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Sufficiently Public Use of Trademark Without Sales Is Trademark Use: 11th Cir.
Practical Law Legal Update w-003-6598 (Approx. 3 pages)
Sufficiently Public Use of Trademark Without Sales Is Trademark Use: 11th Cir.
by Practical Law Intellectual Property & Technology
| Law stated as of 28 Sep 2016 • USA (National/Federal) |
In FN Herstal SA v. Clyde Armory Inc., the US Court of Appeals for the Eleventh Circuit held that FN Herstal SA's use of its mark in a way analogous to normal trademark use is sufficient to establish common law trademark rights without any actual sales to US consumers.
On September 27, 2016, in FN Herstal SA v. Clyde Armory Inc., the US Court of Appeals for the Eleventh Circuit, affirmed the US District Court for the Middle District of Georgia, ruling that FN Herstal SA used its trademark in a sufficiently public way for the relevant segment of the public to identify its marked goods as those of FN's ( (11th Cir. Sept. 27, 2016)). This use is analogous to normal trademark use in commerce and is sufficient to establish common law trademark rights without any actual sales to US consumers.
The US Special Operations Command (USSOCOM) awarded FN a contract to manufacture an automatic rifle that USSOCOM called the "Special Operations Forces Combat Assault Rifle" (SCAR). FN began manufacturing rifles for USSOCOM bearing the SCAR mark in 2004. The government contract and FN's subsequent development of the weapon brought extensive media attention to FN's product, as well as public demand for a civilian version. FN showcased the military rifles and distributed promotional materials at public trade shows in 2005 and 2006, and announced the development of a semi-automatic civilian version of the weapon in 2006. FN did not sell the semiautomatic civilian version of the SCAR rifle until 2008, when it also obtained a trademark registration.
Clyde Armory Inc. began manufacturing replacement rifle stocks in April 2006 under the name SCAR-Stock. FN sent Clyde a cease and desist letter in 2009. The next day, Clyde filed a trademark application for the SCAR mark in relation to gun stocks, claiming a first date of use in commerce of 2006, and petitioned to cancel FN's registration.
In 2012, FN sued Clyde, among other things, for trademark infringement in the Middle District of Georgia. The district court ruled that FN developed common law rights in the SCAR mark before Clyde began using SCAR-Stock in 2006.
Clyde argued on appeal to the Eleventh Circuit that:
- The district court erred in finding that:
- FN used SCAR in commerce before Clyde began using SCAR-Stock; and
- SCAR acquired distinctiveness through secondary meeting before Clyde began using SCAR-Stock.
- Clyde was entitled to a jury trial.
The Eleventh Circuit affirmed the district court rulings, finding that FN had established use in commerce of the SCAR mark by analogous use through extensive pre-sale advertising and promotional activities dating back to 2005 — a year before Clyde began using SCAR-Stock — despite not selling to the public at that time. The court ruled that FN's advertising had caused the relevant portion of the public to associate SCAR rifles with FN.
The Eleventh Circuit also:
- Found that FN actually used SCAR in commerce beginning with its sales to USSOCOM in 2004.
- Rejected Clyde's argument that FN could not develop trademark rights in SCAR because USSOCOM created the acronym, noting that trademark rights are gained only through usage.
- Affirmed the district court's distinctiveness ruling, finding that SCAR had acquired secondary meaning before Clyde began using SCAR-Stock.
- Affirmed the district court's denial of Clyde's request for a jury trial based on precedent from the US Court of Appeals for the Seventh Circuit because:
- the parties only sought equitable relief and therefore Clyde did not have a right to a jury trial; and
- although FN previously consented to a jury trial, it could withdraw its consent at any time because the parties had no right to a jury trial.