David Lilenfeld Blog The intellectual property blog of David Lilenfeld


Trademark Office: PRINCESS KATE and ROYAL KATE Unregistrable

Nieves & Nieves LLC, Applicant, filed an intent-to-use application to register the trademarks PRINCESS KATE and ROYAL KATE. The Trademark Trial and Appeal Board refused to register the trademarks PRINCESS KATE and ROYAL KATE for clothing, jewelry, handbags, and bedding on the grounds that the trademarks falsely suggest a connection with the Duchess of Cambridge, Kate Middleton. The Trademark Trial and Appeal Board found the trademarks to violate Section 2(a) and furthermore violated Section 2(c) because the trademarks include a name of a living person, Kate Middleton, without her consent.

Kate Middleton

Photo courtesy of Ricky Wilson

The Examining Attorney submitted evidence from foreign news sources, which had probative value because this case concerns perception of the United States public regarding the identity of a celebrity.

The Trademark Trial and Appeal Board determined the trademarks PRINCESS KATE and ROYAL KATE falsely suggested a connection between the Applicant and Kate Middleton by applying a four-part test:

(1) whether the trademarks are the same as or a close approximation of Kate Middleton's previously used name or identity;

(2) whether the trademarks would be recognized as such by purchasers, in that it points uniquely and unmistakably to Kate Middleton;

(3) whether she is not connected with the activities performed by the applicant under the trademarks; and

(4) whether Kate Middleton's name is of sufficient fame or reputation that when the trademarks are used with applicant’s goods, a connection with her would be presumed.

The Applicant argued that the trademarks PRINCESS KATE and ROYAL KATE are not similar to Kate Middleton’s name because she is a duchess and not a princess. However, a term can be considered the identity of a person even if her name is not used.

Various media sources have referred to Kate Middleton as “Princess Kate” and “Royal Kate” thus making the trademarks close approximations of the identity of Kate Middleton. The trademarks PRINCESS KATE and ROYAL KATE unmistakably refer to Kate Middleton because she was known as a fashion trendsetter.

The Trademark Trial and Appeal Board found that both the trademarks falsely suggested a connection with Kate Middleton and affirmed the Section 2 (a) refusal. The Board refused registration of the trademarks on the grounds that Kate Middleton, as a member of the British Royal Family, was the subject of public interest. Her identity was of sufficient fame that when the trademarks are used it is likely that people will connect them to her.

Section 2(c) bars registration of a trademark that has a name identifying a living person except by his or her written consent. Consent is required only if the person named in the trademark will be associated with the trademark either because:  (1) the person is so well known that the public would reasonably assume a connection between the person and the goods or services; or (2) the individual is publicly connected with the business in which the mark is used. It is important to note, however, that when the person is famous it is not necessary to show a connection between the goods and the person.

The Trademark Trial and Appeal Board held that the trademarks PRINCESS KATE and ROYAL KATE consisted of the name of a living person and because Kate Middleton has not consented to the use and registration of the names the TTAB refused to register the trademarks.


Trademark fight: NC State and KeukaCollege Battle Over WOLFPACK

Was @PackAthletics right to force @KeukaCollege to drop WOLFPACK as its nickname/trademark?

According to its website, North Carolina State University adopted the WOLFPACK nickname for their sports teams in 1921.  Fast forward to 2016 and apparently North Carolina State University thought it was time to act.  NC State “lawyered up” and compelled the small, upstate New York liberal arts college to drop WOLFPACK. Feeling cornered by the Big Bad Wolf, the college acquiesced and is now known as the Wolves. The colleges will not change its logo, which depicts a threatening canis lupus.

I used my Twitter account (David Lilenfeld Twitter post) to take an informal poll. An overwhelmingly 87 people voted that NC State overstepped, while only 12 people thought NC State did the right thing. My next idea is for the two to settle this on the basketball court – winner gets the name, loser rebrands. Game on!

David Lilenfeld

Twitter Poll Results -- Overwhelming


Trademark Office Rules Dumbbells and Soccer Goals Unrelated

The Trademark Office reversed a Section 2 (d) refusal to register the trademark QUIK-CHANGE for dumbbell systems finding the trademark is not likely to cause confusion with the already registered trademark KWIK CHANGE for soccer goals. Plaintiff, Hoist Fitness System, applied to register the trademark QUIK-CHANGE for exercise equipment, mainly a dumbbell system with a handle, weights and a stand.

KWICK CHANGE soccer goal

KWICK CHANGE soccer goal

Quick-Change dumbbell system

Quick-Change dumbbell system

The Examining Attorney refused to register the trademark QUIK-CHANGE because the trademark was merely identical in appearance and would be found in the same sporting goods market as the trademark KWIK CHANGE. Applicant pointed out that the trademarks are spelled differently and that the equipment for soccer and weight training are different.

Although the Trademark Office agreed with the PTO that the trademarks have the same meaning and pronunciation, the Trademark Office recognized the trademark is on the Supplemental Register, which is an admission that the trademark is descriptive. The Trademark Office therefore took into consideration the descriptiveness of the trademark as well as the fact that the applicant’s trademark is at least suggestive of the fact that its weight is subject to change.

The Trademark Office also considered the issue of whether the goods are related and if they are related how closely they are related. The Board pointed out the intent-to-use applications and the non-use based registrations are not entitled to much weight. The most pertinent registrations are use-based registrations but these appear to be house marks. Even though they may show there is some relationship between sporting goods, it is hardly evidence that goods as different as soccer goals and dumbbells are closely related.

Just because goods are sold in the same stores or on the same websites does not prove that the goods are related. Soccer and exercise products can be sold on the same website like e-bay without demonstrating that the sources of the products are associated or related.

In conclusion, based on the nature of the trademarks and the fact that the goods are not closely related, the Trademark Office held that confusion was not likely between the trademark QUIK-CHANGE and the registered trademark KWIK CHANGE.


“Consumer degree of care” — another likelihood of confusion factor

Here we move on to the seventh factor in the likelihood of confusion (based on the 9th Circuit's view).  How much care do consumers pay when purchasing the respective products of the parties?

7.  Consumer degree of care

“In analyzing the degree of care that a consumer might exercise in purchasing the parties' goods, the question is whether a ‘reasonably prudent consumer’ would take the time to distinguish between the two product lines. Surfvivor Media, Inc., 406 F.3d at 634. “[T]he standard used by the courts is the typical buyer exercising ordinary caution.

[W]hen the goods are expensive, the buyer can be expected to exercise greater care in his purchases . . . .”  Network Automation, Inc., 638 F.3d at 1152.  Again, the parties present conflicting evidence as to the degree of care consumers of their products are likely to exercise. Top Shelf’s expert opines that kombucha is a “niche product” and that the price point of Clearly Kombucha is high enough, relative to other bottled beverages, to foster a relatively greater degree of care among consumers. (See Silverman Rep. ¶¶ 55-56.) Top Shelf’s founder testifies that its clients are particularly health-conscious, and therefore are more discerning when choosing bottled beverages. (Cargle Decl. ¶ 20.) On the other hand, Clearly Canadian points to evidence showing that Top Shelf’s beverages have been sold at a variety of price points, ranging on the low end from $1.50 to $3.00. (See Supp. Resp. at 12-13).

“With respect to small, inexpensive goods . . . the consumer is likely to exercise very little care.” Surfvivor Media, Inc, 406 F.3d at 634; see also CytoSport, Inc. v. Vital Pharm., Inc., 617 F. Supp. 2d 1051, 1076 (E.D. Cal. 2009) (finding a low degree of care with respect to bottled drinks costing between $3.00 and $5.00). A jury reviewing the parties’ evidence could reasonably find that consumers purchasing Clearly Canadian and Clearly Kombucha beverages exercise a low degree of care. Therefore, for the purposes of summary judgment, this factor weighs in Clearly Food’s favor.


“Clearly Canadian” Likelihood of Confusion – Similarity of Trademarks

David Lilenfeld breaks down the likelihood of confusion section of the court's ruling in this trademark infringement case. The case pits CLEARLY CANADIAN against CLEARLY KUCHABU. In this post, the similarity of the trademarks are assessed.

E.        Infringement

Top Shelf also moves for summary judgment on Clearly Food’s trademark infringement claims. (See Mot. at 19-22.) To assess whether a defendant has infringed a plaintiff’s trademark, courts apply a “likelihood of confusion” test that asks whether use of the plaintiff’s trademark by the defendant is likely to cause confusion or to cause mistake, or to deceive as to the affiliation, connection, or association of the two products.”5  Mattel, Inc. v. Walking Mountain Productions, 353 F.3d 792, 806-07 (9th Cir. 2003); see also New W. Corp. v. NYM Co. of Calif., Inc., 595 F.2d 1194, 1201 (9th Cir. 1997). (David Lilenfeld: although the factors can vary from circuit-to-circuit, all eleven circuits require a likelihood of confusion analysis in trademark infringement cases).

(David Lilenfeld: Clearly Food brought claims under Sections 32 of the Lanham Act, 15 U.S.C. § 1114(1), and 43 of the Lanham Act, 15 U.S.C. § 1125(a)(1)).  (See generally Compl.) Although Section 32 provides protection only to registered marks and Section 43 provides protection to unregistered marks, with respect to proving infringement, the same “likelihood of confusion” standard applies to both    provisions.  See GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1207 (9th Cir. 2000); Brookfield Commc’ns, Inc., v. West Coast Entm’t Corp., 174 F.3d 1036, 1046-47 n.8 (9th Cir.1999).  As such, the court’s analysis of the “likelihood of confusion” standard is independent of the prospective outcome of Top Shelf’s cancellation-of-registration claim.  See Grupo Gigante SA De CV v. Dallo & Co., 391 F.3d 1088, 1108 (9th Cir. 2004) (“Ultimately, very little turns on the cancellation-of-registration claim because registration is not necessary to establish trademark protection under federal . . . law.”).

The Ninth Circuit has developed an eight-factor (David Lilenfeld: the number of factors can vary from circuit-to-circuit, but are non-exhaustive) test to guide courts in assessing likelihood of confusion. Id. (citing AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49    (9th Cir.1979), abrogated on other grounds by Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792, 810 n.19 (9th Cir. 2003)). The non-exclusive factors include (1) strength of the protected mark, (2) proximity and relatedness of the goods, (3) type of goods and degree of consumer care, (4) similarity of the protected mark and the allegedly infringing mark, (5) marketing channel convergence, (6) evidence of actual consumer confusion, (7) the defendant’s intent in selecting the allegedly infringing mark, and (8) likelihood of product expansion. Pom Wonderful LLC v. Hubbard, 775 F.3d 1118, 1125 (9th Cir.  2014).

(David M. Lilenfeld: as the court will point out, all likelihood of confusion analyses are facts intensive). The “ultimate question of likelihood of confusion is predominantly factual in nature, as is each factor.” Entrepreneur Media, 279 F.3d at 1141. Rather than mechanically identifying the number of factors that favor of each party, a court must  “consider what each factor, and—more importantly—what the analysis as a whole, reveals about the ultimate question . . . : the likelihood of consumer confusion as to the origin of the product or service bearing the allegedly infringing mark.” Id. At the end of the day, “it is the totality of facts in a given case that is dispositive.” Pom Wonderful LLC, 775 F.3d at 1125.

1.  Similarity of the marks (David Lilenfeld: Factor #1 - how similar are the trademarks)

“The greater the similarity between the two marks at issue, the greater the likelihood of confusion.” GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000). The Ninth Circuit has “developed three axioms that apply to the ‘similarity’ analysis: 1) Marks should be considered in their entirety and as they appear in the marketplace; 2) Similarity is best adjudged by appearance, sound, and meaning; and, 3) Similarities weigh more heavily than differences.” Entrepreneur Media, Inc., 279 F.3d at 1144.

(David Lilenfeld: instead of focusing on the trademarks here, it delves into how the trademarks are presented (i.e., screen-printing v. paper label)). First and foremost, the court notes that both marks appear in the marketplace primarily as labels on the bottles of single-serve beverages. (See Mot. at 21 (showing pictures of the trademarks alone and as used on bottles).) The salient differences are that the Clearly Canadian logo is screen printed, whereas the Clearly Kombucha logo is a paper label, and the Clearly Canadian bottle has a “teardrop” shape, whereas the Clearly Kombucha label has a traditional “beer bottle” shape. (See Ledden Decl. Ex. 21 (side-by-side comparison of the bottled beverages).) Second, the court notes that the appearance of the trademarks as used on the bottle labels is not overly similar: the Clearly Canadian label has horizontal text and a picture of the fruit that represent’s the beverage’s flavor; the Clearly Kombucha label has vertical text and an apparently whimsical drawing; the fonts are also different.6  (See id.) Moreover, the logos as used separately from the bottles are not overly similar: Clearly Canadian’s logo consists of blue, horizontal text, (David Lilenfeld: the court seems to be heading toward no likelihood of confusion conclusion) and a red bottle with a maple leaf; Clearly Kombucha’s label is a black, oversized letter “C” with the work “Clearly” written vertically inside the “C” and the word “kombucha” written in a different font outside of the “C.” (Compare Ledden Decl. Ex. 19 with

(David Lilenfeld: Obviously, the first word in each mark is identical sounding, but we don't normally see courts break down the wounds of words -- instead opting  to assess the sound of the word in its entirety) On the other hand, the sound of the trademarks is quite similar: both begin with the word “clearly” and end with a word that begins with a phonetic hard “c” sound. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372 (Fed. Cir. 2005) (finding that the first word in the trademark constituted the “dominant feature in the commercial impression” created by the mark). In addition, as Clearly Food points out, the common word “clearly” is the operative word (David Lilenfeld: determining the "operative" word is tough and which it is in this case is debatable) in both trademarks: the Trademark Office required both registrants to disclaim rights to the use  of the words “Canadian” and “kombucha” without the preceding word “clearly.” (Req. for Not. Ex. C; Ledden Decl. Ex. 2 (Appendix A).) Last, the meaning of the trademarks is also similar, insofar as they both rely on the word “clearly” to describe an aspect of their product. (See Zarrow Dep. at 16:22-17:2.)

Overall, the court finds that the third axiom—that similarities weigh more heavily than differences—controls the result here. Although Top Shelf has identified certain differences between the marks, a reasonable jury could find that the similarities in how the marks are used in the marketplace and the sound and meaning of the marks outweigh those differences. See Entrepreneur Media, Inc., 279 F.3d at 1144. Therefore, the court concludes that a reasonable jury could find that the marks are similar. As such, for summary judgment purposes, this factor weighs in Clearly Food’s favor. (David Lilenfeld: I am surprised at this result.  I think the trademarks are quite different in appearance and sound).



Trademark Office Affirms Refusal to Register MAN O’WAR for Golf Equipment

Centex/Taylor, LLC filed an application to register the trademark MAN O’WAR for golf equipment. The trademark was refused under Section 2 (d) of the Trademark Act, 15 U.S.C. § 1052 (d) on the grounds that it resembled the already registered mark, MANOWAR, and thus is likely to cause confusion or deception.

The Examining Attorney presented evidence to show Centex/Taylor’s golf equipment and the already registered clothing items are related through third-party registrations. The Examining Attorney successfully demonstrated that the entities had registered a single mark for both golf items and clothing items. According to In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993), third-party registrations, which include different items and which are based on use in commerce, suggest that the goods may have emanated from a single source.

Man O'War posted by David Lilenfeld

Man O'War (courtesy Wikipedia)

Centex/Taylor admitted the same registrant often offers golf equipment and clothing items with identical trademarks. Also, past registrations serve to suggest that the goods emanate from the same source. Centex/Taylor’s arguments concerning use in the marketplace of the registrant’s mark are not persuasive. An applicant is not permitted to restrict the scope of the goods covered in the registrant’s registration by extrinsic evidence or unsupported statements. Therefore, Centex/Taylor’s unsupported statements do not rebut the Examining Attorney’s belief that these goods are related. Furthermore, since the registered goods are not limited to any specific channels of trade, there would be an overlap in trade channels.

While the appearance of Centex/Taylor’s trademark differs slightly from the trademark in the registration mainly because of an apostrophe in Centex/Taylor’s mark, the literal portion of the trademark is identical and the trademark sounds the same. Thus, Centex/Taylor did not persuade the TTAB that consumers would think of a racehorse when the mark is used in connection with golf equipment.

“TTAB ultimately affirmed the refusal to register because the marks are confusingly similar, the goods are related and the channels of trade are overlapping.  A fairly straightforward decision after all,” said David Lilenfeld, founder of intellectual property law firm, Lilenfeld PC.


Trademark Office Rules ORION for Fishing Rods is Unregisterable

L.L. Bean sought to register the trademark ORION for fishing rods but was refused by the Trademark Office because the trademark was confusingly similar to the identical trademark already registered for golf clubs.

The Trademark Office relied upon Section 2(d) of the Tradetrademark Act, 15 U.S.C. § 1052 (d) likelihood of confusion when refusing to register ORION for fishing rods.

L.L. Bean argued that the goods in question, namely the fishing rods and the golf clubs, are not related, that the trade channels cannot overlap, and that the consumers for these goods are sophisticated and discriminating. Applicant also alleged that the use of its house trademark in connection with the involved trademark on applicant’s goods reduces the likelihood of confusion between the registered trademark and the applicant’s trademark. Lastly, L.L. Bean argued that, should there be a finding of likelihood of confusion, L.L. Bean should be permitted to amend its application limiting the channels of trade of the goods to L.L. Bean outlets.

On the contrary, the Examining Attorney, Georgia Ann Carty Ellis, contended that ORION is a strong arbitrary trademark for sporting goods, that L.L. Bean presented an identical trademark, and that its use of its house trademark could not reduce the likelihood of confusion. The Examining Attorney relied upon 140 third-party registrations covering golf clubs and fishing rods to show that customers are often exposed to golf and fishing goods sold in the same market.

The Trademark Office’s decision under Section 2 (d) is based upon an analysis of the likelihood of confusion factors detailed in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The du Pont factors all favor the position taken by the Examining Attorney that the trademarks are identical. Thus, the TTAB found that even when the relationship between the goods is not as closely related there can still be a finding of common source.

There is no per se rule that all sporting tools are related. However, the Examining Attorney noted third-party registrations show that goods can come from the same source and be offered under the same trademark.

Regarding the du Pont factor that focused on the trade channels, L.L. Bean argued that it established its own channels of trade because L.L. Bean markets and sells all of its products through L.L. Bean stores, catalogs and websites. The TTAB recognized that even if the goods were not sold in the same store, they would be sold in the same type of stores.

Lastly, L.L. Bean offered to amend its identification of goods to limit the channels of trade. The TTAB agreed with the PTO that the amendment was untimely. Nevertheless, even if the amendment were allowed it would not avoid a likelihood of confusion. In conclusion, when consumers who are familiar with ORION golf clubs learn of ORION fishing rods, they are likely to believe there is a connection between the goods.


Sovereign Military Hospitaller Oder v. Florida Priory of the Knights Hospitallers

This case has been a long-standing trademark battle between two religious organizations with long and similar names:

(1) Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta and Florida Priory of the Knights Hospitallers of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, the Ecumenical Order.

(2) Sovereign Military Hospitaller Order of Saint John of Jerusalem of Rhodes and of Malta

The 11th Circuit Court of Appeals overruled a district court’s decision that one branch of the Knights of Malta committed fraud when it filed its federal trademark application in 1958. Another branch of the Knights of Malta sued for trademark infringement alleging false advertising under the Lanham Act, 15 U.S.C. § 1051 and state law claims for Florida Deceptive and Unfair Trade Practices Act (FDUTPA), Fla. Stat. § 501.201. Fraud requires a showing of the registrant’s awareness of competing marks.

The district court found the plaintiff’s federally registered trademark was obtained fraudulently because the plaintiff knew of the defendant’s prior use of the mark. Judge Charles Reginald Wilson of the appeals court first reversed the fraud judgment. According to 15 U.S.C. § 1064 (3), 1119, “a party may petition to cancel a registered mark on the ground that the registration was procured by fraud.” It was held in Angel Flight of Ga., Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1209 (11th Cir. 2008) that an applicant commits fraud when he “knowingly makes false, material representations of fact in connection with an application for a registered mark.” Fraud requires a purpose or intent to deceive the PTO. The defendant, the party alleging the fraud, has the burden of proving this claim by clear and convincing evidence.

Furthermore, the appellate court overruled the district court’s finding of fraud because the facts show the person who signed the trademark application did not know about the use of a similar mark. If the declarant believes the applicant has a superior right to use the mark, there is no fraud even if the declarant is mistaken.

Also, the district court found plaintiff’s failure to inform defendant is evidence of willful blindness. To rule on the knowledge element of fraud, the district court relied upon recent case law from Global-Tech Appliances Inc. v. SEB S.A., 131 S.Ct. 2060, 98 USPQ2d 1665 (U.S. 2011) that willful blindness could satisfy actual knowledge as to liability for inducing infringement. The appeals court rejected the effort to apply this case law to a trademark case because the case law is from a patent law case. Courts do not automatically apply a standard from one area of intellectual property law to another area of intellectual property law.

In conclusion, the 11th Circuit found in favor of the plaintiff because a lack of clear and convincing evidence. On remand, the district court misapplied several factors in its analysis of likelihood of confusion, incorrectly assessed the defense of prior use, relied upon testimony that the appellate court previously deemed inadmissible and misinterpreted the 11th Circuit’s instructions about consulting facts outside the record.


David Lilenfeld Breaks Down TTAB’s Reversal Re: KID TENNIS

The Trademark Office reversed a Section 2 (d) refusal of the KID TENNIS mark because they found it dissimilar to the TENNISKIDS mark. Even though the brands are selling nearly identical goods, the Trademark Office ruled that KID TENNIS is not likely to cause confusion with TENNISKIDS.

The Board of the Trademark Office disagreed with the Examining Attorney’s belief that the wording of KIDS TENNIS is the dominant feature of the mark’s commercial impression. In this case, the wording as well as the design creates the Applicant’s trademark.

Furthermore, the Trademark Office was not convinced that TENNISKIDS was registered in standard character form. The trademark owner’s mark is so stylized that it does not fall within the range of reasonable manners of display that should be reserved for registered standard character mark. Therefore, the Trademark Office found the marks to be visually dissimilar.

In regards to how the respective trademarks sound, the Trademark Office ruled the marks are more similar than dissimilar but found the meaning of the marks to be different. The applicant’s mark, KID TENNIS, connotes a character named “Kid Tennis” as opposed to the registered mark, TENNISKIDS, which connotes children who play tennis.

“The Trademark Office ruled that the dissimilarity of the marks outweigh other factors, but clearly from the ruling, it was a close call, said, David Lilenfeld of Lilenfeld PC.



David Lilenfeld breaks down trademark infringement case from Middle District of Georgia

In this post, David Lilenfeld breaks down the Court's opinion in the trademark infringement lawsuit FN Herstal, S.A. v. Clyde Armory, Inc., in the District Court for the Middle District of Georgia Case No. 3:12-cv-102.


This trademark infringement action is currently before the Court on Plaintiff FN Herstal, S.A.’s Motion for Summary Judgment [Doc. 85] and Defendant Clyde Armory, Inc.’s Motion for Partial Summary Judgment [Docs. 85].  Having considered the parties’ arguments, the record, and the applicable law, both Motions are DENIED.1


[David Lilenfeld: Here is not only a good review of the standard the Court uses to asses a Motion for Summary Judgment, but also the standard for Cross-Motions for Summary Judgment – very helpful]

Under Rule 56 of the Federal Rules of Civil Procedure, summary judgment must be granted “if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.”2   A genuine issue of material fact only exists when “there is sufficient evidence favoring the nonmoving party for a jury to return a verdict for that party.”3    Thus, summary judgment must be granted if there is insufficient evidence for a reasonable jury to return a verdict for the nonmoving party or, in other words, if reasonable minds could not differ as to the verdict.4    When ruling on a motion for summary judgment, the Court must view the facts in the light most favorable to the party opposing the motion.5

The  moving  party  “always  bears  the  initial  responsibility  of  informing  the district court of the basis for its motion, and identifying those portions of the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits,  if  any,  which it  believes  demonstrate the  absence  of  a  genuine  issue  of material fact” and that entitle it to a judgment as a matter of law.6    If the moving party discharges this burden, the burden then shifts to the nonmoving party to go beyond the pleadings  and  present  specific  evidence  showing  that  there  is  a  genuine  issue  of material fact.7    This evidence must consist of more than mere conclusory allegations or legal conclusions.8

The standard of review for cross‐motions for summary judgment does not differ from the standard applied when only one party files a motion, but simply requires a determination of whether either of the parties deserves judgment as a matter of law on the facts that are not disputed.9   The court must consider each motion on its own merits, resolving all reasonable inferences against the party whose motion is under consideration.10   The Eleventh Circuit has explained that “[c]ross‐motions for summary judgment will not, in themselves, warrant the court in granting summary judgment unless one of the parties is entitled to judgment as a matter of law on facts that are not genuinely disputed.”11    Cross‐motions may, however, be probative of the absence of a factual dispute where they reflect general agreement by the parties as to the controlling legal theories and material facts.12


[David Lilenfeld: a detailed discussion of the respective uses of the trademarks in the firearms industry begins here.  The facts are slightly more involved since one of the parties’ is a foreign corporation.]

The current trademark dispute arises out of the parties’ use of the “SCAR” and “SCAR‐Stock” trademarks in the firearms industry.  Unless otherwise indicated, the facts presented below are undisputed.

A. Plaintiff’s Use of SCAR

Plaintiff is a firearms and weapons manufacturer incorporated under the laws of Belgium with  its principal place of  business  in Herstal,  Belgium.13   Plaintiff manufactures and distributes a full range of firearms and accessories for defense, law enforcement, hunting, marksmanship, and others having an interest in acquiring such firearms and accessories.14  The current dispute arises out of Plaintiff’s development and branding of its SCAR rifle.

1.   Plaintiff’s Sales to the US Military

[David Lilenfeld: This portion is important for the interplay between trademarks and acronyms, an issue many people confuse.]

In 2003, the United States Special Operations Command (“USSOCOM”) initiated the Special Operation Forces (“SOF”) Combat Assault Rifle Program, which was abbreviated at times as the “SCAR” Program.15     Publicized as the first full and open competition  since  the  M16  trials  held  in  the  mid‐1960s,  the  USSOCOM  Program solicited an open bid to firearm manufacturers to design a new modular assault rifle system for the US Military.16    Defendant contends that the USSOCOM Program serves as the origin of the SCAR mark at issue in this case.  [David Lilenfeld: here is the first mention of Dates of First Use – an important issue in almost every trademark infringement case]. Plaintiff, however, represents that it adopted the SCAR mark in 2003 prior to the USSOCOM Program to designate a specifically designed weapon for commercialization in the North American market and abroad.17

Pursuant to the Program, USSOCOM specified that the SCAR rifle would be a modular  system in  two  threshold  configurations,  a  “SCAR‐Light (SCAR‐L)” and a “SCAR‐Heavy (SCAR‐H).” 18   Both the SCAR‐L and the SCAR‐H were available in three variants: Standard (S), Close Quarter Combat (CQC), and Sniper Variant (SV).

In 2003 and 2004, Plaintiff and other firearm manufacturers submitted prototypes of rifles meeting USSOCOM specifications.20   USSOCOM officially awarded the contract to Plaintiff to produce the SCAR rifle and attachments on November 5, 2004.21    On that same day, USSOCOM ordered over $634,000 of firearms and attachments from Plaintiff.22    Shortly thereafter, the ordered weapons were shipped to Crane, Indiana, inspected, and accepted by the US government.23     [David Lilenfeld: again, another mention of the Date of First Use]. To fulfill its obligations under the USSOCOM Program, Plaintiff shipped firearms bearing the SCAR trademark throughout 2004 and 2005 to various US military institutions, including USSOCOM, Naval Air Systems Command (“NAVAIR”) and Naval Surface Warfare Center (“NSWC”).24

Throughout 2005 and 2006, magazine and newspaper articles tracked the development of the new assault rifle for the USSOCOM Program, highlighted Plaintiff’s role in the Program, and outlined the features and benefits of the different variants and forms of the new SCAR rifle system.

2.   Promotion of Plaintiff’s SCAR Rifles

[David Lilenfeld: here the Court is discussing the breadth of use of the trademark, another issue that is important in most trademark infringement cases]. After the USSOCOM Program award, Plaintiff began promoting its SCAR mark to the wider commercial market.  In 2005 and 2006, Plaintiff promoted its SCAR rifles at trade shows and during visits to gun dealers, law enforcement agencies, stores, and distributors.26    For example, in February 2006, Plaintiff unveiled its SCAR‐Light and SCAR‐Heavy prototypes during the SHOT Show held in Las Vegas, Nevada, a major industry trade show attended by military personnel, other government agencies, law enforcement organizations, manufacturers, distributors, retailers, sportsmen, hunters, and other firearms enthusiasts.27

[David M. Lilenfeld: just as it is important to discuss what uses each party made of their respective trademarks, it is important to discuss the relevant ways in which each party does not use their respective trademarks]. During these promotional activities, it is undisputed that Plaintiff did not have a semi‐automatic version available for purchase by law enforcement and civilian consumers.   The firearms displayed at the tradeshows were fully automatic machine guns, the sale of which is restricted to military and law enforcement agencies only.28   In order for Plaintiff to sell a semi‐automatic SCAR to the civilian market, Plaintiff first needed government approval.

[David Lilenfeld: note how detailed and “granular” the Court has to get with the types *quality and quantity) of uses Plaintiff made of its trademarks]. Nevertheless, Plaintiff continued to promote its SCAR rifle to law enforcement and civilian markets.  Plaintiff distributed hats, t‐shirts, brochures, and other marketing materials bearing the SCAR mark to others in the firearm industry.30        Plaintiff even referenced the  new  SCAR rifle  in  its  2006  product  log  and  highlighted  its  role  in creating USSOCOM’s SCAR rifle.31     In several of Plaintiff’s advertisements, the SCAR mark is displayed beside or above the words “S.O.F. Combat Assault Rifle” or some variant thereof.32    Several of Plaintiff’s advertisements boast that Plaintiff’s SCAR rifle was chosen by “US Special Operations Command,”33 and three of those advertisements depict the official emblem of the U.S. Special Operation Forces for the US Military in connection with Plaintiff’s SCAR mark.34

Then, on March 2, 2006, Plaintiff issued a press release, entitled “The Making of the 21st Century Assault Rifle: SCAR SOF Combat Assault Rifle,” announcing its plan to introduce a semi‐automatic version of the SCAR “in the next two years” for law enforcement and commercial markets.35

Plaintiff began accepting orders for SCAR rifles from law enforcement agencies in either 2007 or 2008, and filled its first orders to law enforcement and civilian consumers in late 2008.36   [David Lilenfeld: amount of goods sold under a particular trademark is also very often a pertinent factor in a trademark infringement analysis]. Since that time, Plaintiff has sold nearly one hundred million dollars ($100,000,000.00) of SCAR firearms to law enforcement and civilian consumers.37

3.   Plaintiff’s Trademark and Patent Registrations

[David Lilenfeld: Obviously, trademark registrations of the parties’ is an important consideration, along with their age (typically the older the registration is the stronger it is)]. To protect its interest in the SCAR mark, Plaintiff filed three trademark applications with the United States Patent and Trademark Office (the “USPTO”).38    On April 22, 2008, Plaintiff filed the first application (the ‘575 Application) for the use of SCAR on firearms and related items, which is still pending before the USPTO.39     On January 13, 2009, Plaintiff filed a trademark application for SCAR and Design for use in connection with firearms and related items.40      The application claimed Plaintiff first used the mark in commerce on November 1, 2008.41    The USPTO registered the SCAR and Design mark on June  15,  2010  (the  ‘448 Registration).42      On January 13,  2011, Plaintiff  filed  its third trademark application for SCAR for  use  in connection with games, toy replicas of weapons, and other related items.43     The USPTO registered the SCAR mark on February 21, 2012 (the ‘728 Registration).44

In addition to registering the SCAR mark, Plaintiff obtained a design patent for its assault rifle (the ‘824 Patent) on July 19, 2011.45   On January 10, 2012, Plaintiff filed an action for patent and trade dress infringement involving the ‘824 Patent in the US District Court for the Northern District of Texas, wherein Plaintiff alleged that it “introduced the FNH SCAR (Special Combat Assault Rifle) assault rifle, today known by  two  different  models  including  the  FN  SCAR  16  and  FN  SCAR  17”  in  2009.46

Plaintiff voluntarily dismissed the Texas suit prior to service of the complaint.47

B.  Defendant’s Use of SCAR‐Stock

[David Lilenfeld: Here, the Court discusses Defendant’s uses of its trademark and the landscape of the trademark battle begins to reveal itself]. Defendant is a firearms retailer and distributor incorporated under the laws of Georgia with its principal place of business in Bogart, Georgia.48      In 2005, Andrew Clyde, Defendant’s CEO and owner, contacted John Klein, the president of Sage International, Ltd., to discuss the possibility of making replacement stock for certain rifles made by Sturm Ruger & Co., including the Mini‐14, Mini‐30, and AC‐556, among others.49     The two followed up with each other in person at the February 2006 SHOT show in Las Vegas to discuss the details of the new product.50    [David Lilenfeld: here we learn that Plaintiff’s product is different from Defendant’s trademark (rifle v. a stock for a rifle.  This is leading us down the path of “relatedness” issue). After the February 2006 SHOT Show, Defendant adopted the SCAR‐Stock mark as an acronym for “Sage Clyde Armory Rifle Stock” to refer to the new product and to reflect the collaborative effort behind the product’s design.

The testimony regarding the circumstances and purpose of adopting the SCAR‐ Stock mark, however, is somewhat disputed.  Mr. Clyde testified that before deciding to adopt the mark, he conducted several searches online through Google and the USPTO’s website to check the availability of SCAR as a viable mark and found no prior use of the mark in the firearms industry.52    However, Defendant has no documentary evidence to substantiate those searches.53   [David Lilenfeld: how often will you have documents to prove a Google search you conducted years ago?  This is a tough as.  Also, it’s the first indication see of the Judge leaning in Plaintif ’s direction]. M [David Lilenfeld: Another “bad fact” for Defendant.  The Court’s leaning begins to be unveiled]. Moreover, at the time Defendant adopted the SCAR‐Stock mark, Defendant was aware of Plaintiff’s participation in the USSOCOM Program to create the SOF Combat Assault Rifle and knew that the acronym for that rifle was SCAR.54     [David Lilenfeld: Well, this next sentence/fact might be the death knell for Defendant. Bad intent is another factor taken into consideration by courts in a trademark infringement case]. Defendant’s former Chief Operating Officer, Joshua Smith, testified that Defendant  adopted  SCAR‐Stock,  in  part,  to  take  commercial  advantage  of  the popularity  of  the  SCAR  rifles  in  the  firearms  industry.55   [David Lilenfeld: Ouch!] Mr.  Clyde,  however, specifically disclaims any such purpose in adopting the mark.

[David Lilenfeld: Clearly, Plaintiff has earlier Dates of First Use, so that does not appear to be in dispute]. By early fall of 2006, Defendant and Sage completed initial manufacturing of the SCAR‐Stock product and introduced it to the firearms market.57    On August 29, 2006, Defendant began soliciting customer orders for its SCAR‐Stock products.58    Defendant received  and  accepted  its  first  order  for  SCAR‐Stock  on  September  14,  2006.59

Defendant then shipped orders beginning the week of September 18, 2006.60     It is undisputed that the gun stock bearing Defendant’s SCAR‐Stock is not compatible with and cannot be used with Plaintiff’s SCAR rifle. From the end of 2006 through 2008, Defendant enjoyed an annual increase in sales of its SCAR‐Stock product.62      In 2009, sales dropped slightly due to the unavailability of the product and delivery issues from Sage.63    During that time, Sage had substantial orders from the military, and those orders were given priority over all other orders, including those for Defendant’s SCAR‐Stock product.64

C.  Events Leading to the Current Dispute

[David M. Lilenfeld: This letter is sent about three years after Defendant started using the SCAR trademark, but that is still not so long for Plaintiff as to be concerned about a laches defense]. On February 6, 2009, Louis Dillais, President and CEO of FNH USA, LLC, a subsidiary of Plaintiff, sent Defendant a letter asserting senior rights in the SCAR mark and demanding that Defendant cease and desist all use of its SCAR‐Stock mark.65    Mr. Clyde responded on Defendant’s behalf indicating he had no knowledge of Plaintiff’s rights in the mark and requesting documentation to support that claim.66   The following day  Defendant  filed  a  trademark  application  for  the  SCAR‐Stock  mark  (the  ‘128 Application) with the USPTO for use on “gun stocks” and claiming a first use date in commerce of September 14, 2006.67

Defendant received a reply from FNH USA68 stating that “the acronym SCAR in US Government jargon does refer to the USSOCOM Program.”69    The letter went on to state “[h]owever, in Commercial firearms use of the term SCAR has been registered by [Plaintiff], our parent company, as a Trademark.”70

Defendant then filed a Petition for Cancellation with the USPTO of Plaintiff’s '448 Registration for SCAR and Design and an Opposition to Plaintiff’s ‘575 Application 65 Def.’s Statement of Material Facts, Ex. J at CA00021 [Doc. 90‐10].

66 Id. at FN101158.

67  Umansky Decl. ¶ 12, Ex. 10 [Doc. 89‐3]. The USPTO initially denied registration of the SCAR‐Stock mark because it was merely descriptive of a feature and characteristic of the product. Def.’s Statement of Material Facts, Ex. D, p. 9 [Doc. 90‐4]. The initial refusal explained that a “scar rifle” is a modular rifle created by Plaintiff for USSOCOM to satisfy the requirements of the SCAR Program, and the “scar stock” is a gun stock that is specifically made for a “scar assault rifle.” Id. at 10.  In response to the first refusal, Defendant explained that SCAR as used in its SCAR‐Stock mark is an arbitrary acronym for “Sage/Clyde Armory Rifle” and that Defendant’s SCAR‐Stock products are not compatible with Plaintiff’s SCAR rifles. Id. at  12‐13.  Thereafter,  the  USPTO  refused  registration  of  Defendant’s  mark  on  the  grounds  that consumers would likely confuse Defendant’s mark with Plaintiff’s SCAR mark in the ‘448 Registration. Id. at 17.

68  It is unclear which individual responded on behalf of FNH USA. The letter includes a signature block

with Dillais’ name, but the handwritten signature appears to belong to someone else.

69 Def.’s Statement of Material Facts, Ex. J at CA0022 [Doc. 90‐10].

70 Id.








for SCAR.71       The USPTO suspended those proceedings pending the outcome of this






D. Procedural History



[David Lilenfeld: interesting to me that the lawsuit was filed six years after Defendant began using the allegedly infringing trademark]. On March 12, 2012, Plaintiff filed this suit in the Eastern District of Virginia against Defendant and Sage.  Thereafter, the Court dismissed Sage for lack of personal jurisdiction and transferred the remaining case against Defendant to the Northern District of Georgia.  Upon determining that Defendant’s principal place of business is located in the Middle District of Georgia, the case was transferred to this Court on August 8, 2012.

Shortly  after  the  transfer,  Plaintiff  filed  an  Amended  Complaint.    Therein, Plaintiff raises federal claims for trademark infringement, unfair competition, and dilution,73  in violation of the Lanham Act, 15 U.S.C. § 1051, et seq.  Plaintiff also raises state   law   claims   for   unfair   competition,   deceptive   trade   practices,   and   unjust enrichment.   Plaintiff seeks punitive damages and litigation expenses, including attorney’s  fees.    Plaintiff  also  seeks injunctive  relief  enjoining  Defendant  from  any further  use  of  SCAR‐Stock  and  ordering  Defendant  to  (1)  abandon  its  pending







71 Id. at pp. 9‐20.

72 Id. at pp. 21‐22.

73  In its Motion for Summary Judgment, Plaintiff represents that it is withdrawing its federal dilution claim.








trademark application for SCAR‐Stock and (2) dismiss its opposition and cancellation



petitions to Plaintiff’s ‘448 Registration and “575 Application.



Defendant asserts affirmative defenses based on priority of use in its SCAR‐Stock mark and unlawful use of the SCAR mark by Plaintiff.  In addition, Defendant raises counterclaims for federal trademark infringement and declaratory relief, seeking cancellation  of  Plaintiff’s  trademark  registrations  and  refusal  of  the  pending  ‘575

Application pursuant to 15 U.S.C. § 1119 due to Defendant’s superior rights in the



SCAR‐Stock mark and Plaintiff’s lack of bona fide use or intent to use the SCAR mark in commerce. Defendant seeks similar damages and injunctive relief.




As acknowledged by the parties, the success of all the claims and counterclaims in  this  case  depends  on  the  outcome  of  their  trademark  infringement  claims.74

Accordingly, the Court will limit its discussion to the trademark infringement issues presented.

Both parties have moved for summary judgment, each asserting a superior trademark right in the use of SCAR or SCAR‐Stock.  Plaintiff claims a superior right in its SCAR mark arguing that the mark is distinctive, and Plaintiff was the first to use the

74 Univ. of Georgia Athletic Assʹn v. Laite, 756 F.2d 1535, 1539 n.11 (11th Cir. 1985) (observing that 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, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 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.”).








mark in commerce in 2004.  Like Plaintiff, Defendant also asserts superior rights in its



SCAR‐Stock mark arguing that SCAR‐Stock is distinctive, and Defendant was the first to use the mark in commerce in September 2006.  [David Lilenfeld: Here is a sneak preview of the Court’s ruling – obviously will deny both Parties’ Motion for Summary Judgment]. For the reasons set forth below, the Court finds genuine issues of material fact exist as to which party used the mark first in commerce, and whether the parties’ SCAR and SCAR‐Stock trademarks are distinctive.

A trademark is “any word, name, symbol, or device, or any combination thereof [used] to identify and distinguish [a producer’s] goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”75     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.76     Because the parties market and sell their SCAR and SCAR‐Stock products in the firearms industry, they agree that simultaneous use of the trademarks would likely confuse the purchasing public.77

Therefore, the only issue before the Court is whether either party owns a protectable mark.  In order to establish a valid protectable trademark, a party must prove (1) it used the mark in commerce and (2) the mark is distinctive.78




75 15 U.S.C. § 1127.

76 Gift of Learning Found., Inc. v. TGC, Inc., 329 F.3d 792, 797 (11th Cir. 2003) (citing 15 U.S.C. § 1125(a)).

77  In addition to the parties’ agreement on the likelihood of confusion issue, the USPTO found consumers will likely confuse the two marks, as evidenced by its refusal to register Defendant’s SCAR‐Stock mark. See Second Office Action, Ex. D, p. 17 [Doc. 90‐4].

78 Knights Armament Co. v. Optical Sys. Tech., Inc., 654 F.3d 1179, 1188 (11th Cir. 2011).








With respect to the issue of whether a party owns a protectable trademark, the



Lanham Act provides that registration is prima facie evidence that the registrant owns the mark and has the exclusive right to use the mark.79         Accordingly, registration creates a rebuttable presumption of ownership dating back to the filing date of the application.80   Here, however, Plaintiff did not file the applications giving rise to its ‘448

Registration  and  ‘728  Registration  until  January  13,  2009  and  January  13,  2011. Defendant began using its SCAR‐Stock mark prior to either of those dates in September

2006.   The heart of this dispute centers on Plaintiff’s use of SCAR prior to September



2006  and  the  circumstances  surrounding  Defendant’s  adoption  of  the  SCAR‐Stock mark.  Because these events occurred prior to the filing of Plaintiff’s first trademark application, the presumption of ownership and exclusive use afforded to Plaintiff’s trademark registrations does not operate against these earlier uses.81

Thus, the Court now turns to the issues of which party first used the mark in commerce and whether their trademarks are distinctive.

I.          First Use in Commerce



[David Lilenfeld: This is a great Trademark 101 discussion – perfect for Chapter I of a textbook]. In determining which party has a protectable trademark, the Court first examines the trademarks’ “use in commerce.” Under common law, “actual and continuous use is required to acquire and retain a protectable interest in a trademark.”82   Under the Lanham Act, a mark is used in commerce when

(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.83



To determine whether use is sufficient to create a protectable trademark interest, the Eleventh Circuit requires a trademark claimant to show it (1) adopted the mark and (2) “used [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.”84    Courts should evaluate whether a party has met both prongs of this test by considering “the ‘totality of the circumstances’—including sales, advertisements, and distribution of goods—in order to determine whether the mark has been sufficiently used in commerce.”

[David Lilenfeld: I am regularly asked if one can file for registration of a trademark before he/she has any sales – the answer is “yes” and here is why]. Under this approach, evidence of sales is “highly persuasive,” but actual sales


are not required to prove prior use.86    When sales are absent, a party may show use by “analogous use.”  Analogous use refers to pre‐sale promotional efforts such as “advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade publications.”    When a party relies on analogous use to establish trademark rights “actual technical trademark use must follow the use analogous to trademark use within a commercially reasonable period of time.”89   Moreover, whatever activities are utilized to establish rights in a mark, such use must be continuous.90

[David Lilenfeld: this argument by Defendant is a bit bewildering.  It clearly is not the senior user of the marks that are in contention.  Defendant may be the senior use of its exact trademark, but that is not the question. The question is who is the senior user of the respective marks]. When, as here both parties claim a protectable trademark interest, the Court must determine who used the mark first.91   Not surprisingly, both parties claim to be the senior user of the mark in the firearms industry.  Plaintiff argues that it was the first to use SCAR in commerce, as evidenced by its sale of SCAR rifles to USSOCOM as well as its pre‐sale promotional activities for its civilian‐friendly SCAR rifle.  Defendant, on the other hand,  argues it  was the  first  to  use its SCAR‐Stock mark in September 2006 because Plaintiff did not have a semi‐automatic SCAR rifle available for that time.  In support of its Motion, Defendant argues the undisputed evidence shows (1) Plaintiff admitted it did not use the SCAR mark in commerce until November 1, 2008; and (2) Plaintiff’s pre‐sale promotional activities constituted unlawful use of the SCAR mark, and thus cannot create a protectable trademark interest in SCAR.  Having reviewed both arguments, the Court finds that a genuine issue of material fact remains as to which party used the mark in commerce first.

A. Plaintiff’s Admission of First Use Date



Defendant first argues that Plaintiff cannot claim prior use in its SCAR mark because, in the trademark application giving rise to the ‘448 Registration, Plaintiff admitted it did not use the SCAR mark in commerce until November 1, 2008—over two years after Defendant’s first use of SCAR‐Stock in September 2006.92      Similarly, Defendant argues that Plaintiff alleged in its complaint filed in the Texas patent infringement case that it did not introduce the SCAR rifle until 2009.  [David Lilenfeld: wow, I didn't expect this and not sure I agree with the Court, with all due respect, but let’s see the Court’s reasoning]. Plaintiff, however, is not bound by either of these dates.

With respect to the patent infringement case, Defendant submits that Plaintiff’s allegation operates as an admission that Plaintiff did not introduce the SCAR rifle in commerce until 2009.   Defendant, however, overstates the evidentiary effect of this allegation.  Pleadings by a party in one suit do no serve as binding judicial admissions against that party in subsequent litigation, but may serve as evidentiary admissions, which the party may explain or contradict.  [David Lilenfeld: this also goes to Defendant’s credibility, which needs to be weighed].

Similarly, Plaintiff is not bound by the first use date alleged in its trademark application and instead may prove an earlier date of use by clear and convincing evidence.  This is a particularly “heavy burden” upon a plaintiff when “the date on which the trademark application was filed is substantially contemporaneous with the date of first use alleged therein and an attempt is made many years later to establish an earlier date.”  Evidence in support of a prior use date “should not be characterized by contradictions, inconsistencies, and indefiniteness, but should carry with it conviction of its accuracy and applicability.”

Here, Plaintiff filed its trademark application for SCAR and Design for use in connection with firearms on January 13, 2009, claiming a first  use in commerce on November 1, 2008.   Now, Plaintiff seeks to prove a first use date nearly four years before the date claimed in its application.   Therefore, to overcome Defendant’s arguments and prevail on summary judgment, Plaintiff must show, by clear and convincing evidence, that it adopted and used the SCAR mark in commerce prior to September 2006.

Plaintiff argues the undisputed facts show it was the first to use the mark in commerce as evidenced by its (1) actual sale of SCAR rifles to the US Military in 2004 and (2) analogous use of its SCAR mark through pre‐sale promotional activities of its civilian‐friendly SCAR rifle.  A genuine issue of material fact, however, exists as to whether these activities were sufficiently continuous and public to allow firearms customers to distinguish Plaintiff’s products from others in the firearms industry.

With  respect  to  actual  sales,    the  evidence  shows  that  Plaintiff  sold  SCAR firearms to USSOCOM on November 5, 2004, but did not sell SCAR firearms to the rest of the firearms industry—namely to law enforcement and civilian consumers—until late

2008.  A reasonable juror could find that a sale to a single customer is not sufficiently public to constitute use in commerce. Moreover, because additional sales of SCAR rifles did not occur until four years later, one may conclude that Plaintiff’s use of SCAR was too sporadic to give rise to a protectable interest.

On the other hand, certain factors unique to this case could allow a reasonable


juror to  conclude  that  Plaintiff’s  sales  to  USSOCOM coupled with  its  promotional activities were sufficiently continuous and public to constitute use in commerce. Unlike other cases involving a single sale,97  the sale to USSOCOM was significant, amounting to over $634,000 in SCAR rifles.98    To fulfill its obligations under the contract, Plaintiff shipped firearms bearing the SCAR mark to various military institutions from the end of 2004 throughout 2005.

Moreover, evidence in the record suggests the US Military is a prominent and influential consumer in the firearms industry, and therefore, Plaintiff’s development and sale of the SCAR rifle pursuant to the USSOCOM Program could be viewed as sufficiently  public  for  trademark  protection  purposes.     Indeed,  several  witnesses testified that the US Military orders get first priority in the firearms industry, including Mr. Clyde who acknowledged that delivery of SCAR‐Stock from Sage was postponed because Sage had to dedicate its manufacturing capacity to fulfilling military orders first.  In addition, since the USSOCOM Program was the first open competition to create a new rifle in approximately forty years, the Program and Plaintiff’s participation in it generated publicity through numerous magazine and newspaper articles throughout 2005 and 2006.

Moreover, Plaintiff’s pre‐sale promotional activities for its civilian‐friendly SCAR assault rifle prior to September 2006 may constitute analogous use of the mark.  In that regard, Plaintiff promoted its SCAR rifles during visits to gun dealers and at trade shows, including the SHOT Show in Las Vegas, Nevada in February 2006, one of the largest tradeshows in the industry.  In addition, Plaintiff distributed brochures, t‐shirts, hats, and its 2006 product log bearing the SCAR mark or referencing its SCAR rifle at these events.  Finally, in March 2006, Plaintiff issued a press release announcing its plan to release a semi‐automatic version of its SCAR rifle to the law enforcement and civilian markets within the next two years.  Plaintiff, however, did not sell its SCAR rifle to law enforcement and civilian consumers until late 2008.

Whether these promotional activities constituted analogous use sufficient to give rise to a protectable trademark interest is a question of fact for the jury.  As mentioned above, to constitute analogous use, actual use must follow the promotional activities within a commercially reasonable time.  Here, approximately two years lapsed before Plaintiff sold its first SCAR rifle to law enforcement and civilian consumers, a delay one witness attributed to the need for prior government approval before release of a semi‐ automatic  SCAR  rifle  to  the  general  public.  Whether  such  a  delay  constitutes  a

“commercially reasonable time” within the firearms industry is an issue for the jury’s











B.  Unlawful Use



Alternatively, Defendant argues Plaintiff cannot rely on its pre‐September 2006 promotional activities to show use of the SCAR mark because its advertisements and promotional activities violated federal regulations and thus cannot provide the basis for a protectable trademark interest in SCAR.

The United States Trademark Trial and Appeal Board interprets the  “use in



commerce” requirement to mean lawful use.99    In what has now become known as the “unlawful use doctrine” or the “unlawful use defense,” ʺthe sale or shipment of the product under the mark ha[s] to comply with all applicable laws and regulations” before a party may claim trademark protection for the mark.100

While the unlawful use defense has long been recognized by the Trademark Trial and Appeal Board, it has not been widely adopted by federal courts.101     The Ninth, Tenth, and Federal Circuits have expressly adopted the unlawful use defense.102  The

Eleventh Circuit has not adopted the defense; however, a district court in this Circuit has applied the defense in trademark infringement actions.103      Thus, the Court will

address Defendant’s arguments.  Having considered the merits of Defendant’s unlawful use defense, however, the Court finds it to be without merit.

“Unlawful use will be found where: (1) the issue of compliance has previously been determined (with a finding of non‐compliance) by a court or government agency having competent jurisdiction under the statute involved, or (2) where there has been a per  se violation  of  a  statute  regulating  the  sale  of  a  partyʹs  goods.”104       Not  every violation, however, will be sufficient to justify denial of trademark protection based on unlawful use.  There must be a nexus between the use of the mark and the violation, and the violation must be material.105     To be material, the violation must be of “such gravity and significance that the usage must be considered unlawful—so tainted that, as a matter of law, it could create no trademark rights.”106   A party raising the unlawful use defense must prove all these elements by clear and convincing evidence.107    “[T]he





103  See, e.g., Davidoff Extension S.A. v. Davidoff Intern., Inc., 612 F. Supp. 4, 7 (S.D. Fla. 1984) (holding that defendants failed to meet their burden of showing plaintiff unlawfully used the Davidoff mark in the sale of cigars by illegally selling cigars containing Cuban tobacco in the US); see also Kratom Lab, Inc. v. Mancini, No. 11‐80987‐CIV, 2013 WL 3927838, at *3‐5 (S.D. Fla. July 29, 2013) (finding plaintiff had no valid trademark in “Mr. Nice Guy” mark used on incense because plaintiff fraudulently misrepresented that the incense was not for human consumption but plaintiff’s principals pled guilty to violating the Analogue Act, 21 U.S.C. § 813, and admitted that they intended the product to be used for human consumption).

104 Dessert Beauty, Inc., 617 F. Supp. 2d at 190.

105  General Mills Inc. v. Health Valley Foods, 24 U.S.P.Q.2d 1270, 1274 (T.T.A.B. 1992) (citing Santinine Societa

v. P.A.B. Produits, 209 U.S.P.Q. 958 (T.T.A.B. 1988)).

106 General Mills, Inc., 24 U.S.P.Q.2d at 1274.

107 Dessert Beauty, Inc., 617 F. Supp. 2d at 190; Davidoff Extension S.A., 612 F. Supp. at 7.








proofs submitted by the party [charging noncompliance] must leave no room for doubt



speculation, surmise, or interpretation.”108   Here, Defendant cannot meet this burden.



Defendant argues that Plaintiff’s use of the SCAR mark outside of its sales to the US Military constitutes a per se violation of Federal Acquisition Regulations (“FAR”) related to Department of Defense contracts, more specifically USSOCOM contracts regulated  under  the  USSOCOM  FAR  Supplement  (“SOFARS”).    SOFARS  Section

5652.204‐9003 prohibits those who contract with USSOCOM from releasing unclassified



information  regarding  those  contracts,  associating  themselves  with  USSOCOM  or Special Operation Forces, or using the USSOCOM emblem or logo, without prior authorization from USSOCOM.109

Defendant contends Plaintiff, through its advertisements and promotional materials, violated this regulation by printing unclassified information regarding Plaintiff’s participation in the USSOCOM Program and unlawfully attempting to associate its commercial SCAR rifle with USSOCOM by displaying the official emblem of US Special Operation Forces.   Defendant further argues that Plaintiff’s adoption of the SCAR mark constitutes an unlawful attempt to associate itself with USSOCOM in the commercial arena.




108 General Mills, Inc., 24 U.S.P.Q.2d at 1274 (quoting Santinine Societa, 209 U.S.P.Q. at 965).

109  Defendant cites to this regulation as “48 C.F.R. § 5652.204‐9003.” The Court, however, was unable to find the cited provision. The Court is relying on the text of the regulation as set forth in a letter from USSOCOM to Plaintiff’s subsidiary. Pl.’s Resp. to Def.’s Statement of Material Facts, Ex. 9 [Doc. 100‐3].








The Court, however, cannot find Plaintiff’s activities constitute a per se violation



because Defendant fails to establish that the original contract between Plaintiff and



USSOCOM even incorporated the regulation prohibiting such conduct.   On May 14,



2010, USSOCOM addressed a letter to FNH USA, Plaintiff’s subsidiary, acknowledging the ambiguity as to whether the regulation even applied to Plaintiff’s contract.  In that letter, USSOCOM notified FNH USA that SOFARS Section 5652.204‐9003 provides that release  of  unclassified  information  related  to  USSOCOM  contracts  requires  prior written authorization.  However, USSOCOM further explained that “this guidance was not made clear in the contract, as the applicable contract clause that identifies this guidance had not yet been established at the time of the contract award. Therefore, a unilateral modification to the contract incorporating SOFARS clause 5652.204‐9003 will be issued.”110     Because USSOCOM acknowledged that the guidance regarding the applicability of this regulation to Plaintiff’s contract was unclear, the Court cannot find that  Plaintiff’s  advertisements  in  2006  constituted  a  per  se violation  of  federal regulations.

Even  if  Plaintiff’s  advertisements  constituted  a  per  se violation,  any  such violation is  immaterial.                     One  of the  primary purposes behind trademark law is to








110 Pl.’s Resp. to Def’s Statement of Undisputed Facts, Ex. 9 at FN102837 [Doc. 100‐3].








protect the consumer.111     Unlike the cases cited by Defendant involving violations of



Food and Drug Administration regulations, the violation here does not implicate consumer protection concerns.  On the contrary, the regulation was enacted to protect USSOCOM.   Thus, even if Plaintiff’s use of SCAR in its pre‐sale promotional advertisements constituted a per se violation, the violation was immaterial and therefore nullifies Defendant’s unlawful use defense.112

Because Defendant cannot proceed with its unlawful use defense, the jury may



consider evidence of Plaintiff’s pre‐sale promotional activities when determining whether those activities, coupled with Plaintiff’s sale of SCAR rifles pursuant to the USSOCOM Program, constitute sufficient prior use of the mark in commerce to create a protectable trademark interest in SCAR prior to September 2006.

II.        Distinctiveness of SCAR and SCAR‐Stock



In addition to showing use of the mark in commerce, the parties must also show that SCAR and SCAR‐Stock are distinctive in order to receive trademark protection.113

A distinctive mark is one that “serve[s] the purpose of identifying the source of the






111 See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992) (noting that the dual purpose behind the Lanham Act is to “secure to the owner of the mark the goodwill of his business and to protect the ability of consumers to distinguish among competing producers.”).

112 See S. California Darts Assʹn v. Zaffina, 762 F.3d 921, 931‐32 (9th Cir. 2014) (finding unlawful use defense

failed, in part, because“[e]ven assuming that [plaintiff] unlawfully failed to pay taxes, its misconduct would be unrelated to the purpose of the federal trademark laws and, therefore, collateral and immaterial.”) (emphasis added).

113 Knights Armament Co., 654 F.3d at 1188.








goods  or  services.”114        “An  identifying  mark  is  distinctive  and  capable  of  being



protected if  it  either (1)  is inherently distinctive or (2)  has acquired distinctiveness



through secondary meaning.”115   In that regard, trademark law recognizes the following



four categories of distinctiveness:



(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.116

Arbitrary, fanciful, and suggestivetrademarksare considered inherently distinctive and, therefore, are protectable without a showing of secondary meaning.117     A descriptive mark, by contrast, is not inherently distinctive, and receives trademark protection only if it acquires distinctiveness through secondary meaning.118    A descriptive mark has acquired distinctiveness through secondary meaning “when the primary significance of the  [mark]  in  the  minds  of  the  [consuming]  public  is  not  the  product  but  the producer.”119    The key factor in determining whether a descriptive mark has acquired secondary meaning is how the mark is perceived by the average prospective consumer






114 Id.

115 Two Pesos, Inc., 505 U.S. at 769 (emphasis in original).

116 Gift of Learning Found., Inc., 329 F.3d at 797‐98.

117 Coach House Rest., Inc. v. Coach & Six Restaurants, Inc., 934 F.2d 1551, 1560 (11th Cir. 1991).

118 Knights Armament Co., 654 F.3d at 1188.

119 Welding Servs., Inc. v. Forman, 509 F.3d 1351, 1358 (11th Cir. 2007).








in the relevant industry.120    Whether a mark is distinctive is a question of fact not easily



adjudicated on summary judgment.121



Here, both parties argue no genuine issue of material fact exists as to whether their respectivetrademarksare distinctive.  This Court disagrees.

A. Distinctiveness of Plaintiff’s SCAR Mark



Plaintiff argues that its SCAR mark is inherently distinctive, or alternatively, if it is descriptive, it has acquired distinctiveness through secondary meaning.  In response, Defendant argues that Plaintiff’s use of the SCAR mark was merely descriptive of the firearms solicited by the USSOCOM Program, and the mark did not acquire secondary meaning in the firearms industry prior to Defendant’s first use of SCAR‐Stock in September 2006.   As explained below, facts support both parties’ positions, and, therefore, a genuine issue of material fact remains as to whether Plaintiff’s SCAR mark is merely descriptive or inherently distinctive of the rifles upon which it is used.

When determining the distinctiveness of an abbreviation or acronym such as SCAR,  the  Court  must  consider  the  relationship  between  the  acronym  and  its underlying phrase.122   For classification purposes, an abbreviation is treated similarly to its  underlying  phrase  “where  the  average  prospective  consumer  recognizes  the




120 G. Heileman Brewing Co. v. Anheuser‐Busch, Inc., 873 F.2d 985, 995 (7th Cir. 1989).

121 Xtreme Lashes, LLC v. Xtended Beauty, Inc., 576 F.3d 221, 232 (5th Cir. 2009).

122  Knights Armament Co. v. Optical Sys. Tech., Inc., 647 F. Supp. 2d 1321, 1331 (M.D. Fla. 2009), affʹd, 654

F.3d 1179 (11th Cir. 2011).








abbreviation as equivalent to the underlying phrase.”123    “An abbreviation of a generic



or descriptive phrase is protectable ‘if the party claiming protection for the abbreviation shows that the abbreviation has a meaning distinct from the underlying words in the mind of the public.’”124      When determining how the public views the mark, courts should consider sources such as consumer surveys, use of the mark in media publications, use of the mark by competitors in the industry, and the trademark claimant’s use of the mark.125     After considering these factors in this case, the Court finds a genuine issue of material fact exists as to whether SCAR is distinctive.

On the one hand, SCAR may be considered descriptive of a type of rifle because it serves as an acronym for “Special Operation Forces Combat Assault Rifle”—a descriptive phrase used to designate a particular rifle requested by the USSOCOM Program.  Indeed, evidence in the record shows that Plaintiff and others associated the term SCAR with this underlying descriptive phrase.  For example, the majority of the newspaper and magazine articles reference SCAR in connection with “Special Combat Assault  Rifle”  or  some  variant  thereof.    In  addition,  a  representative  for  another firearms manufacturer testified that he recognized SCAR as an identifier of the rifles







123Am. Historic Racing Motorcycle Assʹn, Ltd. v. Team Obsolete Promotions, 33 F. Supp. 2d 1000, 1004 (M.D. Fla. 1998), affʹd sub nom., Am. Historic v. Team Obsolete, 233 F.3d 577 (11th Cir. 2000).

124 Knights Armament Co., 647 F. Supp. 2d at 1331 (quoting Forman, 509 F.3d at 1359).

125 See Colt Defense LLC v. Bushmaster Firearms, Inc., 486 F.3d 701, 706 (1st Cir. 2007).








solicited by the USSOCOM Program.126    Even Plaintiff’s own subsidiary indicated that



SCAR is recognized as an acronym in government jargon to refer to the USSOCOM Program.

Moreover, Plaintiff’s own use of SCAR with its underlying phrase could support a finding that the mark is descriptive.   If a trademark claimant uses the acronym in conjunction with its underlying phrase, courts are reluctant to find that the acronym has an independent meaning apart from the underlying phrase.127      In several of its advertisements and promotional materials, Plaintiff displays the SCAR mark with the underlying phrase presented predominately beside or underneath it.   For example, Plaintiff places the two side by side in its March 2006 press release entitled “The Making of the 21st Century Assault Rifle: SCAR SOF Combat Assault Rifle.”128   Because SCAR is used at times with Special Operation Forces Combat Assault Rifle, the public could perceive that SCAR does not have a meaning distinct from its underlying phrase, and, by extension, is merely descriptive of a type of rifle.

On the other hand, because SCAR has an ordinary meaning outside the firearms industry, and no other competitors in the market use the mark commercially, the mark



126 Paul Hochstrate Dep. 19:25‐20:18 [Doc. 91‐6].

127 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 party “consistently use[d] UNS in conjunction with and as an abbreviation of ‘Universal Night Sight.’”).

128 Mills Dep., Ex. 4 [Doc. 89‐5].








could be viewed as inherently distinctive. “Scar” is a common word in the English



language signifying a mark left on the skin by the healing of injured tissue.129    To the extent that the public views SCAR as synonymous with its dictionary definition, the mark would be inherently distinctive because the word bears no relationship to the firearm upon which it is used.  Indeed, such a connotation would be creatively fitting for a firearm capable of causing bodily injury.   Plaintiff even attempts to invoke this alternative meaning of “scar” in one of its SCAR rifle advertisements by including the words “BATTLE SCARS.”130   Because the word doubles as both a mark on the skin and as an acronym for Special Operation Forces Combat Assault Rifle, the public could view the mark as inherently distinctive.131

Another factor that weighs in favor of finding Plaintiff’s SCAR mark distinctive is the fact that other competitors in the firearms industry do not use the mark commercially.  If other competitors in the market use the mark, then that is probative evidence that the mark is merely descriptive or generic because, the more the public sees the mark used by others in the industry, the less likely the public will identify the mark with one particular producer.132    Here, there is no evidence in the record showing



129 Umansky Decl., Ex. 6 [Doc. 89‐3].

130 Def.’s Statement of Material Facts, Ex. H at FN100415 [Doc. 90‐8].

131  Accord American Historic Racing Motorcycle Association, Ltd., 33 F. Supp. 2d 1000, 1004‐05 (M.D. Fla.

1998)   (holding that “BEARS,” an abbreviation for “British‐European‐American‐Racing Series” was inherently distinctive for a class of motorcycles, in part, because BEARS doubled as both an animal and as an abbreviation, and thus consumers may associate the word with multiple things).

132 See Colt Defense LLC, 486 F.3d at 706.








that competitors, other than Defendant, use the SCAR mark to sell firearms or related



products.  Therefore, a reasonable juror could find that SCAR is inherently distinctive.



B.  Distinctiveness of Defendant’s SCAR‐Stock Mark

Similarly,  Defendant  argues  its  SCAR‐Stock  mark  is  inherently  distinctive because  it  is an  arbitrary  acronym for “Sage Clyde  Armory Rifle Stock,” a  phrase



adopted to reflect the origin of the product’s design.   Plaintiff, however, argues that



Defendant’s position that SCAR‐Stock is inherently distinctive is inconsistent and contradicts its position that Plaintiff’s SCAR mark is merely descriptive.  According to Plaintiff,  SCAR  is  either  inherently  distinctive  for  firearm  products  or  it  is  not; Defendant cannot have it both ways. This Court disagrees.

When determining whether a mark is distinctive, the factfinder must look to the particular goods or services upon which the mark is used.133   The same mark “may shift categories depending upon the product to which it is affixed.”134     Here, the products upon which Plaintiff and Defendant use their respectivetrademarksare different: one is a type of firearm (a rifle) and the other is replacement gun stock (i.e., a gun accessory) compatible  with  Ruger  rifles.    Because  the trademarks are  used  to  designate  different

products, the  factfinder could also  determine that  their distinctiveness differs.   An





133   See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:16 (4th ed.) (“The

possible descriptiveness of a designation is highly dependent on the goods or services in connection with which the designation is used. A term can be descriptive of one product and nondescriptive of another.”).

134 Polo Fashions, Inc. v. Extra Special Products, Inc., 451 F. Supp. 555, 559 (S.D.N.Y. 1978).








illustrative example of this principle is the “polo” mark in the clothing industry.  One



district court noted held that the “polo” mark “[is] generic to polo shirts and coats, descriptive as to other shirts and coats and fanciful as it is applied to other articles of wearing apparel.”135    Although the products were sold in the same industry, i.e. the clothing market, the distinctiveness of the mark changed based on the type of clothing. Similarly, in this case, although SCAR and SCAR‐Stock are both used in the firearms industry, the products upon which they are used differ.  Thus, the factfinder could find that the distinctiveness of SCAR and SCAR‐Stock also differ.136

Nevertheless, given the conflicting evidence regarding Defendant’s motive in adopting the mark, the Court finds a genuine issue of material fact exists as to whether SCAR‐Stock actually serves as an acronym for the product’s origin.   Although Mr.

Clyde testified that SCAR‐Stock is an acronym for “Sage Clyde Armory Rifle Stock,”



Mr. Clyde knew of the USSOCOM Program and that the rifle developed pursuant to



the Program was known as the SCAR rifle at the time he adopted the SCAR‐Stock




135 Id.

136   Plaintiff  further  argues  that  Defendant’s  position  contradicts  its  argument  made  to  the  USPTO following  denial  of  its  SCAR‐Stock  application  on  descriptiveness  grounds.    Specifically,  Plaintiff contends  Defendant  admitted  that  SCAR  could  not  be  both  descriptive  and  distinctive  as  used  on firearms products. In response to the initial denial of its application, Defendant stated “[i]t seems incongruous to suggest that a term like SCAR, which has no dictionary definition connected to firearms, rifles or gun stocks, is both descriptive of a type of assault rifle and at the same time a distinctive trademark for a particular brand of assault rifle.” Def.’s Statement of Material Facts, Ex. D [Doc. 90‐4]. While the Court recognizes the tension between these two arguments, they are not wholly inconsistent because the argument before USPTO refers to the use of SCAR specifically on rifles.   Defendant’s arguments to the USPTO are merely additional evidence for the jury to weigh in its determination of distinctiveness.








mark.    Further,  Joshua  Smith,  Defendant’s  former  COO,  testified  that  Defendant



adopted the SCAR‐Stock mark, in part, to take commercial advantage of the popularity of  the  SCAR  rifle.    Although  Mr.  Clyde  specifically  disclaims  any  bad  faith  and attempts to cast doubt on Smith’s credibility, it is not the province of this Court to weigh the evidence or make credibility determinations at the summary judgment stage.137     Accordingly, a genuine issue of material fact exists as to the reasons for adopting, and the meaning behind, Defendant’s mark.  Therefore, whether the mark is distinctive is a question for the jury.




Based on the foregoing, the Court finds that genuine issues of material fact exists as to which party first used the mark in commerce and whether either or both parties’trademarksare distinctive.   Because these issues are central to all the claims raised in this case, the parties Motions for Summary Judgment [Docs. 84 & 85] are DENIED.

SO ORDERED, this 8th day of January, 2015.









S/ C. Ashley Royal














137Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).



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