City of New York v. Henriquez

23-325-cv
City of New York v. Henriquez
In the
United States Court of Appeals
For the Second Circuit
________
AUGUST TERM 2023
ARGUED: J ANUARY 19, 2024
D ECIDED: APRIL 16, 2024
No. 23-325-cv
THE C ITY OF N EW YORK , by and through the FDNY, and FDNY
FOUNDATION, INC.,
Plaintiffs-Counter Defendants-Appellants,
v.
J UAN H ENRIQUEZ ,
Defendant-Counter Claimant-Appellee,
MEDICAL S PECIAL O PERATIONS C OMMUNITY , INC.,
Defendant.
________
Appeal from the United States District Court
for the Eastern District of New York.
________
Before: L IVINGSTON, Chief Judge, AND WALKER AND C ARNEY , Circuit
Judges.
________

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2 No. 23-325-cv
To first responders, “medical special operations” has a special
meaning: providing care in extraordinary circumstances, such as
combat zones or urban disasters. It is only natural that a meeting for
those working in this field might be called a “Medical Special
Operations Conference.” And, indeed, Appellee Juan Henriquez
convened several meetings under that name. But the most natural
name is often not the one that receives the most protection under our
trademark law. We conclude that “Medical Special Operations
Conference” does nothing more than describe what Henriquez’s
meetings involved. The district court (Matsumoto, J.) thought
otherwise and enjoined Appellants the City of New York and the
FDNY Foundation from calling their own events “Medical Special
Operations Conferences.” That judgment rested upon a
misunderstanding of how we ascertain how much protection a
trademark warrants. We therefore VACATE the preliminary
injunction and REMAND for further proceedings.
________
MACKENZIE FILLOW (Richard Dearing, Devin
Slack, on the brief), for Sylvia O. Hinds-Radix,
Corporation Counsel for the City of New York,
New York, NY, for Plaintiffs-Counter Defendants-
Appellants the City of New York, by and through the
FDNY, and FDNY Foundation.
J ORDAN FLETCHER , Fletcher Law, PLLC, New York,
NY, for Defendant-Counter Claimant-Appellee Juan
Henriquez.
________
J OHN M. WALKER , J R ., Circuit Judge:
To first responders, “medical special operations” has a special
meaning: providing care in extraordinary circumstances, such as

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3 No. 23-325-cv
combat zones or urban disasters. It is only natural that a meeting for
those working in this field might be called a “Medical Special
Operations Conference.” And, indeed, Appellee Juan Henriquez
convened several meetings under that name. But the most natural
name is often not the one that receives the most protection under our
trademark law. We conclude that “Medical Special Operations
Conference” does nothing more than describe what Henriquez’s
meetings involved. The district court (Matsumoto, J.) thought
otherwise and enjoined Appellants the City of New York and the
FDNY Foundation from calling their own events “Medical Special
Operations Conference.” That judgment rested upon a
misunderstanding of how we ascertain how much protection a
trademark warrants. We therefore VACATE the preliminary
injunction and REMAND for further proceedings.
BACKGROUND1
Juan Henriquez is a rescue paramedic with the Fire Department
of New York (“FDNY”). Since 2007, he has been under the FDNY’s
“special operations command.” App’x 659–60.
In 2009 or 2010, Henriquez attended a conference organized by
the Special Operations Medical Association (“SOMA”), a group
dedicated to emergency medical response in the military. Henriquez
was impressed by SOMA’s offerings—so much so that he and some
colleagues began planning their own conferences, which he indicated
were “based off of” the SOMA meetings, but geared toward civilian
emergency responders. App’x 688.
Henriquez did not need to look far for a name. He called his
gatherings “Medical Special Operations Conferences,” sometimes
1 Unless otherwise noted, the facts set forth here are drawn from the
record developed at the preliminary-injunction stage and are undisputed.

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4 No. 23-325-cv
using the acronym “MSOC.”
In 2011 and 2012, Henriquez and his colleagues organized two
MSOCs, one in Ohio and one in Georgia.
Early on, Henriquez sought to collaborate with his employer.
He discussed his work with Dr. Doug Isaacs, who was then the
FDNY’s Assistant Medical Director. Dr. Isaacs suggested the FDNY
and Henriquez might partner to host MSOCs in New York.
This partnership soon proved productive. For six years starting
in 2013, Henriquez helped organize annual MSOCs in New York.
These were called “MSOC at FDNY,” “FDNY MSOC [year],” or
“MSOC [year] at FDNY.” City of New York by and through FDNY v.
Henriquez, No. 22-CV-3190, 2023 WL 2186340, at *4 (E.D.N.Y. Feb. 23,
2023); App’x 98, 104, 106, 108, 127, 142, 145, 146–48. During that six-
year period, Henriquez continued convening MSOCs outside New
York, with no FDNY involvement. Henriquez, 2023 WL 2186340, at *6.
But things started to go sideways. In late 2017, Henriquez came
to believe that the FDNY was misusing its MSOC funds. The next
year, he began asking the FDNY to remove any references to MSOC
from its website and printed media. And in 2019, Henriquez
participated in his last FDNY MSOC.
Seeing trouble, Henriquez turned to trademark law. The “core
federal trademark statute” is the Lanham Act. Jack Daniel's Properties,
Inc. v. VIP Products LLC, 599 U.S. 140, 145 (2023). That statute
“establishes a system of federal trademark registration” under the
auspices of the U.S. Patent and Trademark Office (“P.T.O.”). U.S. Pat.
& Trademark Off. v. Booking.com B. V., 140 S. Ct. 2298, 2302 (2020).
While registration is not strictly necessary to receive judicial
protection, it “gives trademark owners valuable benefits” against
potential infringement. Iancu v. Brunetti, 588 U.S. 388, 391 (2019).

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5 No. 23-325-cv
In late 2019, Henriquez asked the P.T.O. to register the mark
“Medical Special Operations Conference” under his name. The P.T.O.
rejected his application because, in its view, “Medical Special
Operations Conference” simply described the events Henriquez
organized. Under the Lanham Act, “merely descriptive” marks
usually cannot be registered. U.S.P.T.O., Application No. 88693056,
Office Action Outgoing (Feb. 26, 2020) at 2 (citing 15 U.S.C. §
1052(e)(1)); App’x 756–57.
That rejection was not the end of the matter. Section 2(f) of the
Lanham Act on occasion allows registration even of “descriptive”
marks. See 15 U.S.C. §§ 1052(e), (f). To take advantage of this
provision, an applicant must attest he has been using the mark on a
“substantially exclusive and continuous” basis for the five years
preceding his application. See id. In April 2020, Henriquez amended
his application to do just that. See U.S.P.T.O., Application No.
88693056, Response to Office Action Outgoing (Apr. 20, 2020). This
time, he was successful: in August 2020, the P.T.O. registered
“Medical Special Operations Conference” under Henriquez’s name.
The FDNY, too, claimed rights over “Medical Special
Operations Conference.” First, in 2019, the FDNY asked Henriquez
to stop using that name for his events. Then, in May 2022, following
a two-year, pandemic-induced hiatus, the FDNY hosted an MSOC
without Henriquez’s involvement.
Eventually, the FDNY brought this action in which, among
other things, it sought cancellation of Henriquez’s trademark. See
Henriquez, 2023 WL 2186340, at *8; App’x 19–38. Henriquez
counterclaimed, alleging, in part, infringement by the FDNY.
Henriquez sought a preliminary injunction to bar the FDNY
from using the marks. Following a two-day evidentiary hearing, the

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6 No. 23-325-cv
district court granted Henriquez’s request. Thereafter, it broadened
the injunction to prohibit the FDNY from using any sequence of
“medical,” “special,” and “operations” in its branding. Sp. App’x 96.
This appeal followed.2
DISCUSSION
The FDNY argues that the district court abused its discretion
by enjoining its use of the marks. Alternatively, and more modestly,
it contends that the revised injunction is overbroad.
We agree with the FDNY on its first argument and therefore
need not reach its second. The district court abused its discretion by
granting Henriquez’s motion, even before it broadened the
injunction. The district court made several errors, which all implicate
the same issue: whether “Medical Special Operations Conference” is
a suggestive mark, as the district court found, or a descriptive mark,
as the P.T.O. found. We agree with the P.T.O. Because the mark is
descriptive, it merits little protection under federal trademark law.
I. Preliminary Injunction Standard.
To get a preliminary injunction in the trademark context,
Henriquez must show three things: (1) he will suffer irreparable
harm; (2) he is likely to succeed on the merits; and (3) an injunction
would serve the public interest. RiseandShine Corp. v. PepsiCo, Inc., 41
F.4th 112, 119 (2d Cir. 2022). Only the second factor—Henriquez’s
2 On April 16, 2023, after the FDNY filed its notice of appeal, the district court
denied the FDNY’s motion for reconsideration under Fed. R. Civ. P. 59(e) and
60(b). See City of N.Y. by and through FDNY v. Henriquez, No. 22-CV-3190, 2023 WL
4490287 (E.D.N.Y. Apr. 16, 2023).

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7 No. 23-325-cv
likelihood of success on the merits—is at issue here.3
II. General Lanham Act Principles.
“[A] mark tells the public who is responsible for a product” or,
in this case, for a conference. Jack Daniel's, 599 U.S. at 146. As Justice
Kagan pointed out in that case, “whatever else it may do, a trademark
is not a trademark unless it identifies a product's source (this is a
Nike) and distinguishes that source from others (not any other
sneaker brand).” Id. Protecting these distinctions, for the sake of
consumers and producers alike, is trademark law’s “principal
purpose.” Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings,
Inc., 696 F.3d 206, 215 (2d Cir. 2012).
Confusion as to source is thus our central concern here. We
assume in this appeal that Henriquez possesses “Medical Special
Operations Conference” as a “valid” trademark that, as a threshold
matter, is “entitled to protection.” Tiffany & Co. v. Costco Wholesale
Corp., 971 F.3d 74, 84 (2d Cir. 2020). But to prevail, he must further
show that the FDNY’s actions are “likely to cause confusion with that
mark.” Id. (internal quotation marks omitted and alteration
incorporated).
We assess the likelihood of confusion within the framework of
the familiar “Polaroid factors” outlined in Polaroid Corp. v. Polarad
Elecs. Corp., 287 F.2d 492 (2d Cir. 1961). There, Judge Friendly
identified eight considerations as useful in determining whether
3 Instead of showing that he is likely to succeed on the merits, Henriquez could
show that there are “serious questions” on the merits and that the balance of
hardships is decidedly heavier for him. RiseandShine, 41 F.4th at 119. But that
theory has not been argued in this case.

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8 No. 23-325-cv
alleged infringement will cause confusion as to products’ sources.4
Only one of these factors is at issue here: the strength of the mark.
But that factor is important indeed. “Strength” refers to a
mark’s “tendency to uniquely identify the source of the product.”
Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 384 (2d Cir. 2005).
Because a strong mark indicates a product’s source, imitation of that
mark—even if only in meaning, rather than in appearance or sound—
is especially likely to cause confusion. Consumers might well confuse
“Tornado” wire fencing with “Cyclone” wire fencing. See Hancock v.
Am. Steel & Wire Co. of N.J., 203 F.2d 737, 740, 741 (C.C.P.A.1953); 3
McCarthy on Trademarks and Unfair Competition § 23:26 (5th ed.
2023). But they might not think “Arthriticare” and “ArthriCare”
uniquely identify the same company’s arthritis medication, because
the former does not uniquely identify any company’s medication in
the first place. Bernard v. Com. Drug Co., 964 F.2d 1338, 1341 (2d Cir.
1992). For this reason, “[w]eak marks” generally merit “extremely
narrow” protection. RiseandShine, 41 F.4th at 124.
III. Standard of Review.
We review the district court’s decision to grant a preliminary
injunction for abuse of discretion. Zervos v. Verizon N.Y., Inc., 252 F.3d
163, 167 (2d Cir. 2001). A district court abuses its discretion when (1)
4 These are: (1) the strength of the mark; (2) the similarity between the two
marks; (3) the proximity of the products and their competitiveness with one
another; (4) the likelihood the prior owner may “bridge the gap” in the markets
for their products; (5) the evidence of actual consumer confusion; (6) the
defendant's good faith in adopting its imitative mark; (7) the quality of the
defendant's product compared with the plaintiff's product; and (8) the
sophistication of the buyers. Vans, Inc. v. MSCHF Prod. Studio, Inc., 88 F.4th 125,
136 (2d Cir. 2023) (per curiam). “Bridging the gap” may seem the most mysterious.
It “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. v. Bacardi & Co. Ltd., 412 F.3d 373, 387 (2d Cir. 2005).

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9 No. 23-325-cv
its decision rests upon an error of law or a clearly erroneous factual
finding, or (2) its decision otherwise cannot be located within the
range of permissible decisions. Id. at 169. Relevant here, a decision
“rests on an error of law” either because it applies the wrong legal
principle, id., or because it incorrectly applies the right legal principle,
see RiseandShine, 41 F.4th at 119.
We examine the district court’s legal judgments de novo, in no
way constrained by the district court’s determination. Whether
Henriquez has shown that the FDNY’s conduct is likely to cause
confusion with his trademarks is a legal question. Souza v. Exotic
Island Enters., Inc., 68 F.4th 99, 109 (2d Cir. 2023). So is the strength of
Henriquez’s marks. Tiffany & Co., 971 F.3d at 86 n.7. Thus, we
examine both issues de novo.
IV. The District Court Abused Its Discretion by Issuing a
Preliminary Injunction Against the FDNY.
The district court overestimated the trademark strength of
“Medical Special Operations Conference,” and this legal error was
central to its decision to award Henriquez a preliminary injunction.
Therefore, issuing the injunction was an abuse of discretion.
a. Trademark Strength Principles.
Trademarks can be strong—that is, they can “uniquely identify
the source of the product”—in two ways. Bacardi & Co., 412 F.3d at
384.
First, although less important in this case, marks can
“acquire[]” strength. Virgin Enters. Ltd. v. Nawab, 335 F.3d 141, 147 (2d
Cir. 2003). That occurs when marks become recognizable through
commerce. See id. For example, “American Airlines” would not have
been distinctive when the company started doing business. Now, the

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10 No. 23-325-cv
mark connotes a particular enterprise. See 2 McCarthy on Trademarks
and Unfair Competition § 11:80.
Second, and most important here, is inherent strength. Marks
are inherently strong to the extent they are arbitrarily linked to their
products. See id. For example, using “Black Ice” as the name for
automobile air fresheners is highly arbitrary. See Car-Freshner Corp. v.
Am. Covers, LLC, 980 F.3d 314, 329 (2d Cir. 2020). Using “Arthriticare”
for an arthritis treatment, far less so. Bernard, 964 F.2d at 1341.
It is helpful to understand that trademark law designates four
categories of inherent strength. From weakest to strongest, these are:
(1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful.
RiseandShine, 41 F.4th at 120. These categories help determine
whether a mark is “entitled to protection” in the first place. Tiffany &
Co., 971 F.3d at 84 (internal quotation marks omitted).
1. Merely generic marks (such as “Honey Brown Ale,” for a
brown ale brewed with honey) can receive no trademark
protection. See Genesee Brewing Co., Inc. v. Stroh Brewing Co.,
124 F.3d 137, 148 (2d Cir. 1997).
2. Descriptive marks (such as “Arthriticare,” for an arthritis
treatment) can receive trademark protection only if they
acquire enough public recognition as identifying the source
of the underlying products. See Bernard, 964 F.2d at 1340.
We call the amount of recognition necessary for protection
“secondary meaning.” Id.
3. Suggestive marks (such as “Tide” for laundry detergent) can
receive trademark protection absent proof of secondary
meaning. Booking.com, 140 S. Ct. at 2302.

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11 No. 23-325-cv
4. Arbitrary marks (such as “Black Ice” for air fresheners), see
Car-Freshner Corp., 980 F.3d at 329, and fanciful marks
coined only for trademark use (such as “Exxon” for oil and
gasoline products), see Exxon Corp. v. XOIL Energy Res., Inc.,
552 F. Supp. 1008, 1014 (S.D.N.Y. 1981), likewise can be valid
trademarks without proof of secondary meaning.
In this case, these categories also serve a different function: they
guide our inquiry into the likelihood of confusion under Polaroid.
b. The District Court Overestimated the Strength of
Henriquez’s Marks.
The district court concluded that Henriquez’s marks—
“Medical Special Operations Conference” and “MSOC”—were “at
least strongly suggestive.” Henriquez, 2023 WL 2186340, at *16. This
was erroneous when considering the marks in the proper context.
“Medical Special Operations Conference” is only inherently
descriptive. For the same reasons, “MSOC” is also descriptive.
The district court’s classification rested upon three missteps.
First, the district court overlooked Henriquez’s own concessions that
the marks are descriptive. Second, it misunderstood the P.T.O.’s
judgment that the marks are descriptive. And third—and most
importantly—it evaluated the marks’ inherent strength without
regard to the relevant market context. We consider each point in turn.
i. The District Court Did Not Consider
Henriquez’s Concessions that the Marks Are
Descriptive.
Henriquez twice relied on the notion that that the marks are
descriptive. The district court should have considered these
statements as concessions when determining the marks’ strength.

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12 No. 23-325-cv
What parties say about their marks matters. When a trademark
holder makes one argument to the P.T.O. and then another to a court,
the court has good reason to be skeptical. See 6 McCarthy on
Trademarks § 32:111. At the very least, any inconsistency reveals that
there is more than one way to view the issue. Moreover, “[i]n our
adversarial system,” we expect courts to respond to parties’
arguments—not just to develop their own views. United States v.
Sineneng-Smith, 590 U.S. 371, 375 (2020).
Henriquez plainly viewed the marks as descriptive. Henriquez
sought registration of “Medical Special Operations Conference”
under § 2(f) of the Lanham Act, which permits registration of marks
that have acquired secondary meaning. See Henriquez, 2023 WL
2186340, at *7; 15 U.S.C. § 1052(f); 2 McCarthy on Trademarks and
Unfair Competition § 12:58. Similarly, before the district court,
Henriquez argued that the mark was “valid based on its acquired
secondary meaning.” App’x 228. As we noted above, only
descriptive marks require secondary meaning to be valid. See
Booking.com, 140 S. Ct. at 2302. Thus, by relying upon secondary
meaning, Henriquez effectively conceded that the marks are
descriptive.
The district court should have recognized these concessions as
relevant; instead, it overlooked them. To be sure, this mistake alone
might not require vacatur. But the district court’s failure to recognize
that Henriquez’s own statements “cast doubt” upon its holding that
the marks are suggestive was legal error nonetheless. 6 McCarthy on
Trademarks § 32:111.
The FDNY urges us to adopt the harsher rule of prosecution
estoppel. It argues that we should hold Henriquez to his concessions
and presume that the marks are only descriptive. This appears to be
the practice of one of our sister circuits. See Sturgis Motorcycle Rally,

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13 No. 23-325-cv
Inc. v. Rushmore Photo & Gifts, Inc., 908 F.3d 313, 322 (8th Cir. 2018).
But cf. Boston Duck Tours, LP v. Super Duck Tours, LLC, 531 F.3d 1, 22–
23 (1st Cir. 2008).
We decline to adopt the FDNY’s proposal. The marks’ inherent
strength is a legal question. Tiffany & Co., 971 F.3d at 86 n.7. We must
“rely on the parties to frame the issues” litigated. Sineneng-Smith, 590
U.S. at 375 (internal quotation marks omitted). But we also “retain[]
the independent power to identify and apply the proper construction
of governing law.” Kamen v. Kemper Fin. Servs., Inc., 500 U.S. 90, 99
(1991). We therefore conclude that Henriquez’s concessions are not
necessarily dispositive. Rather, they are “simply . . . factor[s] in the
evidentiary mix.” Boston Duck Tours, 531 F.3d at 22–23.
ii. The District Court Did Not Consider the P.T.O.’s
Determination that the Marks are Descriptive.
Henriquez was not the only one to classify the marks as
descriptive; the P.T.O. did so too. The district court should have
considered the P.T.O.’s judgment in reaching its own. That the
district court failed to do so reflected a misunderstanding of the
P.T.O.’s decision.
The P.T.O.’s assessment of a mark’s inherent strength typically
informs our analysis. The P.T.O., as a specialized agency, “has
developed expertise in trademarks.” Cross Com. Media, Inc. v.
Collective, Inc., 841 F.3d 155, 165 (2d Cir. 2016). Its “body of experience
and informed judgment” generally give its determinations on the
issue of inherent strength the “power to persuade,” though not the
“power to control.” Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944).
We therefore accord “great weight” to the P.T.O.’s conclusions and

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14 No. 23-325-cv
depart from them only for “compelling” reasons. Cross Com. Media,
841 F.3d at 165 (internal quotation marks omitted).
The district court correctly stated that “[r]egistration by the
[P.T.O.] without proof of secondary meaning creates the presumption
that the mark is more than merely descriptive, and, thus, that the
mark is inherently distinctive.” Henriquez, 2023 WL 2186340, at *16
(quoting Lane Cap. Mgmt., Inc. v. Lane Cap. Mgmt., Inc., 192 F.3d 337,
345 (2d Cir. 1999)). But that principle does not apply here.
Following Henriquez’s initial application, the P.T.O. expressly
determined that “Medical Special Operations Conference” “merely
describe[d]” the events that Henriquez organized. U.S.P.T.O.,
Application No. 88693056, Office Action Outgoing (Feb. 26, 2020) at
2. Subsequently, as we have noted, Henriquez offered evidence of
secondary meaning under § 2(f) of the Lanham Act. See U.S.P.T.O.,
Application No. 88693056, Response to Office Action Outgoing (Apr.
20, 2020). This evidence permitted the P.T.O. to register the mark but
did not alter the P.T.O.’s classification of the mark as descriptive.
Thus, the proper presumption, as Henriquez’s counsel acknowledged
at oral argument, was that the marks are inherently descriptive but
had acquired secondary meaning that permitted registration. See Tr.
of Oral Arg. 7:13–20.
In sum, the district court misunderstood the P.T.O.’s
determination. Consequently, it did not give the P.T.O.’s conclusion
that the marks are inherently descriptive any weight, let alone “great
weight.” Cross Com. Media, 841 F.3d at 165 (internal quotation marks
omitted). This was legal error.
iii. We Assess Marks for Their Distinctiveness
Among Players Within the Relevant Market and,

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15 No. 23-325-cv
in that Context, Henriquez’s Marks Are
Inherently Descriptive.
We principally determine a mark’s strength by reference to “the
market in which the mark is used.” Morningside Grp. Ltd. v.
Morningside Cap. Grp., L.L.C., 182 F.3d 133, 139 (2d Cir. 1999). We have
noted that suggestive marks, unlike descriptive ones, “sometimes
requir[e] imagination” to understand. RiseandShine, 41 F.4th at 121.
For example, “Tide” evokes a cleansing wave, but does not directly
describe laundry detergent. See Booking.com, 140 S. Ct. at 2302. But
what might require “imagination” for market outsiders might be
familiar to insiders. When this is so, a mark may be descriptive, even
if its meaning is obscure to those beyond its intended audience.
The district court reasoned that “[t]he words [‘Medical Special
Operations Conference’] literally suggest a special medical operation
or surgery, rather than the distinct meaning that Mr. Henriquez has
provided.” Henriquez, 2023 WL 2186340, at *17. Many people—and
indeed, many judges—might well think so, but such perceptions do
not determine our inquiry. Rather, we must consider what “medical
special operations” signified to those to whom the marks were
addressed: prospective MSOC attendees.
Both Henriquez and the P.T.O. recognized that this audience
considered the marks descriptive. Henriquez attested that he sought
“to bring military-level special operations medical skills and training to
the wider first responder community via a series of conferences.”
App’x 64 (emphasis added). Similarly, the P.T.O. described MSOCs
as “conference[s] for individuals involved in medical special
operations.” U.S.P.T.O., Application No. 88693056, Office Action
Outgoing (Feb. 26, 2020) at 2 (emphasis added). These statements
were consistent with hearing testimony indicating that fire and police

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16 No. 23-325-cv
departments across the country (including the FDNY) use the term
“special operations.” App’x 660, 687, 891–92.
By all accounts, then, the events Henriquez organized were
precisely what the mark “Medical Special Operations Conference”
promised. When a mark corresponds so closely to the product it
designates, we cannot hold it to be suggestive. The same is true for
the acronym “MSOC.” “Recognizable abbreviations” for inherently
descriptive (or generic) marks are usually themselves inherently
descriptive (or generic). 1 McCarthy on Trademarks § 7:11. There is
no reason here to depart from this general rule.
We therefore part ways from the district court and hold that the
marks are inherently descriptive.
V. The District Court’s Errors Rendered Its Issuance of the
Preliminary Injunction an Abuse of Discretion.
The district court’s analysis of the likelihood of confusion
under Polaroid did not end with the strength of the mark. It also held
that every other Polaroid factor favored Henriquez. See Henriquez,
2023 WL 2186340, at *18–19 (similarity), *19–20 (proximity), *20
(“bridging the gap”), *20–22 (actual confusion), *22 (good faith), *22
(quality), *22–23 (consumer sophistication).
We “generally do not treat any one Polaroid factor as dispositive
in the likelihood of confusion inquiry.” RiseandShine, 41 F.4th at 124
(quoting Nabisco, Inc. v. Warner-Lambert Co., 220 F.3d 43, 46 (2d Cir.
2000)). So, it is possible for even weaker marks to receive some
protection.
Still, as this case illustrates, a mark’s strength is especially
important. See id. at 119. “Weak marks” merit only “extremely
narrow” protection unless a combination of other Polaroid factors

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17 No. 23-325-cv
“strongly” indicates a likelihood of confusion. Id. at 124 (internal
quotation marks omitted). Moreover, even these other factors
sometimes depend upon the mark’s strength. See, e.g., Brennan’s, Inc.
v. Brennan’s Rest., L.L.C., 360 F.3d 125, 135 (2d Cir. 2004). We are
therefore reluctant to affirm any preliminary injunction founded
upon an erroneous strength analysis.
Significantly, Henriquez does not rely upon Polaroid factors
other than the strength of the mark to defend the injunction. Instead,
he contends that, even if the marks have little “inherent
distinctiveness,” they have sufficient “acquired distinctiveness” to
warrant protection against the FDNY’s alleged infringement. Souza,
68 F.4th at 111; see Henriquez Br. at 32–34; Tr. of Oral Arg. 14:25–15:2.
But, as Henriquez also recognizes, this argument turns on when and
how the marks developed secondary meaning. We discuss this issue
further below, in Part VI.
Unlike the district court, we take the same view as Henriquez:
the marks’ inherent strength dominates the Polaroid analysis here.
“An abuse of discretion may be found when the district court relies
on clearly erroneous findings of fact or on an error of law in issuing
the injunction.” Vans, Inc. v. MSCHF Prod. Studio, Inc., 88 F.4th 125,
133 (2d Cir. 2023) (per curiam) (quoting Cliffs Notes, Inc. v. Bantam
Doubleday Dell Pub. Group, Inc., 886 F.2d 490, 493 (2d Cir. 1989)). Of
course, we are free to affirm on any ground supported by the record.
See, e.g., NXIVM Corp. v. Ross Inst., 364 F.3d 471, 476 (2d Cir. 2004).
But mindful of “the principle of party presentation,” we decline to

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18 No. 23-325-cv
conduct a Polaroid analysis that neither party has requested. Sineneng-
Smith, 590 U.S. at 375.
***
To sum up: the district court erred in assessing the likelihood
of confusion. This led to an error in determining Henriquez’s
likelihood of success on the merits. These mistakes rendered issuance
of a preliminary injunction an abuse of discretion. We therefore must
vacate the preliminary injunction and leave it for the district judge to
conduct the appropriate analysis based on our view of the marks’
inherent strength.
VI. We Leave Henriquez’s Licensee-Estoppel Theory for the
District Court to Assess in the First Instance.
Finally, Henriquez offers a second argument, which the district
court did not reach: his “licensee-estoppel” theory.
His argument runs as follows. Henriquez helped organize the
FDNY’s MSOCs from 2013 to 2019. During that time, the FDNY could
rightfully use the marks only because it had implicitly received his
permission to do so. By accepting this implied license, the FDNY
recognized that its use of the marks would benefit Henriquez as a
rights-holder. In 2022, Henriquez and the FDNY became competitors.
But by then, Henriquez argues, the marks had gained secondary
meaning: they had come to uniquely designate his events within the
relevant market. Thus, even if the marks are descriptive—as we have
now determined—Henriquez holds rights over them. And the
FDNY, having previously recognized his rights, cannot now change
course; it is estopped. See Henriquez Br. 34–46.
This licensee-estoppel theory raises various questions that we
are ill-positioned to assess in the first instance. Rather, they are best

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19 No. 23-325-cv
left for now in the hands of the district court. We therefore express
no view as to the theory’s merits.
We foresee several issues that the district court may need to
address if Henriquez renews this theory. They include:
1. Whether a party who uses a mark subject to an implied
license from the mark holder is estopped from contesting
the mark’s validity.
2. Whether any licensor may obtain trademark rights over a
descriptive mark when secondary meaning is acquired, in
whole or in part, through the mark’s use by a licensee.
3. Whether any FDNY official with whom Henriquez worked
had actual or apparent authority to enter licensing contracts
concerning the FDNY’s use of the marks.
4. Whether any FDNY official entered a licensing contract with
Henriquez concerning the FDNY’s use of the marks.
5. Whether any such contract subjected the FDNY’s use of the
marks to a license from Henriquez.
6. Whether the marks acquired secondary meaning through
the FDNY’s use.
Even if the district court determines that the FDNY did not use
the marks pursuant to a license from Henriquez, it may nonetheless
need to address whether and when the marks acquired secondary
meaning. We entrust consideration of these matters and any others
that might arise on remand to the able district court.

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20 No. 23-325-cv
CONCLUSION
We VACATE the preliminary injunction and REMAND for
further proceedings consistent with this opinion.

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