By Robert Margolis, J.D.
District court correctly held that trademark owner failed to raise genuine factual issue as to secondary meaning of the asserted mark.
A federal district court correctly found that a non-profit corporation that promotes and helps run the annual Fiestas de le Calle San Sebastian festival in San Juan, Puerto Rico lacked evidence to sustain its trademark infringement and other claims against the city and its mayor, the U.S. Court of Appeals in Boston has held. The appellate court affirmed the lower court’s summary judgment order dismissing all of the corporation’s claims arising out of what the corporation contended was political retribution exacted by the mayor against it (Comite Fiestas De La Calle San Sebastian, Inc. v. Carmen Yulin Cruz Soto, May 29, 2019, Kayatta, W.).
Comite Fiestas de la Calle San Sebastian, Inc.has for years taken part in organizing and running the annual festival in Puerto Rico, in conjunction with the city. In that role, it "promote[s] traditional Puerto Rican music and culture, particularly the celebration of Saint [Sebastian]." The Comite considers itself apolitical, but in 2014 it publicly criticized the city’s mayor, Carmen Yulin Cruz, for deemphasizing the festival’s religious and traditional features. According to the Comite, the mayor turned "historic Old San Juan into a big bar with contests to see who could drink the most."
The Comite alleges in its lawsuit that the mayor and city retaliated against it for this criticism, including by awarding it a less favorable vendor contract than in previous years, enforcing onerous permitting requirements that were not imposed on more favored vendors connected to the mayor’s political party, and taking away the Comite’s timeslot for presenting entertainment. The Comite brought claims for First Amendment political discrimination, retaliation, religious discrimination, and trademark infringement. The Comite alleges that it owns the "Fiestas de la Calle San Sebastian" mark. After discovery, the district court granted the defendants’ summary judgment motion, dismissing all of the Comite’s claims. After the district court denied the Comite’s motion for reconsideration, the Comite’ appealed to the First Circuit.
Jurisdiction. The appellate court first addressed a jurisdictional issue arising from the fact that while the Comite’s notice of appeal referred only to the denial of its motion for reconsideration, its appellate brief solely challenged the substance of the summary judgment order. The defendants argued that the notice of appeal’s omission of the summary judgment order effected a waiver of the Comite’s right to challenge it. After reviewing First Circuit law on the contours of Federal Appellate Rule 3(c)(1)(B), the appellate court concluded that because in its motion for reconsideration the Comite largely made the same arguments as on the summary judgment motion, concerning whether there were genuine issues of material facts to support the political discrimination and trademark infringement claims, those issues would be preserved on appeal.
However, the appellate court held that the Comite failed to preserve the First Amendment retaliation claim that was not raised in its reconsideration motion. In addition, while the Comite argued on reconsideration that newly discovered evidence supported its trademark infringement claim, it did not make that argument in its appellate brief, thereby waiving it.
Secondary meaning. Turning to the substance of the claims, the appellate court agreed with the district court that the trademark infringement claim failed because the Comite provided no evidence that the descriptive term "Fiestas de la Calles San Sebastian" has acquired the requisite secondary meaning to support the claim. The Comite supplied affidavits with its reply brief, but according to the court, none "even hints" at any association in the public of that mark with the Comite itself or a single commercial source.
Political discrimination. The district court also correctly dismissed the claim asserting political discrimination, because there was no evidence that the defendants even knew the political affiliation of the Comite or its members.
This case is No. 17-1723.
Attorneys: Jane A. Becker Whitaker (Becker & Vissepo PSC) for Comite Fiestas De La Calle San Sebastian, Inc. Hector J. Benitez Arraiza (Quinones, Arbona & Candelario Law) for Carmen Yulin Cruz Soto and Municipality of San Juan. Salvador J. Antonetti-Stutts (O'Neill & Borges) for Spanish Broadcasting System of Puerto Rico, Inc.
Companies: Comite Fiestas De La Calle San Sebastian, Inc.; Municipality of San Juan; Spanish Broadcasting System of Puerto Rico, Inc.
MainStory: TopStory Trademark MaineNews MassachusettsNews NewHampshireNews PuertoRicoNews RhodeIslandNews
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