Firearms manufacturer FN Herstal (“FN”) had superior rights in the mark SCAR based on its prior use of the mark for rifles, the federal district court in Athens, Georgia, has ruled after a bench trial. FM’s sales of rifles to the U.S. military under the SCAR mark were sufficiently public to constitute use in commerce for the purpose of establishing priority. FN was granted an injunction barring firearms retailer Clyde Armory from using the mark SCAR-Stock on replacement gun stocks, or any other mark that was confusingly similar to FN’s SCAR mark (FN Herstal, S.A. v. Clyde Armory, Inc., August 20, 2015, Royal, C.).
Parties. FN manufactured and distributed a full range of firearms and accessories for the military, law enforcement, and civilian consumers in the United States. Clyde Armory sold firearms and other accessories to law enforcement and civilian consumers.
FN’s SCAR rifles. FN’s SCAR rifles were designed and manufactured in response to a solicitation from the United States Special Operations Forces Command (SOCOM) requesting bids from firearms manufacturers to create a new combat assault rifle for the U.S. military. The solicitation, along with other documents issued by SOCOM, referred to the rifle as the “Special Operations Forces Combat Assault Rifle,” abbreviated as the “SCAR.” The competition initiated by SOCOM’s solicitation was known in the firearms industry as the “SCAR Program.”
FN, along with other firearms makers, submitted SCAR prototypes to SOCOM in 2004, which were labeled with the SCAR trademark. SOCOM awarded a 10-year development contract for the SCAR to FN on November 5, 2004. SOCOM ordered over $634,000 of SCAR firearms and attachments. FN sold and shipped rifles to the U.S. military throughout 2004, 2005, and 2006. By November 5, 2007, FN had sold over $11 million of SCAR rifles and accessories to U.S. military agencies.
The SCAR was the first rifle procured by the U.S. military through a full and open competition since the adoption of the M16 in the mid-1960s. The program received significant media coverage in the firearms industry, and various magazine and newspaper articles tracked the SCAR rifle’s development. Each of these articles credited FN with developing the SCAR.
As was customary in the industry, FN developed versions of the SCAR for nonmilitary consumers. FN began promoting its SCAR rifles to law enforcement and civilian consumers in 2005 but did not yet have a semi-automatic version of the SCAR available for purchase by civilians. Prior to that time, however, FN displayed and promoted full automatic versions of the SCAR—which could only be purchased by military and law enforcement customers—at hundreds of trade shows and at numerous visits to gun dealers, law enforcement agencies, and distributors.
FN also promoted the SCAR at trade shows and other events by distributing hats, t-shirts, key chains, and other marketing materials bearing the SCAR mark. A catalog distributed in 2006 by FN’s U.S. distributor, FNH USA, touted FN’s success in winning the SCAR contract. Since 2005, FN had spent one-quarter of its annual advertising budget on promotions for the SCAR.
FN received government approval to market its semi-automatic version of the SCAR to civilians in November 2008. Since that time, it had sold more than $100 million of SCAR firearms in the United States.
FN’s registered SCAR marks. SCAR obtained two trademark registrations from the USPTO for the SCAR mark. First, on June 15, 2010, the USPTO registered a “SCAR and design” mark in connection with firearms and related products. The registration indicated that the date of first use in commerce was November 1, 2008. Second, on February 21, 2012, the USPTO registered a “SCAR” word mark for use in connection with games, toy replicas of weapons, and related items. That registration carried a priority date of September 8, 2010.
Clyde Armory’s SCAR-Stock products and mark. In 2005, Clyde Armory began working with Sage International, Inc., on the development of a replacement stock system for certain rifles made by Sturm Ruger & Co., Inc. Sage previously had been given a contract by the U.S. Navy SEALs to produce a replacement chassis stock system for M14 rifles. Clyde Armory adopted the mark “SCAR-Stock” in April 2006 to reflect the collaborative effort of Sage and Clyde Armory in designing and manufacturing the replacement stock. “SCAR” was meant as an acronym for “Sage Clyde Armory Rifle” stock. At the time Clyde Armory adopted the mark, it was aware of the SOCOM program, knew the rifle was abbreviated as the SCAR, and knew that FN had been granted the development contract to produce the rifle.
Clyde Armory shipped its first commercial sale of SCAR-Stock products on September 18, 2006. It promoted the SCAR-Stock through online and print advertisements and at trade shows. In January 2007, Clyde Armory registered and began using the domain name “scarstock.com.” Through April 2015, Clyde Armory sold 913 units of its SCAR-Stock product for total gross revenue of approximately $450,000.
Infringement contentions. After discovering Clyde Armory’s SCAR-Stock mark, FN filed suit for trademark infringement. Clyde Armory denied liability and counterclaimed, alleging that FN’s SCAR mark infringed its SCAR-Stock mark. Both parties argued they had a superior trademark right in their respective SCAR marks, and the opposing party’s use of SCAR infringed on that right.
First use. FN was entitled to priority in its SCAR mark because it began using the mark before September 2006, when Clyde Armory filled its first customer orders, the court found. FN established its first use by clear and convincing evidence that overcame the date of first use indicated in FN’s trademark registration, November 1, 2008. FN met this burden of proof by providing evidence of its sales of firearms pursuant to the SCAR Program, widespread media attention surrounding that program, and its advertisements and other promotional activities in 2005 and 2006.
Even though FN’s initial sales were limited to the U.S. military, the sales were sufficiently public to constitute use in commerce, according to the court. The SOCOM program had been publicized extensively, and numerous media reports had given FN credit for securing the bid for the new SCAR weapon system. In addition, FN’s extensive pre-sale advertising and promotional activities for its civilian semi-automatic version of the SCAR dated back to 2005 and constituted prior use through analogous use of the mark. Moreover, the court said, FN’s sales of the semi-automatic SCAR followed the promotional activities within a commercially reasonable time.
Accordingly, FN established, by clear and convincing evidence, use of the SCAR mark dating back to its first sale of rifles to SOCOM on November 5, 2004.
Distinctiveness. FN’s SCAR mark was protectable because it had acquired distinctiveness prior to September 2006, the court held. The mark lacked inherent distinctiveness because it was merely descriptive of the type of firearm requested by the SOCOM program. However, the SCAR mark had acquired distinctiveness through secondary meaning as a result of FN’s extensive sales to the U.S. military, the publicity surrounding those sales, and FN’s promotional activities. Furthermore, the mark had become associated in the firearms industry with FN prior to Clyde Armory’s first use of SCAR-Stock. The volume of sales and the significance of the U.S. military as a firearms buyer weighed heavily in favor of finding acquired distinctiveness, the court said. In addition, because Clyde Armory was familiar with FN’s SCAR mark when it adopted its SCAR-Stock mark, there was evidence that Clyde Armory intentionally copied FN’s trademark.
Conclusion. FN was entitled to judgment in its favor on its trademark infringement claim, the court decided. Clyde Armory was ordered to cease any use of SCAR, SCAR-Stock, or any colorable imitation of those marks, in connection with the advertisement, promotion, and sale of firearms and related goods. Clyde Armory also was ordered to assign any infringing domain names to FN and to deliver up for destruction all labels, packaging, advertisements, or other materials bearing infringing marks.
The case is No. 3:12-CV-102 (CAR).
Attorneys: Boris Umansky (Ladas & Parry) for FN Herstal SA. Glenn D. Bellamy (Wood Herron & Evans) for Clyde Armory Inc.
Companies: FN Herstal SA; Clyde Armory Inc.
MainStory: TopStory Trademark GeorgiaNews
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