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Elisabeth (Bette) emphasizes strategically addressing her clients’ current issues and identifying future ones before they become a problem. She practices in Merchant &amp; Gould’s litigation practice group. Working out of the firm’s Minneapolis office, Bette’s practice centers around patent litigation and appellate work.

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Bette approaches each client with the goal of creating and pursuing smart strategies to protect and further the client’s intellectual property portfolios. With each new issue or challenge that arises, she looks at every angle before counseling on the best available solutions.

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For Bette, it is never just about resolving the most pressing issue. Instead, it is about taking a long-term approach to litigation; she ensures the steps she takes today supports her clients’ future goals and needs.&nbsp;

Additionally, Bette has a keen ability to quickly identify the right answers for her clients’ many questions. This skill proves invaluable to clients as they continue to create and build their IP portfolios and their businesses.

Bette began her career not as a lawyer, but as a biologist and environmental chemist. She sought a biology degree from the University of Puget Sound in Tacoma, Washington, before pursuing an M.S. in Environmental Chemistry from James Cook University in Australia. Her educational pursuits led her quickly into the field of medical device manufacturing.

After working for Beckman Coulter, a leading research and discovery firm, Bette wanted to take her career further while also pushing herself to new heights and challenges. This led her to the University of Chicago Law School, where she combined her passions for science, logic, and educational excellence.

After law school, Bette clerked for the Honorable Joan H. Lefkow of the U.S. District Court for the Northern District of Illinois. There, she honed her writing and analytical skills and gained practical knowledge in the ins and outs of litigation in a federal district court.

Bette has always led an active lifestyle, ranging from participating in crew to playing intramural soccer and volleyball in college and beyond to now being a certified rescue (SCUBA) diver. She also loves to travel, which she does with her husband and stepdaughter. A true Minnesotan, Bette loves to spend time at the lake with her family.

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The University of Chicago Law School, J.D., 2016, 

MSc Environmental Chemistry, 2009

University of Puget Sound, B.S. Biology, 2004

Elisabeth Bette Muirhead, Intellectual Property Attorney

she / her / hers

Medical Devices

Consumer Products

Food & Beverage

Manufacturing

Minneapolis

Merchant &amp; Gould was honored by the Children’s Law Center of Minnesota (CLC) with the Distinguished Service Award at its 26th Anniversary Virtual Benefit on Oct. 7.



The Distinguished Service Award is presented annually to one law firm or corporation whose work on behalf of CLC’s clients exemplifies the commitment and dedication to pro bono representation that is the foundation of CLC’s mission. &nbsp;According to Amanda Finman-Palmer, Development Director, and the CLC team, Merchant &amp; Gould was especially recognized for its “dedication and commitment to representing children and youth in foster care,” as well as the firm’s “immense impact on Minnesota children in need.”



Over the years, Merchant &amp; Gould attorneys and staff have engaged with CLC in many ways, including CLC board and committee leadership; philanthropy by employees and volunteers; sponsorship support for CLC’s Annual benefit; in-kind donations for CLC clients and operation; and hundreds of pro bono hours representing children and youth in foster care.



Minneapolis partner Tony Zeuli, CLC board member, accepted the Distinguished Service Award on behalf of Merchant &amp; Gould in a video while applauding the firm’s robust team of pro bono volunteers, including Karen Beckman, Eric Chad, Julie Daulton, Lindsay Hartman, Rachel Hughey, Bradley Kuxhausen, Anneliese Mayer, Elisabeth “Bette” Muirhead, Ryan Smith, Rachel Zimmerman Scobie, and Tracey Skjeveland.



CLC provides free legal advocacy for foster care youth in Minnesota. &nbsp;The organization advocates for foster children through systemic reform and provides free legal representation services to foster children. &nbsp;CLC also trains volunteer attorneys to represent foster children in court. &nbsp;Currently, CLC represents over 800 children per year. &nbsp;

Merchant & Gould Receives Distinguished Service Award from Children’s Law Center of Minnesota

Merchant &amp; Gould partner Tony Zeuli says volunteering with Children’s Law Center (CLC) to represent foster children in court is a rewarding experience for him and Minneapolis colleagues.



Zeuli, a CLC board member, accepted the nonprofit’s Distinguished Service Award on the firm’s behalf earlier this month.



Read the rest of the article <a href="https://minnlawyer.com/2021/10/21/breaking-the-ice-ip-attorney-colleagues-earn-pro-bono-recognition/">here.</a>

Breaking the Ice: IP attorney, colleagues earn pro bono recognition

Other Attorneys Recognized for Pro Bono Hours and CLC Distinction



Merchant &amp; Gould’s Pro Bono Committee announced the firm’s 2021 Pro Bono Awards to attorneys who have dedicated their time to helping their communities through pro bono legal services and their deep commitment.&nbsp;



A special congratulations goes to Sheila Niaz (Minneapolis) who performed more than 300 hours of pro bono legal work this year. &nbsp;Sheila’s pro bono work included preparing several patent applications in connection with LegalCORPS and assisting on the appeal of a criminal conviction. &nbsp;She is the sole recipient of Merchant &amp; Gould’s 2021 Pro Bono Award.



In addition, we want to recognize Rachel Hughey (Minneapolis) who has since been appointed as a District Court Judge in Minnesota’s Fourth Judicial District; Bill Hughet (D.C.); Mike Erbele (Minneapolis); Joe Gess (D.C.); Rachel Scobie (Minneapolis); and Ben Tramm (Minneapolis) for dedicating more than 40 hours of pro bono work this year.



We also want to applaud our Minneapolis team of attorneys who received Children’s Law Center (CLC) of Minnesota’s “Distinguished Service Award” this year: &nbsp; Karen Beckman, Eric Chad, Julie Daulton, Lindsay Hartman, Rachel Hughey, Bradley Kuxhausen, Anneliese Mayer, Elisabeth “Bette” Muirhead, Ryan Smith and Rachel Zimmerman Scobie, Tracey Skjeveland and Tony Zeuli (CLC board member). &nbsp;Merchant &amp; Gould was recognized for its “dedication and commitment to representing children and youth in foster care,” as well as the firm’s “immense impact on Minnesota children in need.”



Congratulations to Sheila and all the attorneys who continue to help make our communities even better!

Merchant & Gould Congratulates Sheila Niaz as the Firm’s Pro Bono Award Winner

Recently, the U.S. Court of Appeals for the Fifth Circuit issued an opinion in <a href="https://www.ca5.uscourts.gov/opinions/pub/22/22-40376-CV0.pdf">Whirlpool Corp. et al. v. Shenzhen Sanlida Electrical Technology Co. et al., No. 22-40376 (August 25, 2023)</a>, affirming the district court’s grant of a preliminary injunction enjoining sales of Shenzhen’s allegedly infringing stand mixers.



Whirlpool filed suit against Shenzhen in the Eastern District of Texas alleging that kitchen stand mixers sold by Shenzhen, through primarily online channels, infringe Whirlpool’s trademark and trade dress rights in its iconic KitchenAid stand mixer. Along with its complaint, Whirlpool filed a motion for preliminary injunction to stop the sale of the allegedly infringing mixers. The district court granted the preliminary injunction after a hearing attended by both parties. Shenzhen appealed.



The Fifth Circuit affirmed. On appeal, Shenzhen had raised three main arguments: (1) the district court lacked personal jurisdiction over Shenzhen due to lack of completed service; (2) Whirlpool’s trademarks are functional; and (3) there is no likelihood of confusion.



The Court rejected Shenzhen’s first argument as being inconsistent with both the plain language of Rule 65 and the Circuit’s past precedent holding that Rule 65(a) does not require service of process on, but only notice to, the adverse party. As there was no dispute that Shenzhen received sufficient notice of the motion for preliminary injunction, the Court found no error.



The Court then assessed functionality under the tests laid out in the TrafFix Devices and Smack Apparel cases. Under TrafFix Devices, the Court found there was no showing in the record that the exterior styling of the KitchenAid mixer was “essential to the use or purpose” of or had any effect on the cost, quality, or function of the mixer itself. Under Smack Apparel, the Court found that the presence of competing products with other designs cut against Shenzhen’s argument because those other designs are all “equally usable” if less aesthetically pleasing. Thus, the Court found no clear error in the district court’s finding of no functionality.



Finally, on likelihood of confusion the Court held that the existence of a “debate” regarding the similarities and differences between the KitchenAid and allegedly infringing products was not enough to hold the district court clearly erred in determining the factor went in Whirlpool’s favor.

Fifth Circuit Affirms PI in Stand Mixer Trade Dress Case

Last week, the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/21-2246.OPINION.2-15-2023_2081255.pdf">Minerva Surgical, Inc. v. Hologic, Inc. et al</a>, No. 2021-2246 (February 15, 2023), affirming the district court’s grant of summary judgment on invalidity under the public use bar of pre-AIA 35 U.S.C. §&nbsp;102(b).



Appellant Minerva is the assignee of U.S. Patent No. 9,186,208 (the “’208” patent), which was filed on November 2, 2012, and claims a priority date of November 7, 2011. The ’208 patent is directed to surgical devices for performing endometrial ablation to stop or reduce abnormal uterine bleeding. Representative claim 13 of the patent discloses, inter alia, a claim term (the “SDMP” term) requiring “the inner and outer elements [of the invention’s frame to] have substantially dissimilar material properties”.



Minerva sued Hologic, Inc. and Cytyc Surgical Products, LLC (collectively “Hologic”), in the District of Delaware, alleging Hologic infringed the ’208 patent. After discovery, Hologic moved for summary judgment of anticipation. Hologic pointed to evidence that Minerva disclosed multiple devices having the SDMP technology at an industry event in November 2009, well before the critical date of the ’208 patent. The district court granted summary judgment, holding the invention was in public use and ready for patenting in 2009.



Minerva appealed, raising three arguments: (1) the devices disclosed were not “in public use” because they were “merely displayed”; (2) there was no disclosure because the devices lacked the SDMP element; and (3) the invention was not “ready for patenting” because Minerva was still improving the SDMP technology and it did not yet function for its intended use in “live human” tissue.



The Federal Circuit affirmed the district court’s grant of summary judgment. It held the 2009 disclosure was a public use because the undisputed facts led to the “inescapable” conclusion that Minerva permitted knowledgeable individuals sufficient access to recognize and understand the SDMP technology, and no confidentiality obligations were imposed on those individuals. Further, the Court held there was no genuine factual dispute that the devices disclosed in 2009 disclosed the SDMP element, because Minerva’s own documentation from the time described them having the SDMP technology or touted the benefits derived therefrom. Finally, the Court rejected Minerva’s ready for patenting argument, holding that being ready for “live human” use was more than the case law required and that the contemporary documentation was sufficiently specific to enable a POSITA to practice the invention.

CAFC Affirms Invalidity Under Pre-AIA 35 U.S.C. § 102(b)

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1924.Opinion.5-8-2020_1584409.pdf">Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC</a>, 2019-1924 (May 8, 2020). Eagle sued Slayback for infringing four patents covering Eagle’s BELRAPZO® cancer treatment drug under the doctrine of equivalents (DOE). The asserted patent claims all included as a limitation “a pharmaceutically acceptable fluid comprising a mixture of polyethylene glycol and propylene glycol.” Slayback’s accused products employed ethanol instead of propylene glycol, which Eagle asserted was an insubstantial difference. Slayback moved for judgment on the pleadings under Federal Rule of Civil Procedure 12(c), arguing that the disclosure-dedication doctrine barred Eagle’s infringement claim because the asserted patents disclose, but do not claim, ethanol as an alternative to propylene glycol. The district court granted Slayback’s motion. Eagle appealed.



The Federal Circuit affirmed. On the merits, the Court rejected Eagle’s argument about claimed and unclaimed embodiments. Specifically, Eagle argued that the asserted patents do not disclose ethanol as an alternative to propylene glycol for the claimed compositions, but rather did so only for a different unclaimed embodiment. Eagle argued that a skilled artisan would, therefore, not understand ethanol to be an acceptable alternative to propylene glycol in composition of the asserted claims. The Court explained that the disclosure-dedication doctrine does not require that the disclosure exactly matches the claimed embodiment; it requires only that the specification disclose the unclaimed alternative in the context of the relevant claim limitation. The Court concluded that the specifications’ repeated disclosure of ethanol as an alternative “pharmaceutically acceptable fluid” did so. The Court also rejected a procedural challenge raised by Eagle. Specifically, Eagle argued that the district court erred in failing to consider an expert declaration it submitted, which it asserted created a fact dispute and rendered judgment on the pleadings inappropriate. The Court explained it is within the district court’s discretion to decide whether to consider evidence outside the pleadings on a 12(c) motion. The Court concluded that the district court did not abuse its discretion here in declining to consider Eagle’s expert declaration because, in this case, with or without expert testimony, the only reasonable inference is that a skilled artisan would understand the patents to disclose ethanol as an alternative.

CAFC Affirms Dedication to Public of Disclosed, But Unclaimed, Alternative

Last week, the U.S. Court of Appeals for the Ninth Circuit issued an opinion in <a href="https://cdn.ca9.uscourts.gov/datastore/opinions/2020/03/09/16-56057.pdf">Skidmore v. Led Zeppelin</a>, Nos. 16-56067, 16-56287 (Mar. 9, 2020) (en banc). Skidmore brought a copyright infringement action against the band Led Zeppelin. Skidmore’s suit claimed the opening notes of Stairway to Heaven infringed the copyright on Taurus, a song copyrighted in 1967. The district court ruled that, under the 1909 Copyright Act, the scope of the copyright was limited to the composition contained in the transcribed deposit copy of the song filed in 1967, and granted Led Zeppelin’s motion to exclude sound recordings of Taurus from trial. The jury returned a verdict of no infringement in Led Zeppelin’s favor, finding that Skidmore owned the copyright and Led Zeppelin had access to the song, but that the two songs were not substantially similar. Skidmore appealed, concentrating on a number of legal issues and challenging, among other issues: the district court’s rulings excluding sound recordings; the sufficiency of the district court’s jury instruction on originality and refusal to give “inverse ratio rule” and “selection and arrangement” instructions; and the imposition of trial time limits. On appeal, a panel of the Ninth Circuit vacated and remanded for new trial, but the Ninth Circuit granted rehearing en banc.



On rehearing, the en banc Court affirmed the district court’s holding limiting Skidmore’s copyright protection to the composition contained in the transcribed deposit copy. The Court also agreed with the district court’s exclusion of sound recordings of Taurus during trial on the basis that, while such recordings were relevant to the issue of access they were not relevant to substantial similarity, and the potential for prejudicing the jury in that determination was too great. The Court also determined the evidentiary question was moot because the jury found in Skidmore’s favor on access. On the jury instructions, the Court abrogated the “inverse ratio rule”—which permits a lower standard of proof of substantial similarity when a high degree of access is shown—in the Ninth Circuit. The Court further held the originality instructions were appropriate, and that the failure to give a “selection and arrangement” instruction was not in error, at least in part because Skidmore did not present a selection and arrangement theory at trial. The Court also affirmed the district court’s remaining rulings, including on the issue of trial time limits.

9th Circuit Affirms No Copyright Infringement by Led Zeppelin

Last week, the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/20-2331.OPINION.3-14-2022_1920940.pdf">Almirall, LLC v. Amneal Pharmaceuticals LLC</a>, No. 2020-2331 (March 14, 2022), affirming the Board’s obviousness determination.



Appellant Almirall owns the U.S. Patent No. 9,517,219 (the “’219 patent”), which discloses methods for treating acne or rosacea with a topical composition containing claimed concentrations or concentration ranges of: dapsone; an A/SA thickening agent; and DGME as a solvent. The claims at issue also recite that the composition does not include adapalene.



Amneal petitioned for inter partes review, arguing claims 1-8 were obvious over either the combination of references identified as Garrett and Nadau-Fourcade or Garrett and a publication identified as Bonacucina. Garrett teaches topical dapsone treatment for skin conditions using carbomer thickening agents, rather than A/SA. Nadau-Fourcade describes topical compositions for dermatologic use and lists both carbomers and A/SA as exemplary thickening agents. Bonacucina presents research on specific A/SA compositions with self-gelling and thickening properties that are effective for topical administration.



The Board found a person of skill in the art would have found it obvious to substitute an A/SA agent taught by Nadau-Fourcade or Bonacucina for the carbomer gelling agent in Garrett to arrive at the composition claimed by the ’219 patent. The Board also found that Garrett teaches the negative adapalene claim limitation.



Almirall appealed, arguing the Board erred in presuming obviousness of the claimed component concentrations based on overlapping ranges between the ’219 patent and the prior art, and that the Board’s obviousness determinations were not supported by substantial evidence.



The Court rejected Almirall’s first argument, finding substantial evidence supported the Board’s conclusion. The Court further noted the outcome would be unchanged without the presumption of obviousness because this is simply a case of substituting one known gelling agent for another, subject to conventional experimentation.



The Court then rejected Almirall’s arguments that the Board erred in finding the claims obvious over either Garrett and Nadau-Fourcade (Ground 1) or Garrett and Bonacucina (Ground 2). First, the Court found it reasonable to conclude Garrett teaches the negative adapalene claim limitation, because a skilled artisan would read Garrett as disclosing a complete formulation and excluding the possibility of an additional active ingredient. Second, the Court found the record amply supported the conclusions that there would have been a motivation to combine and reasonable expectation of success on both Ground 1 and Ground 2. The Court thus affirmed the Board’s finding of invalidity.

CAFC Affirms Board’s Obviousness Finding for Acne Treatment

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1583.OPINION.10-14-2020_1668711.pdf" target="_blank" rel="noopener">Warsaw Orthopedic, Inc. et al. v. Sasso</a>, No. 2019-1583 (Oct. 14, 2020), affirming a district court’s application of the doctrine of federal court “abstention” to dismiss without prejudice the declaratory judgment complaint filed by the plaintiffs (collectively “Medtronic”).



In 1999, Medtronic entered into a purchase agreement with Dr. Sasso to purchase certain of Dr. Sasso’s inventions. The agreement called for quarterly royalty payments based on sales of defined medical devices. A dispute arose over which devices were within the scope of the agreement and, in June 2014, Dr. Sasso filed suit in the state of Indiana for breach of contract and damages. In November 2018, after a trial at which Medtronic was not permitted to question the validity of the patent claims alleged to cover the disputed devices, a jury found Medtronic had breached the agreement and awarded damages. Medtronic appealed, and that appeal was pending in the Indiana state Court of Appeals.



Meanwhile, before the state court trial commenced Medtronic filed an action for declaratory judgment in federal court seeking a declaration of no breach of the agreement on the ground that no valid patent claim covers the disputed devices. After the state court trial concluded, Dr. Sasso moved the federal court for dismissal of the declaratory action. The district court granted dismissal without prejudice because it found that, at the time, no purpose could be served by maintaining the action as it had no power to undo the judgment entered by the state court.



Medtronic appealed, arguing that federal courts have exclusive jurisdiction over issues of patent validity and the state court erred in ruling that validity was irrelevant to the issue of breach of the agreement. Dr. Sasso challenged federal jurisdiction, arguing the declaratory judgment action did not “arise under” the patent laws.



The Federal Circuit first held the “arising under” standard supported federal jurisdiction in the action. Moving to the merits, the Court concluded that application of the Wilton/Brillhart abstention doctrine, under which district courts have significant discretion, was appropriate. Under the applicable abuse of discretion standard, the Court concluded that the district court exercised “common-sense accommodation of judgment” and did not abuse its discretion in abstaining.

No Abuse of Discretion in Abstention Despite Issues of Validity Being Raised

Last week, the Federal Circuit issued an opinion in <a href="http://cafc.uscourts.gov/opinions-orders/21-2228.OPINION.10-13-2022_2017814.pdf">Weisner v. Google LLC</a>, No. 2021-2228 (October 13, 2022), affirming-in-part and reversing-in-part the district court’s holding of ineligibility under 35 U.S.C. §&nbsp;101.



Appellant Weisner is the named inventor of U.S. Patent Nos. 10,380,202, 10,642,910, 10,394,905, and 10,642,911 (the “’202”, “’910”, “’905”, and “’911” patents, respectively) which are directed generally to the creation of a digital travel history (the ’202 and ’910 patents) and the use of those digital travel histories to improve computerized search results (the ’905 and ’911 patents).



Weisner sued Google in the Southern District of New York, alleging infringement of the ’202, ’910, ’905, and ’911 patents. Google moved to dismiss Weisner’s first amended complaint as insufficiently pled under the Twombly/Iqbal standard and that the asserted patent claims are ineligible under 35 U.S.C. §&nbsp;101. The district court granted dismissal on both grounds, while allowing Weisner an opportunity to amend. After amendment, Google again moved for dismissal on Section 101 and Twombly/Iqbal grounds. The district court granted dismissal based on Section&nbsp;101. Weisner appealed.



The Federal Circuit affirmed the district court’s dismissal as to the ’202 and ’910 patents, finding that the asserted claims were directed to little more than the creation of a digital travel log. In the first step of the Alice analysis, the Federal Circuit agreed with the district court that humans had consistently kept records of their travels throughout history and that automation or digitization of such conventional human activity did not make the idea patentable. Turning to step two of the Alice analysis, the Court again agreed with the district court that the claims did not describe an inventive concept, as they described simply digitizing a travel log using conventional components.



The Federal Circuit reversed the district court’s dismissal of the ’905 and ’911 patents, however, holding that the Second Amended Complaint and the patents’ specification described patent-eligible inventions. The Court again concluded the asserted patent claims were directed to an abstract idea in the first step of Alice. But the Court held the claims’ specificity regarding solving a problem alleged to be particular to the internet was enough, at the pleading stage, to avoid dismissal. In so holding, the Court rejected the argument that the patents needed to disclose a new search engine algorithm to meet the “inventive concept” requirement.

CAFC Holds New Algorithm Not Required for “Inventive Concept”

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1561.OPINION.4-7-2021_1759839.pdf" target="_blank" rel="noopener">Apple Inc. v. Qualcomm Incorporated</a>, Nos. 2020-1561, -1642 (Apr. 7, 2021), dismissing for lack of standing Apple’s appeals of two final decisions of the Patent Trial and Appeal Board in inter partes review (IPR) proceedings.



Qualcomm sued Apple for infringing claims of two Qualcomm patents. Apple sought, and the Board instituted, IPRs of both patents. In its final written decisions, the Board held Apple did not prove the challenged patent claims were obvious. Around the same time, and prior to any appeal, Apple and Qualcomm settled all litigation between them and Qualcomm’s suit was dismissed with prejudice. Notwithstanding the dismissal of the litigation, Apple appealed the Board’s final written decisions of nonobviousness in the IPRs.



The Federal Circuit held Apple lacked standing to maintain the appeals. Although Apple failed to address standing in its opening brief, the Court exercised its discretion to consider the standing issue on the merits because it had been fully briefed, there was no prejudice to Qualcomm, and the question impacted these and other appeals. Addressing the merits of the standing issue, the Court rejected the three arguments Apple advanced in support of its alleged standing to appeal. First, the Court rejected Apple’s argument that it had standing based on ongoing payment obligations under the license agreement executed as part of settlement because Apple did not (1)&nbsp;allege the validity of the patents would affect its ongoing payment obligations or (2) identify any contractual dispute involving those obligations. Second, the Court rejected Apple’s argument that it had standing based on the possibility that Qualcomm could sue for infringement in the future, after the 6-year license term expires. The Court found this possibility too speculative to establish standing, even in view of Qualcomm’s general history of asserting patents against Apple. Finally, the Court rejected Apple’s argument that it had standing because the estoppel provision in 35 U.S.C. §&nbsp;315(e) would prevent it from arguing the patents are obvious in future disputes. The Court explained it has already rejected other parties’ attempts to invoke that provision to establish standing, and that the speculative nature of Apple’s claims about possible future enforcement activities after the expiration of the license agreement is determinative of the issue. Having concluded Apple failed to establish standing to appeal the Board’s decision, the Court dismissed the appeal.

CAFC Holds Apple Lacks Standing to Appeal IPR Decision

Last week, the U.S. Court of Appeals for the Second Circuit issued an opinion in <a href="https://ww3.ca2.uscourts.gov/decisions/isysquery/363bbecd-6931-4b1f-8ba4-35e322d251bb/1/doc/23-325_opn.pdf">City of New York v. Henriquez, No. 23-325-cv (April 16, 2024)</a>, vacating the district court’s grant of a preliminary injunction against the Fire Department of New York (“FDNY”).



In 2011-2012, appellant Juan Henriquez, a rescue paramedic with FDNY, began to organize conferences geared toward civilian emergency responders called “Medical Special Operations Conferences” or “MSOC” (collectively, the “marks”). Initially, Henriquez collaborated with FDNY, but by 2018 he asked FDNY to remove references to the marks from its website. In 2019, Henriquez sought federal registration of the marks. While his application was initially rejected because the PTO found the marks merely descriptive, Henriquez ultimately succeeded in obtaining registration in 2020 after attesting he had been using the marks on a substantially exclusive and continuous basis for at least five years.



FDNY, also claiming rights in the marks, asked Henriquez to stop using them in 2019, before eventually bringing suit in the Eastern District of New York to cancel Henriquez’s registration. Henriquez countersued for trademark infringement and sought a preliminary injunction, which the district court granted. FDNY appealed.



On appeal, the Second Circuit held that the district court committed legal error by overestimating the strength of the marks and finding them to be suggestive, rather than descriptive. Because the Court found this legal error was central to the district court’s decision, it held the issuance of the preliminary injunction was an abuse of discretion.



The Court held that the district court made three missteps in evaluating the marks’ strength under the Polaroid factors. First, the district court ignored Henriquez’s own implicit concessions that the marks are descriptive. Second, the district court misunderstood the PTO’s determination. The district court presumed the marks were inherently distinctive, citing the principle that registration without proof of secondary meaning creates such a presumption. Here, however, the PTO determined the marks were merely descriptive, and only registered them after receiving evidence of secondary meaning, so the proper presumption is that they are inherently descriptive with acquired secondary meaning. Finally, the district court failed to properly consider whether the intended audience—prospective MSOC attendees—would consider the marks descriptive. Ultimately, the Court determined the marks are weak and entitled to only “extremely narrow” protection. Because Henriquez did not rely on any other Polaroid factors to defend the preliminary injunction, the Court vacated and remanded.

Second Circuit Vacates Preliminary Injunction in Trademark Case

Litigation

Chemical & Life Sciences

Trade Secret

Appellate

Internet, Cybersecurity, & E-Commerce

ITC Section 337 Investigations

Yeng Yang

Associate

Elisabeth “Bette”  S. Muirhead

<h3>Publications</h3>
A Marked Improvement: False Marking and the AIA, The Federal Lawyer, Jan-Feb 2015.

Elisabeth "Bette" S. Muirhead

Practices

Industries

Education

Admissions

Publications & Speaking Engagements

Publications