Trademark Battle SCARs Between Assault Rifle Makers

A trademark dispute between assault rifle makers turned on whether promotional activities associated with an unregistered mark having no public sales are sufficient to establish prior analogous use, and whether that mark could acquire distinctiveness through secondary meaning based at least in part on these promotional activities. FN Herstal SA v. Clyde Armory Inc., 2016 WL 5390341 (11th Cir. Sept. 27, 2016), was an appeal of a bench trial verdict in a trademark infringement action brought by FN Herstal (FN) against Clyde Armory Inc. (Clyde Armory), which arose out of the parties’ competing use of the marks, “SCAR” and “SCAR-Stock,” in the firearms industry.

In affirming the judgment, the Eleventh Circuit concluded that although FN did not release the civilian version of its SCAR rifles until 2008, it was able to establish prior analogous use based on its sales volumes of a military variant, extensive media coverage and extensive promotional activities related to its forthcoming civilian rifle product. These same activities provided a basis for the court to conclude that FN’s SCAR mark had acquired distinctiveness through secondary meaning.

In 2004, FN—a Belgian firearms and weapons manufacturer—was awarded a 10-year contract by the United States Special Operations Command to manufacture what it dubbed the “Special Operations Forces Combat Assault Rifle.” In February 2005, FN began promoting its SCAR rifle to law enforcement and civilians, even though FN did not yet have a civilian version of the weapon. In fact, FN did not release the civilian version until 2008. However, FN sold more than $11 million in SCAR rifles and accessories to the U.S. military by November 2007.

In 2006, Clyde Armory—a firearms retailer located in Georgia—selected the names SCAR-Stock and SCAR-CQB-Stock for its replacement stocks and began shipping products to consumers in September 2006.

After Clyde Armory refused FN’s demands to cease and desist, FN sued Clyde Armory for trademark infringement. Clyde Armory asserted affirmative defenses based on priority of its use of the SCAR-Stock mark and FN’s unlawful use of the SCAR mark.

The Eleventh Circuit agreed with the district court’s decision that a jury trial was unnecessary because the district court correctly determined that the issues were purely equitable in nature.

In evaluating FN’s analogous use claim, the court examined whether the use had “substantial impact on the purchasing public,” and whether it was “open and notorious [or] of such a nature and extent that the mark has become popularized in the public mind” to identify the goods with the mark’s adopter. The Eleventh Circuit reasoned that although actual sales were not made until late 2008, FN’s promotional activities in 2005 and 2006 amounted to analogous use because they sufficiently created an association in the public’s mind that identified the SCAR rifles with FN. Clyde Armory argued that sales solely to a single governmental entity should not constitute “use in commerce” but the court said the facts supported the conclusion that the use was “nonetheless sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind.” The Eleventh Circuit then turned to the question of whether FN’s SCAR mark acquired distinctiveness through secondary meaning before Clyde Armory began using SCAR-Stock. The Eleventh Circuit sided with the district court’s finding that the SCAR mark acquired secondary meaning before Clyde Armory began using SCAR-Stock in September 2006. The court reasoned that FN sold millions of dollars of SCAR rifles to the U.S. military and created a connection in the public’s mind because of the extensive media coverage it attracted for being the winner of the government contract.

Posted by Nash Zogaib.

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