FN Herstal, S.A. v. Clyde Armory, Inc.
FN Herstal, S.A. v. Clyde Armory, Inc.
Opinion of the Court
BENCH TRIAL ORDER
In this trademark infringement case, Plaintiff FN Herstal, S.A. (“FN”) and Defendant Clyde Armory, Inc. (“Clyde Armory”) both claim superior rights to use “SCAR” or “SCAR-Stock” in the firearms industry. The Court conducted a bench trial in this case on July 21-July 23, 2015, and, 'thereafter, directed the parties to, submit their proposed findings and fact and conclusions of law. After considering all the evidence and the applicable law, the Court makes the following Findings of Fact and Conclusions of Law. As explained herein, the Court finds that FN has superior trademark rights in the SCAR mark and thus enters judgment in favor of FN on all claims.
FINDINGS OF FACT
■FN is a well-known firearms and weapons manufacturer with its principal place of business in Herstai, Belgium. FN manufactures and distributes a full range of firearms and accessories- for the military, law enforcement, and civilian consumers in the United States. In 1997, FN created FNH USA to handle development, marketing, and sales of its products to the United States market. FNH USA later merged with FN Manufacturing in 2014 to become FN America, LLC. Clyde Armory is a firearms retailer and distributor, which sells firearms and other accessories to law enforcement and civilian consumers in the United States, Clyde Armory’s principal place of business is in Athens, Georgia.
At issue in this case is FN’s use of the SCAR mark as a-designation for a family of rifles and Clyde Armory’s use of SCAR-Stock on replacement gun stock. The history of each party’s use of SCAR and SCAR-Stock is summarized below.
I. FN’s SCAR
On January 23, 2004, United States Special Operations Forces Command (“SO-COM”) issued a solicitation requesting bids from firearm manufacturers-to design and manufacture a new combat assault
FN along with other firearms manufacturers, including Colt and Cobb Manufacturing, submitted SCAR prototypes to SO-COM in 2004 in hopes of winning the bid.
The engineering and development of the SCAR weapon system underwent a strict government approval process that lasted several years. The process included multiple early user assessments followed by integrated product team meetings to discuss the results of those assessments and to implement changes to the SCAR. Once the changes were made, each new generation of the SCAR was tested again. This cycle continued through four or five generations of the SCAR. Then, from July to December 2007, the SCAR was set for operational testing and evaluation to determine if the rifle was ready for service, followed by low rate production of the SCAR in 2008.
From its inception, the SOCOM program generated significant media coverage in the -firearms industry because the SCAR was the first rifle procured by the U.S. military through a full and open competition since the military adopted the M16 rifle in the mid-1960s. Various magazine and newspaper articles tracked the development of the SCAR pursuant to the SO-COM program. A sample of these articles
It is customary for manufacturers like FN to first develop a weapon for the military and then develop similar versions of the same weapon system for nonmilitary consumers. The reason, in part, is because civilian and law enforcement consumers tend to follow military trends in the firearms industry — when the military starts using new products, nonmilitary consumers anticipate versions of the same products. Indeed, John Klein, the president of Sage, International, Inc., a firearms manufacturer, testified that when a new military weapon is developed, it is normal for nonmilitary consumers to inquire about a version of the same weapon for civilian use.
Consistent with this general practice and popular demand, FN began promoting its SCAR to law enforcement and civilian gun enthusiasts in 2005. FN, however, did not have a semi-automatic version of the SCAR available for purchase by civilian consumers at that time. The only rifle available for display was a fully automatic SCAR-the sale of which is restricted to military and law enforcement. Nevertheless, in February 2005, FN imported its fully automatic SCAR to display and promote at trade shows, and visits to gun dealers, law enforcement agencies, and distributors.
FN further promoted the SCAR at trade shows and events by distributing hats, t-shirts, key chains, as well as thousands of brochures, fliers, and other mar-. keting materials imprinted with the SCAR mark.
In response to these promotions, FN received numerous inquiries from nonmilitary consumers asking when a semi-automatic SCAR would be available for civilian purchase. On March 2, 2006, FN answered those inquiries in a press release entitled, “The Making of the 21st Century Assault Rifle: SCAR SOF Combat Assault Rifle” which told the history of its involvement in the SCAR Program and detailed the ongoing development of the SCAR for SOCOM.
In the meantime, FN continued to advertise through similar channels — visiting trade shows, law enforcement agencies, distributors, gun dealers, and distributing promotional materials after 2006.
In November 2008, the ATF approved FN’s semi-automatic SCAR for commercial sale. Thereafter, FN filled its initial orders to law enforcement and civilians in late 2008.
To enforce its rights in the SCAR mark, FN sought and obtained two trademark registrations from the United States Patent and Trademark Office (“USPTO”) for the SCAR mark. The USPTO registered the SCAR and Design mark to FN for use in connection with firearms and related items on June 15, 2010, Registration No. 3,801,448 (“the ’448 Registration”). The ’448 Registration indicates that FN filed its application on January 13, 2009, and first used the SCAR and Design mark in commerce on November 1, 2008.
II. Clyde Armory’s SCAR-Stock
In 2003, at the request of the U.S.- Navy SEALs,' Sage International, Inc. (“Sage”) began producing - a replacement chassis stock system for M14 rifles and close variations thereof. Sage’s replacement chassis stock system, known as the Enhanced Battle Rifle (“EBR stock”),- allowed pre-Viet-nam War era M14 rifles to be updated with modern .tactical .features, such as mounting rails, a pistol grip, and telescoping buttstock. These, tactical features allowed the M14, a.larger-caliber rifle, to be used as either a close, quarters battle (“CQB”) rifle or a designated marksman (“DM”) rifle in the modern era.
Mr. Clyde adopted the mark “SCAR-Stock” or ’“SCAR-CQB Stock” in April 2006 to reflect the collaborative effort of Sage and Clyde Armory in designing and
Indeed, Joshua Smith, Clyde Armory’s former Chief Operating Officer, testified that FN’s SCAR was well known in the firearms market in 2006. When Mr. Clyde told him about the coined acronym for the replacement stock, the two discussed the fact that FN was already marketing a product under the SCAR mark. Mr. Smith testified that, by adopting SCAR-Stock, Clyde Armory was attempting to take advantage of the popularity surrounding the SCAR mark in the firearms industry. Mr. Clyde disavows any intent to take advantage or associate SCAR-Stock with FN’s SCAR mark. Mr. Smith left Clyde Armory in October 2009 under bad circumstances following a blow up with Mr. Clyde and other employees. Nevertheless, in light of Mr. Clyde’s admission that he was familiar with the SCAR Program at the time he adopted SCAR-Stock, the Court finds Mr. Smith’s testimony credible.
Throughout the spring and summer of 2006, Clyde Armory worked toward perfecting its replacement stock system in collaboration with Sage.
In anticipation of and following the launch of its replacement stock, Clyde Armory’s SCAR-Stock generated consumer and industry interest, specifically among owners of Ruger Mini-14s, Mini-30s, and the AC-556.
Clyde Armory’s promotional efforts resulted in continuous and ongoing sales of SCAR-Stock from 2006 to the present.
SCAR-Stock replacement stock comes in different colors, including a color dubbed “Navy SEAL Grey” — the same color as Sage’s EBR stock.
As a firearms retailer and distributor, Mr. Clyde is familiar with FN’s products. In fact, Clyde Armory began selling FN’s products in 2002 and became an official distributor of FN’s products from 2006 to 2010.
III. Analysis
After discovering Clyde Armory’s SCAR-Stock mark, FN brought the- instant suit for trademark infringement. Clyde Armory denied liability and counterclaimed, alleging that FN’s SCAR mark infringed its SCAR-Stock. In support of their claims, both parties argue they have a superior trademark right in their respective SCAR marks, and the opposing party’s use of SCAR -infringes on that right.
In order to establish a protectable trademark, a party must prove (1) it used the mark in commerce, and (2) the mark is distinctive.
A. First Use
To establish a protectable mark, a party must demonstrate that it uses the mark in commerce. “Mere adoption of a mark without bona fide use, in an attempt to reserve it for the future, will not create trademark rights.”
(A) it is placed in any manner on the goods or their containers or the displays -associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
(B) the- goods are sold or transported in interstate commerce.53
To determine whether use is sufficient to create a protectable trademark, the Eleventh Circuit requires a trademark claimant to show it (1) adopted the mark and- (2) “use[d the mark] in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark.”
Under this approach, “evidence of sales is highly persuasive,” but actual sales are not required to prove prior use.
When both parties claim a protectable trademark interest, the Court must determine who used the mark first.
On November 5, 2004, SOCOM ordered approximately $634,000 in SCAR firearms and attachments. The SOCOM contract, however, was much more than a single sale of SCAR firearms — the award marked the beginning of a SCAR development contract that would continue, by its terms, for ten years. From the inception of the SO-COM award, FN marked the rifles it submitted with the SCAR mark and shipped those rifles to various military-related agencies throughout 2004, 2005, and 2006. By November 5, 2007, FN had completed eleven delivery orders, totaling over $11,000,000,00 of SCAR firearms and accessories pursuant to the SOCOM contract.
Even though these sales were limited to the U.S. military and related agencies, the Court finds that these sales were sufficiently public to constitute use in commerce.
The fact that FN did not have a semiautomatic SCAR for law enforcement and civilian purchase until late 2008 does not change the Court’s analysis because, in additional to its military sales, FN established prior use through analogous use— that is, extensive pre-sale advertising and promotional activities for its semi-automatic SCAR dating back to 2005. FN promoted its SCAR at hundreds of tradeshows throughout 2005 and 2006. Indeed, at the February 2006 SHOT show — attended by thousands in the firearms industry — FN displayed two SCARs at its booth. The SCAR was the most talked about firearm at the show, and people waited in line just to get a look at it. At these tradeshows as well as in visits to law enforcement agencies, distributors, and gun dealers, FN distributed brochures, flyers, hats, t-shirts, and other memorabilia to further promote the SCAR. In addition to these promotional activities, .FN announced in a March 2006 press release its intent to develop a semi-automatic version of the SCAR for law enforcement and civilian consumers. These promotional activities coupled with the media coverage surrounding FN’s development of the. SCAR constitute sufficient analogous use for trademark purposes.
Moreover, FN’s sales of the semi-automatic SCAR followed these promotional
Accordingly,- the Court finds that FN has shown use of the SCAR mark, by clear and convincing evidence, dating back to its first sale of rifles to SOCOM on November 5,2004.
B. Distinctiveness
FN may not, however, claim a protectable trademark interest in SCAR simply by showing it used the SCAR mark in commerce. FN must also show that SCAR is “distinctive.”
(1) generic — marks that suggest the basic nature of the product .or service; (2) descriptive — marks that identify the characteristic or quality of a product or service; (3) suggestive — marks that suggest characteristics of the product or service and require an effort of the imagination by the consumer in order to be understood as descriptive; and (4) arbitrary or fanciful — marks "that bear no relationship to the product or service, and the strongest category of trademarks.72
Arbitrary, fanciful, and suggestive marks are considered inherently distinctive and, therefore, are protectable without a show
In this case, the parties disagree about the distinctiveness of their respective marks. According to FN, its SCAR mark is either inherently’ distinctive or, alternatively, acquired distinctiveness through secondary meaning before Clyde Armory began using SCAR-Stock in September 2006. Clyde Armory, on the other hand, contends that FN’s SCAR mark was descriptive of the rifle sought b‘y SOCOM, and, therefore, FN acquired no protectable rights in SCAR prior to September 2006. Moreover, Clyde Armory asserts that it was the first party to have a protectable interest in its SCAR-Stock mark — namely, because SCAR-Stock is inherently distinctive and became a protectable trademark upon its first use in commerce in- September 2006. Having considered the evidence of record, the Court finds that FN’s SCAR is merely descriptive of a type- of firearm. Nevertheless, FN’s SCAR mark acquired distinctiveness in the firearms industry prior to Clyde Armory’s first use of SCAR-Stock in September 2006. Thus, FN was the first party to own a protecta-ble trademark interest.
It is clear that FN’s SCAR mark originated with SOCOM as an abbreviation for Special Operations Forces Combat Assault Rifle — a phrase describing the specific weapon system solicited by SOCOM. When determining the distinctiveness of an abbreviation such as SCAR, the Court must consider the relationship between the abbreviation and. its underlying phrase.
i. FN’s SCAR is Merely Descriptive
In this case,,Clyde Armory argues that FN’s use of SCAR was merely descriptive of the type of firearm requested by the SOCOM program; This Court agrees. The evidence shows that SCAR originated with SOCOM’s solicitation, wherein SCAR is featured alongside its underlying phrase “Special Operations Forces Combat Assault Rifle” to refer to the type of rifle requested. Moreover, the articles in evidence indicate that the average prospective consumer is likely to associate SCAR with it underlying phrase. For example, in the June 2005 issue of Small Arms Review, a headline reads “FN SCAR Wins!” followed below by “Special Operations Combat Assault Rifle.”
In addition, several witnesses — including Mr. Klein frotó Sage, a representative from Colt’s Manufacturing Company,
Finally, FN’s own use of SCAR with, its underlying phrase supports the conclusion
ii. FN’s SCAR Acquired Distinctiveness prior to September 2006
Since FN’s use of SCAR is merely descriptive, FN must show that the SCAR mark acquired distinctiveness through secondary meaning prior to Clyde Armory’s first use of SCAR-Stock in September 2006 in order to a have a protectable trademark. FN “has the burden of sustaining a high degree of proof establishing secondary meaning for a descriptive term.”
(1) [T]he length and manner of its use; (2) the nature and extent of advertising and promotion; (3) the efforts made by plaintiff to promote a conscious connection in the public’s mind between the name and plaintiffs business; and (4) the extent to which the public actually identifies the name with plaintiffs goods and services.92
Timing is also important here — in order to prevail, FN must show that SCAR acquired secondary meaning before Clyde Armory starting using SCAR-Stock in
Given the extensive sales to the U.S. military, the publicity surrounding those sales, and FN’s advertising and promotional activities in 2005 arid 2006, the Court finds FN’s SCAR mark acquired distinctiveness through secondary meaning in the firearms industry prior to September 2006. With respect to the first factor — length and manner of use — FN had been using the SCAR mark in commerce for a little less than two years before Clyde Armory introduced SCAR-Stock in September 2006. The Court finds two years was sufficient time for the mark to acquire secondary meaning in the firearms industry.
In addition to the significance of the volume of sales, the significance. of the buyer — the U.S. military — is central to the Court’s finding of secondary meaning. The evidence demonstrates, unsurprisingly, that the U.S. military is a prominent and influential actor in the firearms industry.
The second and third factors — promotion and FN’s attempt to create a conscious connection between SCAR and FN — also weigh in favor of finding FN’s SCAR had, acquired distinctiveness by September 2006. As mentioned above, media outlets extensively covered FN’s development of the SCAR pursuant to the SOCOM program — crediting FN with winning the bid and engineering the SCAR. The SCAR was “big news” in the firearms industry. To further associate FN with SCAR, FN promoted SCAR firearms at tradeshows, and to gun dealers, distributors, and law enforcement agencies throughout the United States consistently in 2006 and 2006. In addition to displaying SCARs at these events, FN distributed brochures, flyers, t-shirts, hats, and other items bearing the SCAR mark. Dui’ing this time period, a fourth of FN’s marketing budget was dedicated solely to promoting the SCAR.
In response to the unsolicited media attention and FN’s promotional efforts, the evidence shows the public associated the SCAR mark with FN in 2006. At the February 2006 SHOT Show, for example, people waited in line to see FN’s SCAR and inquired into when a SCAR would be available for civilian purchase. Even in the absence of a semiautomatic SCAR, “[s]econdary meaning can be created ... before a product hits the market by means of pre-sales publicity.”
The popularity of FN’s SCAR mark in 2006 is further evidenced by Clyde Armory’s intentional copying of the SCAR mark. “Evidence of intentional copying" is ... probative of secondary meaning.”
Finally, the fact that othér firearm manufacturers submitted prototypes to the SCAR Program does not prevent a finding that FN’s mark acquired distinctiveness by September 2006. To be sure, third party use of a mark weighs against a finding that a party’s mark has acquired
C. Distinctiveness of SCAR-Stock
Finally, Clyde .Armory argues that its SCAR-Stock mark is entitled to trademark protection because it is inherently distinctive — the acronym does not describe the product itself, but rather reflects the collaborative effort .between Sage and Clyde Armory in creating the product’s design. Despite Clyde Armory’s representations regarding the meaning of the acronym, the Court finds that Clyde Armory adopted the mark in bad faith to take advantage of the popularity of FN’s mark on the market. “To determine whether a defendant has acted in bad faith, a court must examine whether .the defendant-adopted its mark with the intention of capitalizing on plaintiffs reputation and goodwill and any confusion between his and the senior user’s product.”
CONCLUSIONS OF LAW
Rased on the foregoing facts, FN .brings, federal trademark infringement and unfair, competition claims under the Lanham Act,
I.Trademark Infringement
In order to prevail on a trademark infringement claim, a party must prove that (1) it owns a valid and protectable mark, and (2) the opposing party’s use of an identical or similar mark is likely to cause confusion.
As mentioned above, FN was the first to own a valid and protectable interest in its SCAR mark. FN first used the mark when it sold SCARs to SOCOM in November 2004. Moreover, through extensive sales, advertising, and media promotion, FN’s SCAR mark acquired distinctiveness through secondary meaning in the firearms industry prior to September 2006. Due to Clyde Armory’s bad faith in adopting its SCAR-Stock mark, it acquired no rights in that mark. Accordingly, FN is entitled to judgment on its trademark infringement claim.
II. Unfair Competition under Federal Law
FN also asserts a claim for unfair competition under federal law. “[A]n unfair competition claim based only upon alleged trademark infringement is practically identical to an infringement claim.”
III. Related State Law Claims
FN also asserts claims for unfair competition and deceptive trade practices under Georgia law. Like the federal unfair competition claim, FN’s state law claims are governed under the same framework as its trademark infringement claim.
CONCLUSION
For the foregoing reasons, the Court grants judgment IN FAVOR OF FN
(a) cease any use of SCAR or SCAR-Stock, or any colorable imitation thereof, in connection with the advertisement, promotion, offer for sale, and sale of firearms and related goods;
(b) abandon any trademark applications filed that show SCAR-Stock or include the designations, names, or marks SCAR and any Confusingly similar variations thereof, and refrain from filing additional trademark applications for such marks;
(c) assign any domain names which include SCAR or any variant thereof to FN;
(d) dismiss with prejudice its Cancellation Petition in Cancellation Proceedings No. 92053562 against FN’s Registration No. 3,801,448 for the mark SCAR and Design and its Opposition Petition in Opposition Proceedings No. 91198401 against FN’s mark SCAR Application Serial No. 79/053,575;
(e) deliver up for destruction all labels, signs, prints, packages, wrappers, receptacles, advertisements, or other materials in its possession or custody and control which are within the United States of America, its territories and possessions, which display the mark SCAR-Stock or related marks which show or include the designation, name or mark SCAR; and
(f) within sixty (60) after entry of final judgment, file with this Court and serve FN a report, in writing and under oath, setting forth the manner and form of Clyde Armory’s compliance with the Court’s order.
SO ORDERED.
. JX 19 [Doc. 147-1],
. Id. atp. 2; DX 180 [Doc. 145-5].
. JX 19 atp.2.
. See Deposition of Paul Hochstrate 16:3-8, 19:25-20:3 (“Hochstrate Dep.”) [Doc. 150]; Deposition of John Klein 26:14-18 ("Klein Dep.”) [Doc. 150],
.DX 182, CA00136 [Doc. 145-6]; Hochstrate Depi 50:11-15; DX 151 [Doc. 146-130].
. JX 20 [Doc. 147-2]; PX 197 [Doc. 145-70]; DX 208 [Doc. 145-10],
. JX 20.
. PX 128 [Doc. 145-52],
. DX 208.
. See, e.g., PX 42 [Doc. 145-20]; PX 47 [Doc. 145-22]; PX 48 [Doc. 145-23; PX 71 [Doc. 145-29]; PX 180 [Doc. 145-68]; PX 195 [Doc. 145-69]; PX 214 [Doc, 145-77]; DX 100 [Doc. 145-3]; DX 188 [Doc. 145-7]; DX 190 [Doc. 145-8],
. See, e.g., DX 105, CA02875 [Doc. 146-94]; DX 106, CA02885 [Doc. 146-95]; DX 108, CA03176 [Doc. 146-97]; DX 151 [Doc. 146-130].
. Klein Dep. 112:5-17.
. PX 76 [Doc. 145-31]; PX 77 [Doc. 145-32],
. Some examples include the 2006 SHOT Show, the National Defense Industrial Association (“NDIA”) Small Arms Forum, the AUSA U.S. Army show, Trexpo West, BORTAC, ILEETA, Mock Prison Riot, the Southeast SWAT Conference, SPOTC, FN/Leopold Long Range Competition, IALEFI, Police & Security Expo, and Trexpo East, among others. See PX 142 [Doc. 145-58], FN also presented evidence that it displayed SCAR firearms at tradeshows outside the United States, such as the 2006 Eurosatory trade show held every other year in Paris, France. "It is well settled that foreign use is ineffectual to create trademark rights in the United States.” Fuji Photo Film Co. v. Shinohara Shoji Kabushiki Kaisha, 754 F.2d 591, 599 (5th Cir. 1985). Accordingly, the Court will not consider FN’s displays of SCAR firearms outside the United States in determining priority of trademark rights in this case. In that regard, Clyde Armory’s Motion in Limine [Doc. 115] regarding FN’s foreign use of the SCAR mark is GRANTED as to these international trade shows.
. See, e.g., PX 75 [Doc. 145-30]; PX 134 [Doc. 145-54]; PX 222 [Doc. 145-84],
. DX205,p. 4 [Doc. 146-147],
. See PX 244 [Doc. 145-93].
. DX 182.
. Id. at CA00137.
. See, e.g., PX 93 [Doc. 145-33]; PX 108 [Docs. 145-38, -39]; PX 110 [Docs. 145-40, - 41]; PX 123 [Docs. 145-47, -48]; PX 124 [Docs. 145-49, -50]; PX 144 [Doc. 145-59].
. See, e.g., PX 23 [Doc. 145-18]; PX 24 [Doc. 145-19]; PX 44 [Doc. 145-21]; PX 56 [Doc. 145-25]; PX 57 [Doc. 145-26]; PX 113 [Doc. 145-42],
. PX 118 [Doc. 145-45]; PX 120 [Doc. 145-46].
. PX 216 [Doc. 145-78],
. PX 7, p. 2 [Doc. 145-13].
. PX 9, p.2 [Doc. 145-14], On April '22, 2008, FN filed an application, Serial No. 79/053,575, for SCAR, claiming a priority date of November 12, 2007 based on a Benelux trademark registration (Benelux refers to a combined trademark registration system for Belgium, The Netherlands,, and Luxembourg), which FN submitted in support of summary judgment. See Boris Umansky Deck ¶ 5, Ex. 3 [Doc. 89-3]. FN did not submit this application as evidence at the trial. Therefore, the Court will not consider it.
. DX 2 [Doc. 146-1],
. Klein Dep. 36:21-37.>7/
. Id. at 51:12-52:21.
. See DX 3 [Doc. 146-2], DX 4 [Doc. 146-3] (a draft agreement dated April 26, 2006, sent from Clyde Armory to Sage, reflecting the product name as "SCAR-CQB stock”).
. PX 212, pp. 2-3 [Doc. 145-76],
. Id.
. See e.g., DXs 12-14 [Docs. 146-10, -12] (Adjustable Stock orders to TAPCO); DXs 18-19 [Docs. 146-16, -17] (grip part order to Falcon); DXs 20-21 [Docs. 146-18, -19] (folding stock mechanism part order to Ace, Inc.); Klein Dep. 69:22-72:9; 73:6-76:8; 77:6-19; 78:6-17; 128:2-17.
. Id. at 51:18-19.
. DX 12.
. DX 7 [Doc, 146-5],
. DX 66 [Doc. 146-62].
. See, e.g., DX 27 [Doc. 146-25] (customer inquiries); DX 98, CA02809 [Doc. 146-93] (Soldier of Fortune Magazine, Sept. 2007); DX 163 [Doc. 146-141] (PerfectUnion.com).
. See, e.g., DX234 [Doc. 145-11] (brochure); DX 22 [Doc. 146-20] (magazine advertisement); DX 24 [Doc. 14622] (flyer); DX 25 [Doc. 146-23] (advertisement in Law Enforcement Product News, January/February 2007); DX 106, CA02884 [Doc. 146-95] (advertisement in Small Anns Review, October 2006).
. DX 68 [Doc. 146-64].
. See, e.g., DXs 29-59, 62 [Docs. 146-27, - 58],
. See, e.g., DX 22; DX 24; DX 98; DX 106, CA02884; DX 108, CA03184; DX 109, CA02928 [Doc. 146-98]; DX 110, CA02939 [Doc. 146-99]; DX 111, CA02949 [Doc. 146-100]; DX 112, CA03186 [Doc. 146-101]; DX 113, CA03001 [Doc. 146-102]; DX 114, CA03221 [Doc. 146-103]; DX 115, CA02953 [Doc. 146-104]; DX 116, CA02970 [Doc. 146-105]; DX 117, CA02974 [Doc. 146-106]; DX 118, CA02983 [Doc. 146-107]; DX 119, CA03243 [Doc. 146-108]; DX 120, CA03248 [Doc. 146-109]; DX 121, CA02993 [Doc. 146-110]; DX 122, CA03263 [Doc. 146-111]; DX 125, CA03300 [Doc. 146-112]; DX 126, CA03304 [Doc. 146-113]; DX 127, CA03316 [Doc. 146-114]; DX 128, CA03321 [Doc. 146-115]; DX 129, CA03336 [Doc. 146-116].
. Klein Dep. 80:1-81:1.
. DX 160 [Doc. 146-139].
. Klein Dep. 57:15-25, 62:14-63:16.
. DX 160.
. See PX 238 [Doc. 145-88],
. See PX 245 [Doc. 145-94]; DX 155 [Doc. 146-134]; DX 158 [Doc. 146-137]; DX 159 [Doc. 146-138].
. PX 155 [Doc. 145-63],
. PX 239 [Doc. 145-89],
. Klein Dep. 129:17-130:4.
. Knights Armament Co. v. Optical Sys. Tech., Inc., 654 F.3d 1179, 1188 (11th Cir. 2011).
. Blue Bell, Inc. v. Farah Mfg. Co., Inc., 508 F.2d 1260, 1267 (5th Cir. 1975).
. 15 U.S.C.§ 1127.
. Blue Bell, Inc., 508 F.2d at 1266.
. Freeway Ford, Inc. v. Freeway Motors, Inc., 512 F.Supp.2d 1353, 1361 (M,D.Gá. 2007).
. Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1195-96 (11th Cir. 2001).
. Int’l Healthcare Exch., Inc. v. Global Healthcare Exch., LLC, 470 F.Supp.2d 365, 371 (S.D.N.Y. 2007).
. T.A.B. Systems v. Pactel Teletrac, 77 F.3d 1372, 1375 (Fed.Cir. 1996).
. Id.
. Dyneer Corp v. Automotive Products Pic, 37 U.S.P.Q.2d 1251, 1256 (T.T.A.B. 1995); see also Am. Express Co. v. Goetz, 515 F.3d 156, 162 (2d Cir. 2008). FN argues that the Eleventh Circuit does not require actual- technical trademark use within a commercially reasonable time after analogous use. The Eleventh Circuit has not directly addressed this issue. Therefore, the Court, out of an abundance qf caution, addresses whether FN’s actual sales of semi-autqmatic SCARs occurred within a commercially reasonable' timé of ' its promotional activities.
. Blue Bell, Inc., 508 F.2d at 1265 ("[E]veh a single use in trade may sustain trademark rights if followed by continuous .commercial utilization."). . .
. See Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1023 (l'lth' Cir. 1989) ("The first to' use a mark on a product or ' service in a particular geographic market, the senior user, acquires■ rights in the.mark in that market.”),
. Hydro-Dynamics, Inc. v. George Putnam & Co., 811 F.2d 1470, 1473 (Fed.Cir. 1987); Elder Mfg. Co. v. Int'l Shoe Co., 194 F.2d 114, 118 (C.C.P.A. 1952). In its post-trial submission, FN contends for th.e first time in this case that it need not meet this heightened standard of proof to estáblish prior use because the ’448 • registration refers to the first use of SCAR with a design ¡feature. According to FN, the '448 Registration does not affect its common law trademark rights to SCAR — for. which it much show use by a preponderance of the evidence.' The dispute regarding the applicable standard, however,- is of no consequence because FN has met its burden of ' showing prior use finder both standards.
. Elder Mfg. Co., 194 F.2d at 118.
. Id.
. DX 208.
. Cf. Automedx v. Artivent, 95 U.S.P.Q.2d 1976, at *7, (T.T.A.B. 2010) (finding sale of ventilators to military prior to FDA approval for sale to public constituted use in commerce).
. See Hous. & Servs., Inc, v. Minton, No. 97 CIV. 2725(SHS), 1997 WL 349949, at *4 (S.D.N.Y. June 24, 1997) (finding that plaintiffs’ "wide-ranging promotional activities” and "substantial coverage in the print media” amounted to sufficient analogous use); see also New West Corp. v. NYM Co. of California, Inc., 595 F.2d 1194, 1199-1200 (9th Cir. 1979) (finding pre-printing publicity of magazine established priority of use of mark); Knickerbocker Toy Co,, Inc. v. Faultless Starch Co., 467 F.2d 501, 508 (C.C.P.A. 1972) (stating that a party "may rely on advertising and promotional use of a term or slogan ... to establish superior rights over a subsequent trademark user’ of the term, slogan, or word.”).
. Knights Armament Co., 654 F.3d at 1188.
. Id.
. Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) (emphasis in original).
. Gift of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 797-98 (11th Cir. 2003).
. Coach House Rest., Inc. v. Coach & Six Restaurants, Inc., 934 F.2d 1551, 1560 (11th Cir. 1991).
. Knights Armament Co., 654 F.3d at 1188.
. Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir. 2007).
. G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985, 995 (7th Cir. 1989).
. See Colt Defense LLC v. Bushmaster Firearms, Inc., 486 F.3d 701, 706 (1st Cir. 2007).
. Knights Armament Co. v. Optical Sys. Tech., Inc., 647 F.Supp.2d 1321, 1331 (M.D.Fla. 2009), aff’d, 654 F.3d 1179 (11th Cir. 2011),
. Am. Historic Racing Motorcycle Ass'n, Ltd. v. Team Obsolete Promotions, 33 F.Supp.2d 1000, 1004 (M.D.Fla. 1998), aff'd sub nom., Am. Historic v. Team Obsolete, 233 F.3d 577 (11th Cir. 2000).
. Knights Armament Co., 647 F.Supp.2d at 1331 (quoting Forman, 509 F.3d at 1359).
. Knights Armament Co., 647 F.Supp.2d at 1331 (internal quotation marks omitted).
. DX 99, CA03239 [Doc. 145-2],
. DX 100, CA02840 [Doc. 145-3],
. PX 214, pp. 5-6 [Doc. 145-77].
. Seee.g., DX 188 [Doc. 145-7] (Army Times, Nov. 12, 2004: “[SOCOM] has awarded FN Herstal USA, Inc., a contract to produce SOF Combat Assault Rifles, or SCAR, for its elite forces.”); DX 190 [Doc. 145-8] (Army Times, July 21, 2006: "Fourteen members of the House and Senate attended the July 13 event to familiarize themselves with the Special Operations Forces Combat Assault Rifle or SCAR.”); PX 42 (Defense News, Oct. 9, 2006: “The addition to the 2007 Pentagon spending plan will pay for the operational test phase of the Special Operations Forces Combat Assault Rifle program (SCAR).”); PX 48, p. 2 (Janes Defense Review, October 5, 2005: "To complicate matters further, a different competition has.been running in parallel for a. new rifle for [SOCOM] forces under the designation Special Operations Forces Combat Assault Rifle (SCAR or SCR).”) (emphasis added); PX 56, p.l (Shotgun Illustrated, August 2009: “SCAR (SOF Combat Assault Rifle)”); PX 214, p,5 (Combat Arms, July 2006: "In 2002 a requirement was established for a new combat rifle to replace the M4A1 Carbine for SOCOM’s Special Forces, Called the Special Operations Forces Combat Assault Rifle (SCAR, or SofCAR)....”).
.Hochstrate Dep. 20:15-18.
. See, e.g., Forman, 509 F.3d at 1360 (finding that party failed to show “WSI” as abbreviation for "Welding Services Inc.” had a distinct meaning apart from the underlying phrase because advertising material displayed the WSI logo next to the underlying phrase); Knights Armament Co., 647 F.Supp.2d at 1331 (finding that party failed to show "UNS” had a distinct meaning where the parly "consistently use[d] UNS in conjunction with and as an abbreviation of ‘Universal Night Sight.’ ”).
. DX182, CA00133.
. See, e.g., PX 75, PX 134, PX 222.
. FN argues that SCAR is inherently distinctive because the term "scar” has a commonly known, ordinary meaning in the English language that has no direct connection to firearms. While the Court recognizes the dual meaning of the word, the evidence of record shows a conscious effort by FN and others in the industry through advertisements, articles, and printed materials to associate SCAR with "Special Operations Forces Combat Assault Rifle” or "Special Combat Assault Rifle.” Given the pervasive association of SCAR with its underlying phrase, the Court cannot finds that the mark is inherently distinctive merely because it is a common word in the English language.
. Gift of Learning Found., Inc., 329 F.3d at 800.
. Id.
. See id. (citing J.T. McCarthy, McCarthy on Trademarks and Unfair Competition § 16:34 (4th ed.)).
. In fact, courts have found far shorter periods of time sufficient to create secondary meaning in a mark or trade dress. See, e.g., Maternally Yours v. Your Maternity Shop, 234 F.2d 538, 541, 544 (2d Cir. 1956) (finding mark acquired distinctiveness within eleven months); LA. Gear, Inc. v. Thom McAnn Shoe Co., 12 U.S.P.Q.2d 1001, 1010-11 (S.D.NX 1989) (finding shoe design acquired distinctiveness after only five months), rev’d in part on other grounds, 988 F.2d 1117 (Fed.Cir. 1993); Karen Indus. v. Chiaverotti, 181 F.Supp. 827, 829 (E.D.Wis. 1960) (finding acquired distinctiveness ten'months after introduction of the plaintiff's product).
. See Inmuno Vital, Inc. v. Golden Sun, Inc., 49 F.Supp.2d 1344, 1357 (S.D.Fla. 1997) (finding large volume of sales was "significant .evidence” of secondary meaning); Robarb Inc. v. Pool Builders Supply of Carolinas Inc., No. 1:87-CV-2012-HTW, 1991 WL 335811, at *4 (N.D.Ga. Oct. 31, 1991) aff'd sub nom. 996 F.2d 1231 (11th Cir. 1993) (finding extensive sales contributed to secondary meaning); Blue Bell, Inc. v. Ruesman, 335 F.Supp. 236, 239 (N.D.Ga. 1971) (finding that WRANGLER mark acquired secondary meaning through extensive sales and advertising).
. See Dyneer Corp., 37 U.S.P.Q.2d 1251, 1256 (P.T.O. Aug. 22, 1995) (finding promotions to a small number of "immediately recognizable major manufacturing concerns in the United States” including Ford, General Motors, and Chrysler, was sufficient analogous use to establish priority).
. 2 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition § 15:57 (4th ed.),
. Robarb Inc., 1991 WL 335811, at *17 n. 5 (citing Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 716 F.2d 854, 860 (11th Cir. 1983)); see also Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9th Cir. 1989) ("[P]roof of copying strongly supports an inference of’secondary meaning.”). The Court, however, recognizes that, in this Circuit, proof of intentional copying alone does not conclusively establish secondary meaning. See Brooks Shoe, 716 F.2d at 860.
. See Vail Associates, Inc, v. Vend-Tel-Co., 516 F.3d 853, 867 (10th Cir. 2008); DeGidio v. W. Grp. Corp., 355 F.3d 506, 513 (6th Cir. 2004); Spraying Sys. Co. v. Delavan, Inc., 975 F.2d 387, 393 (7th Cir. 1992); see also Colt Def. LLC, 486 F.3d at 706 (“[T]he more inem-' bers of the public see a term used by competitors in the field, the 'less likely they will be to identify the term with one particular producer.”) (internal quotation marks and citation omitted).
. Scarves by Vera, Inc. v. Todo Imports Ltd. (Inc.), 544 F.2d 1167, 1173 (2d Cir. 1976) ("The significance of third-party trademarks depends wholly upon their usage. Defendant , introduced no evidence that these trademarks were actually used by third parties, that they were well promoted or that they were recognized by consumers.”); see also 2 J.T. McCarthy on Trademarks and Unfair Competition § 11:88 (4th ed.);
. Michael Caruso & Co. v. Estefan Enterprises, Inc., 994 F.Supp. 1454, 1462 (S.D.Fla. 1998) (quoting The Sports Authority, Inc. v. Prime Hospitality Corp., 89 F.3d 955, 964 (2d Cir. 1996)), aff'd sub nom., Caruso v. Estefan, 166 F.3d 353 (11th Cir. 1998); see also Frehling Enterprises, Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1340 (11th Cir. 1999).
. See State of Fla. v. Real Juices, Inc., 330 F.Supp. 428, 433 (M.D.Fla. 1971) ("Good faith use is a requirement for gaining trademark rights.”).
. Gift of Learning Found., Inc., 329 F.3d at 797 (citing 15 U.S.C. § 1125(a)).
. Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1026 n. 14 (11th Cir. 1989); see also Boston Professional Hockey Ass'n v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 1010 (5th Cir. 1975) ("As a general rule ... the same facts which would support an action for trademark infringement would also support an action for unfair competition.”).
. Univ. of Georgia Athletic Ass’n v. Laite, 756 F.2d 1535, 1539 n. 11 (11th Cir. 1985) (the standards governing Georgia state law claims for trademark infringement, deceptive trade practices, and unfair competition are "similar, if not identical, to those under the Lanham Act.”); see also Planetary Motion, 261 F.3d at 1193 n. 4 (11th Cir. 2001) ("Courts may use an analysis of federal infringement claims as a "measuring stick” in evaluating the merits of state law claims of unfair competition.”).
Reference
- Full Case Name
- FN HERSTAL, S.A. v. CLYDE ARMORY, INC.
- Cited By
- 4 cases
- Status
- Published