Court shoots down trademark infringement defendant

April 13, 2017
Patterson Thuente IP

Two firearms manufacturers came out shooting when a dispute arose over which one had the right to use the mark “SCAR” for guns and related items. The case, FN Herstal SA v. Clyde Armory Inc., raised the common trademark issue of priority of use, as well as the less-common unlawful use doctrine.

Gun makers duel

In 2004, FN Herstal SA won a 10-year government contract to manufacture the “Special Operations Forces Combat Assault Rifle.” In its bid, FN branded its submission with the SCAR mark. In 2005, it began promoting its SCAR rifle (using a quarter of its advertising budget) to law enforcement and the public. From 2004 to 2006, the rifle received extensive media coverage. FN began selling a civilian version in November 2008 and obtained a trademark in June 2010 for SCAR for use in connection with firearms and related items that indicated a date of first use on November 1, 2008.

In 2005, Clyde Armory Inc. developed a replacement stock system sold under the marks SCAR-CQB-Stock or SCAR-Stock. It sold its first SCAR-Stock product in September 2006.

FN sued Clyde for trademark infringement. Clyde asserted affirmative defenses based on priority of its use of the SCAR-Stock mark and FN’s unlawful use of the SCAR mark. The trial court ruled in FN’s favor, and Clyde appealed.

Court takes aim

The Eleventh Circuit Court of Appeals found that FN’s sales of SCAR rifles to the military alone established its date of first use in commerce as early as 2004. It also decided that FN’s marketing efforts established priority in 2005 over Clyde’s use of the mark in 2006. Additionally, FN’s use of the mark was distinctive because, prior to 2006, FN was the only manufacturer producing and selling firearms products using the SCAR trademark.

Clyde argued that FN’s use of the mark was unlawful under the “unlawful use doctrine,” which states that trademark protection is awarded only to marks that comply with all applicable laws and regulations. It claimed that FN had violated a military regulation for contractors by associating itself with the military SCAR rifle in its promotional materials without government authorization.

However, the court declined to adopt the unlawful use doctrine, noting that it appears almost exclusively in administrative, rather than in judicial, settings. Clyde’s unlawful use defense was rejected.

To the victor

Clyde sustained traumatic injuries. It had to stop using the SCAR-Stock mark and destroy materials featuring it, abandon its trademark applications, and assign domain names with SCAR to FN.

FN Herstal SA v. Clyde Armory Inc., No. 15-14040, Sept. 27, 2016 (11th Cir.)