Addressing issues of priority and secondary meaning, the unlawful use defense and the right to jury trial, the US Court of Appeals for the 11th Circuit affirmed a district court’s judgment in favor of a firearms manufacturer in a trademark infringement case concerning another firearms retailer’s use of the trademark SCAR. FN Herstal SA v. Clyde Armory Inc., Case No. 15-14040 (11th Cir., Sept. 27, 2016) (Coogler, J, sitting by designation).
FN Herstal won a bid in 2004 to manufacture an assault rifle for the US Special Operations Command (USSOCOM) for use by various units of the US military. The prototype FN submitted to USSOCOM bore the trademark SCAR. Beginning in 2005, FN used the SCAR trademark to promote its rifle to law enforcement and civilians, exhibiting its SCAR rifle to thousands of attendees at gun shows across the United States and receiving substantial attention and publicity in industry publications in 2005 and 2006. While FN sold its SCAR rifle to the military beginning in 2004, FN did not sell the rifle to law enforcement or civilians until 2008.
During this time period, Clyde Armory began work on making replacement stock for certain rifles. Clyde Armory selected the name “SCAR-Stock” for its product in April 2006. At the time it chose to use the name SCAR-Stock, Clyde Armory was aware of FN’s SCAR rifle. Clyde Armory first sold its SCAR-Stock product in September 2006.
After the parties exchanged several demand letters, FN sued Clyde Armory for trademark infringement, and Clyde Armory counterclaimed. Because the parties had agreed that there was a likelihood of confusion, the district court only needed to decide which party had priority in its respective mark. After partial summary judgment and a bench trial, the district court ruled that FN had superior rights in its SCAR trademark.
The primary issues on appeal were whether FN had priority in its SCAR trademark and whether FN’s mark had become distinctive by the time Clyde Armory sold its SCAR-Stock product in 2006. The 11th Circuit found that substantial evidence demonstrated that FN had used the SCAR mark in commerce before Clyde Armory used its SCAR-Stock mark. Although FN did not sell its SCAR rifle to civilians until 2008, the Court found that FN had priority through analogous use in commerce—extensive promotional activities and publicity in 2005 and 2006 that caused the public to identify SCAR rifles with FN—in addition to FN’s significant sales to USSOCOM. Based on its millions of dollars of sales of SCAR rifles to the military, significant advertising and promotional efforts, extensive media coverage, and evidence that Clyde Armory intentionally copied FN’s SCAR mark, the Court held that FN’s SCAR mark had acquired secondary meaning and thus was protectable prior to Clyde Armory’s first use of its SCAR-Stock mark.