful

settlement discussions” and that “on June 30, 2022, Defendant’s

counsel sent me an email with formal settlement proposal, which

I promptly rejected the next day.” (ECF No. 52-2, Singleton

Decl. ¶ 10; (see also ECF No. 69, Singleton Feb. 22, 2023 Letter

(Mr. Singleton detailing the multiple times he “immediately

rejected” any settlement proposals.).) The FDNY parties also

elaborate in their opposition papers that the settlement

discussions were not “meaningful” because the FDNY Parties

lacked “any reason to believe [Mr. Henriquez] would consider a

change of name or cease using the MSOC Marks for the FDNY MSOC,

which has become a very prestigious event associated with the

FDNY and FDNY Foundation.” (ECF No. 52-1, FDNY Opp. at 4.) Mr.

Singleton does not dispute that in September 2022, the Court

ordered the parties to appear for a settlement conference before

Judge Kuo, which was held on October 26, 2022. (ECF No. 69,

Singleton Feb. 22, 2023 Letter at 2.)

The Court finds that the FDNY Parties’ outlook on what

would have constituted “meaningful” settlement discussions and

Mr. Singleton’s declaration evinces serious questions as to the

FDNY Parties’ good-faith negotiations, which the Court had

presumed when they appeared in late October before Judge Kuo for

a settlement conference. Mr. Henriquez has offered credible and

persuasive reasons and sufficient factual support for any delay

including “ignorance regarding defendant[s’] alleged

infringement, good-faith attempts to investigate that

infringement, and diligent pursuit of settlement negotiations.”

Goat Fashion Ltd. v. 1661, Inc., No. 19-cv-11045, 2020 WL

5758917, at *5–6 (S.D.N.Y. Sept. 28, 2020). The Court therefore

concludes that Mr. Henriquez’s claim of irreparable harm is not

rebutted by any delay.

2. Presumption of Harm

The Court, having found that delay does not negate Mr.

Henriquez’s presumption of harm, next considers the presumption

of harm itself, and finds that Mr. Henriquez will suffer

irreparable harm. Though the Court notes that Mr. Henriquez has

already “satisfied his burden of showing irreparable harm”,

Tough Traveler at 967, the Court will complete the analysis.

The Court finds, based on the evidence in the record, that Mr.

Henriquez will suffer “an injury that is neither remote nor

speculative, but actual and imminent and one that cannot be

remedied if a court waits until the end of trial to resolve the

harm.” Freedom Holdings, Inc. v. Spitzer, 408 F.3d 112, 114 (2d

Cir. 2005). Irreparable harm exists in a trademark case “when

the party seeking the injunction shows that it will lose control

over the reputation of its trademark pending trial,” because

reputation is “not calculable nor precisely compensable.” Power

Test Petroleum Distribs., Inc. v. Calcu Gas, Inc., 754 F.2d 91,

95 (2d Cir. 1985).

Mr. Henriquez has shown that he, and his MSOC name and

acronym, will be irreparably harmed because he will lose control

over the use of his Marks and the reputation of MSOC events, and

suffer the confusion and loss of attendees, vendors, trainers,

speakers, corporate sponsors, state and federal funding streams

for training events, and MSOC’s goodwill in the medical first

responder community. The FDNY Parties assert that for years the

MSOC events at FDNY and other MSOC events across the country

have concurrently taken place, and that this should demonstrate

there is no harm continuing to do so. But the Court finds this

argument unpersuasive, because as discussed at length above, all

of the FDNY-hosted MSOC events prior to the FDNY-hosted 2022 and

anticipated 2023 events were organized and developed by Mr.

Henriquez, who had control over the MSOC reputation nationally.

The FDNY Parties offer no evidence of any MSOC event

in which Mr. Henriquez did not participate or provide his

consent to use the MSOC Marks. The unauthorized use of the MSOC

Marks by the FDNY Parties, without the consent of Mr. Henriquez

or involvement of Mr. Henriquez and the original MSOC

coordinators, at the 2023 or further MSOC events would cause

loss and harm to the reputation of MSOC-branded events already

taking place. Mr. Henriquez, as the creator, original

organizer, and coordinator of the MSOC Mark and Acronym, has

devoted over a decade of his own time and funds to his vision

that has driven the success of the MSOC conferences thus far.

Any conference using the MSOC Marks without Mr. Henriquez’s

consent, input, and coordination, would be, if not lower in

quality, different in quality and will cause confusion. And,

for a protected mark like MSOC, any risk of diminished standards

would cause irreparable harm. Omega Importing Corp. v. Petri-

Kine Camera Co., 451 F.2d 1190, 1195 (2d Cir. 1971)(“Where there

is . . . such high probability of confusion, injury irreparable

in the sense that it may not be fully compensable in damages

almost inevitably follows . . . [I]f an infringer’s product is

of poor quality, or simply not worth the price, a more lasting

but not readily measurable injury may be inflicted on the

plaintiff's reputation in the market.”)

Mr. Henriquez also plans on hosting his MSOC event in

the spring of 2023 in New York and has provided evidence that

the FDNY Parties’ unauthorized use of the MSOC Marks has already

confused vendors and attendees. (ECF No. 49, Henriquez Decl. ¶¶

42-45.) Specifically, Mr. Henriquez has provided evidence of

instances in which the FDNY Parties’ unauthorized use of Mr.

Henriquez’s protected MSOC Marks has already caused, and will

continue to cause, confusion and the loss of control by Mr.

Henriquez of the MSOC Mark and Acronym and MSOC events in New

York. In October and November 2022, Mr. Henriquez received

inquiries from vendors who were confused about the relationship

between Mr. Henriquez’s MSOC event and the FDNY Parties’

unauthorized MSOC branded event. (Id. ¶ 43.) Mr. Henriquez

also explained that given the limited time and funds for these

identical events, attendees and instructors may likely have

capacity and resources to only participate in only one of the

conferences. (Id. ¶ 44.) Furthermore, the two conferences are

identical in their use of the MSOC Marks, but the conferences

will be providing different resources—with the FDNY event

lacking certain programs and federal accreditations that past

MSOC attendees have had opportunities to obtain and have come to

expect. (Id. ¶ 46; ECF No. 54, Henriquez Supp. Decl. ¶ 12.) At

this time, it is not possible to calculate how many emergency

medical professionals would be so misled, or whether Mr.

Henriquez and the original MSOC coordinators would be able to

re-establish their decades-long relationships with these

professionals.

The Court finds that the confusion created by the

FDNY’s unauthorized use of Mr. Henriquez’s Marks will cause harm

to the Medical Special Operations Conference name and acronym.

A mark risks becoming the victim of “genericide” when the public

appropriates the trademark term as a name for the product

itself, a process “set in motion by two, often concurrent

processes, namely, (i) the trademark owner's failure to police

the mark, resulting in widespread usage by competitors, and (ii)

the public’s inability to call the product by any other name

than the trademarked term.” Horizon Mills Corp. v. QVC, Inc.,

161 F. Supp. 2d 208, 214 (S.D.N.Y. 2001) (collecting cases).

Here, medical professionals all over the country will reasonably

expect the 2023 unauthorized FDNY-hosted MSOC event to be

identical to the MSOC conferences that Mr. Henriquez has

coordinated with the FDNY in the past, with the MSOC event that

Mr. Henriquez plans to host in 2023, and with the MSOC events

that Mr. Henriquez has hosted and will host in other states.

They will assume the same level of coordination, programming,

accreditation, and ethos of the conference (not-for-profit,

training, information gathering and sharing) that Mr. Henriquez

has sought to protect since 2011.

Even if emergency medical professionals understood

that the FDNY’s MSOC events no longer involved the original MSOC

coordinators, the FDNY Parties’ unauthorized use of Mr.

Henriquez’s MSOC Marks for their own conference will cause all

conferences to be similarly referred to as “MSOC” or “Medical

Special Operations Conferences,” weakening and genericizing Mr.

Henriquez’s MSOC mark and rendering the MSOC Marks ultimately

vulnerable to attack or deregistration as generic in the

fullness of time. See Abercrombie & Fitch Co. v. Hunting World,

Inc., 537 F.2d 4, 13-14 (2d Cir. 1976); see also Deere & Co. v.

MTD Prod., Inc., 41 F.3d 39, 42-43 (2d Cir. 1994) (discussing

trademark dilution). The damage caused by the erosion of the

Medical Special Operation Conference Marks by the FDNY Parties

is significant, ongoing, and difficult to quantify.

Moreover, the Court cannot look past the unique

circumstances of this trademark case, in which the FDNY Parties

requested assistance from and collaboration with Mr. Henriquez,

to host MSOC events, initially using the MSOC Marks with his

permission, but then becoming a direct competitor by

subsequently using, without Mr. Henriquez’s permission, the

identical MSOC name and acronym to market the FDNY Parties’ own

conference in 2022 and 2023. These facts are sufficient to

establish that Mr. Henriquez has lost or will continue to lose

control over the MSOC reputation in the marketplace. “One of

the most valuable and important protections afforded by the

Lanham Act is the right to control the quality of the goods

manufactured and sold under the holder's trademark.” El Greco

Leather Prods. Co. v. Shoe World, Inc., 806 F.2d 392, 395 (2d

Cir. 1986). Indeed, through their unauthorized use of the MSOC

Marks, the FDNY Parties have become a competitor by entering the

market of longstanding emergency medical professionals

conferences organized nationally by Mr. Henriquez, and it is

realistic to anticipate that Mr. Henriquez and other

coordinators of the original Medical Special Operations

Conference brand will lose considerable control over, and good

will from the national MSOC events. Mr. Henriquez’s loss of

control over MSOC’s reputation is compounded by the FDNY

Parties’ apparent effort to misappropriate his MSOC Marks by

arguing that the FDNY trademark and FDNY brand name appear along

with the MSOC Marks. Mr. Henriquez has permitted the MSOC Marks

to appear with dozens of other fire departments across the

nation, in locales where Mr. Henriquez and the MSOC community

have created, organized, and produced MSOC events, but those

locales, unlike the FDNY Parties, have not attempted to assert

rights to Mr. Henriquez’s MSOC Marks. (ECF No. 52-1, FDNY Opp.

at p. 12)(referring to the “prominent use of the famous FDNY

trademarks in conjunction with all uses of the MSOC Marks for

the FDNY MSOC.”) This case presents a specific instance of

irreparable harm not redressable by damages, or, at the very

least, harm not reparable except by equitable injunctive relief

against the FDNY Parties.

D. Balance of the Equities and the Public Interest

Finally, the Court finds that the balance of the

equities and the public interest weigh in favor of granting Mr.

Henriquez’s motion for a preliminary injunction. In determining

whether the balance of the equities tips in Mr. Henriquez’s

favor and whether granting the preliminary injunction would be

in the public interest, the Court “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 (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.

The FDNY Parties have repeatedly asserted that its

trademarked FDNY logo and FDNY name provided

This text is long and has been trimmed here. Open the source document for the complete record.