The US Court of Appeals for the First Circuit found that it had jurisdiction despite an arguably improper notice of appeal, and that the trademark owner waived its right to submit new evidence and failed to prove that the descriptive mark FIESTAS DE LA CALLE SAN SEBASTIÁN had secondary meaning. Comité Fiestas De La Calle San Sebastián, Inc. v. Carmen Yulín Cruz Soto et al., Case No. 17-1723 (1st Cir. May 29, 2019) (Kayatta, J).

Comité Fiestas De La Calle San Sebastián is nonprofit organization in San Juan, Puerto Rico, that assists with organizing and promoting the yearly Fiestas De La Calle San Sebastián held in Old San Juan. The Fiestas De La Calle San Sebastian focuses on promoting traditional Puerto Rican music and culture and the religious celebration of Saint Sebastian. In 2014, the Comité criticized the mayor of San Juan, Carmen Yulín Cruz Soto, for turning the Fiestas De La Calle San Sebastian and “historic Old San Juan into a big bar with contests to see who could drink the most.” After the criticism, the mayor allegedly retaliated against the Comité by awarding it less advantageous vendor contracts for the 2015 festival than it had previously received, imposing stricter requirements on the Comité, and giving the Comité’s coveted entertainment time slot during which it normally played traditional Puerto Rican music to a supporter of the mayor.

The Comité brought a trademark infringement claim alleging it owned the FIESTAS DE LA CALLE SAN SEBASTIÁN mark, as well as First Amendment, political discrimination, retaliation, libel and religious discrimination claims against the mayor and the Municipality of San Juan. After discovery was completed, the mayor and San Juan filed a motion for summary judgment, and the district granted the motion on all claims. Subsequently, the Comité filed a Rule 59(e) motion for reconsideration on its political discrimination, trademark infringement and libel claims. In support of its trademark claim, the Comité submitted new evidence showing that the mark had been approved for publication by the US Patent and Trademark Office (PTO). The district court denied the Rule 59(e) motion in its entirety. The Comité appealed.

Under Fed. R. App. P. 3(c)(1)9B), a notice of appeal must “designate the judgment, order or part thereof being appealed.” At the outset, the First Circuit discussed whether it had jurisdiction over the appeal in light of the fact that the Comité’s notice of appeal only mentioned the Rule 59(e) motion for reconsideration, but the Comité’s opening brief only challenged portions of the underlying summary judgment order. Although the Court noted that it had previously found it lacked jurisdiction over appeals when the notice of appeal only designated a Rule 59(e) motion, the Court further noted that its case law had some flexibility to consider grounds in the underlying dismissal if the Rule 59(e) motion and underlying dismissal were intertwined. Here, the Court found that it had jurisdiction over claims that were encompassed by the Rule 59(e) motion and the parts of the district court’s summary judgment order that were addressed in the Rule 59(e) motion—the political discrimination and trademark infringement claims.

The First Circuit also found that the Comité’s Rule 59(e) motion raised new evidence with respect to the trademark infringement claim. However, because the Comité did not raise the issue that it had new evidence from the PTO in its opening appeal brief, the Court held that the Comité had waived the issue for appeal. With respect to the trademark infringement claim, the Court held that the Comité failed to establish that FIESTAS DE LA CALLE SAN SEBASTIÁN, a descriptive mark, had acquired distinctiveness or secondary meaning. The Comité attempted to rely on several affidavits to establish secondary meaning. However, none of the affidavits mentioned the fact that the public associated the mark with a single source or the Comité. As a result, the Court held that there was no “trial-worthy” trademark infringement issue, thus affirming the district court’s summary judgment finding and denial of the Rule 59(e) motion for reconsideration.