Command Arms Accessories, LLC v. ME Technology Inc.
1:19-cv-06982
S.D.N.Y.Oct 31, 2019Background
- Plaintiffs Command Arms Accessories, LLC (Command LLC) and CAA Industries, Ltd. (CAA Industries) are firearm‑accessories companies formed/owned by Moshe and Eldad Oz; ME Technology, Inc. (ME Technology) was formed by the same brothers and acted as the exclusive U.S. distributor for CAA Industries' products.
- The parties dispute ownership and use of various marks (including registered "RONI" and asserted word marks "CAA" and "COMMAND ARMS ACCESSORIES"), trade dress, a website domain (www.CAAGearUp.com), and two patents (notably U.S. Patent No. 8,312,803 ('803)).
- In 2015 ME Technology began selling its own competing product (the MCK conversion kit); CAA Industries sent a cease‑and‑desist letter in June 2019 revoking any permission to use CAA marks; plaintiffs then moved for a preliminary injunction in August 2019.
- Plaintiffs sought to enjoin ME Technology from using CAA marks/trade dress, from making/selling the MCK (alleged patent infringement), and from using the CAAGearUp domain (anticybersquatting claim).
- The district court found plaintiffs’ ownership claims and patent‑infringement showing weak on the record and declined to grant a preliminary injunction.
- The court granted ME Technology’s motion to transfer the action to the Southern District of Florida under 28 U.S.C. § 1404(a), finding Florida was the locus of operative facts and more convenient for key witnesses, and noting related litigation already pending in Florida.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Trademark/trade dress ownership and infringement | Plaintiffs say ownership via prior Asset Purchase/Assignment and/or common‑law use; ME Technology is using marks without authorization | ME Technology says the asset transfer did not convey the asserted word marks, claims it was the primary U.S. user/distributor and acquired or preserved rights | Court: Plaintiffs failed to show a likelihood of success; ownership contention under the agreements is unsupported and common‑law ownership is doubtful |
| Patent infringement ('803) | CAA Industries contends ME's MCK practices the claimed slide‑pull elements | ME Technology disputes infringement; factual disputes exist about device structure and elements | Court: Plaintiffs raised, at best, a fair ground for litigation; not enough for preliminary injunction |
| Anticybersquatting / domain (www.CAAGearUp.com) | Plaintiffs assert ME's use of the domain violates ACPA and sites are under ME's control | ME Technology contends domain and site development were joint/ME's and disputes ownership; factual question exists | Court: Ownership/use disputes raise triable issues; not a basis for preliminary injunction |
| Transfer under 28 U.S.C. § 1404(a) | Plaintiffs retained case in S.D.N.Y. (plaintiffs' choice of forum) | ME Technology argues Florida is sole place of business, key witnesses and documents are in Florida, and related litigation is pending there | Court: Transfer to Southern District of Florida granted; convenience and interests of justice favor Florida (witnesses, locus of operative facts, pending related cases) |
Key Cases Cited
- Oneida Nation of New York v. Cuomo, 645 F.3d 154 (2d Cir. 2011) (standard for preliminary injunction requires irreparable harm and likelihood of success or serious questions plus balance of hardships)
- Estee Lauder Inc. v. The Gap, Inc., 108 F.3d 1503 (2d Cir. 1997) (elements of trademark‑infringement claim)
- Time, Inc. v. Petersen Publ'g Co., 173 F.3d 113 (2d Cir. 1999) (Lanham Act protects unregistered common‑law marks)
- Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing Co., 897 F.3d 413 (2d Cir. 2018) (common‑law trademark rights derive from appropriation and continuous use)
- La Societe Anonyme des Parfums le Galion v. Jean Patou, Inc., 495 F.2d 1265 (2d Cir. 1974) (bona fide usage requirement for trademark protection)
- D.H. Blair & Co. v. Gottdiener, 462 F.3d 95 (2d Cir. 2006) (district courts' broad discretion on § 1404(a) transfer analysis)
- Atl. Recording Corp. v. Project Playlist, Inc., 603 F. Supp. 2d 690 (S.D.N.Y. 2009) (transfer factors under § 1404(a))
- Herbert Ltd. P'ship v. Elec. Arts Inc., 325 F. Supp. 2d 282 (S.D.N.Y. 2004) (convenience of witnesses is paramount in transfer analysis)
- Blue Planet Software, Inc. v. Games Int'l, LLC, 334 F. Supp. 2d 425 (S.D.N.Y. 2004) (registration does not alone establish substantive ownership; rights attach by use)
- Dwyer v. Gen. Motors Corp., 853 F. Supp. 690 (S.D.N.Y. 1994) (plaintiff's forum choice entitled to less weight when forum is not plaintiff's home)