FN Herstal SA v. Clyde Armory Inc.
838 F.3d 1071
11th Cir.2016Background
- FN Herstal developed and branded the military "SCAR" rifle after winning a 2004 USSOCOM contract, shipped SCAR-marked rifles to the U.S. military beginning in 2004, and heavily promoted the SCAR brand to law enforcement and civilians from 2005–2006. FN later registered federal trademarks for SCAR and related designs.
- Clyde Armory (owned by Andrew Clyde), a firearms retailer/distributor, adopted the mark "SCAR-Stock" for replacement rifle stocks and first sold SCAR-Stock products in September 2006; Clyde knew of FN’s SCAR rifle and the USSOCOM program when adopting the mark.
- FN sued Clyde Armory (2012) under the Lanham Act and related state claims for trademark infringement, unfair competition, and dilution; both parties originally demanded jury trials and sought legal and equitable relief but later represented they were not seeking damages.
- The district court: (a) granted partial summary judgment rejecting Clyde Armory’s "unlawful use" defense; (b) struck the parties’ jury demands after the parties waived legal damages and only sought injunctive relief; (c) denied Clyde Armory’s motion to amend the pretrial order to reinstate a profits claim; and (d) after a three-day bench trial, found FN had priority, that SCAR had acquired secondary meaning before Clyde’s use, and that Clyde copied in bad faith — entering injunctive relief and related orders for Clyde.
- The Eleventh Circuit affirmed on all issues: FN’s prior use (including analogous pre‑sale promotion and military sales) established priority; SCAR had acquired distinctiveness before September 2006; the unlawful-use defense failed; striking the jury demands and denying amendment to seek profits were proper.
Issues
| Issue | Plaintiff's Argument (FN) | Defendant's Argument (Clyde Armory) | Held |
|---|---|---|---|
| Priority / use in commerce (did FN use SCAR before Clyde’s first sale?) | FN relied on sales to USSOCOM starting 2004 and extensive 2005–2006 promotion (analogous use) to show prior use. | Clyde argued military sales to a single government entity and pre‑sales/promotions did not establish "use in commerce" for priority. | Held for FN: military sales + open, notorious promotions constituted use in commerce and analogous use prior to Sept 2006. |
| Distinctiveness / secondary meaning (did SCAR acquire protectability before Clyde’s use?) | FN argued SCAR became distinctive quickly through government contract, media attention, trade‑show publicity, and promotional items. | Clyde argued the period was too short and SCAR was merely descriptive or an acronym tied to USSOCOM. | Held for FN: district court’s factual finding of secondary meaning before Clyde’s use was not clearly erroneous. |
| Unlawful‑use defense (should FN’s pre‑sale promotion be barred as unlawful use?) | FN argued no per se regulatory violation; SOFARS applicability was unclear and any emblem misuse was de minimis. | Clyde argued FN violated procurement/regulatory rules (SOFARS and 18 U.S.C. § 701), so pre‑sale promotion cannot create trademark rights. | Held for FN: court need not adopt unlawful‑use doctrine; even if adopted, Clyde failed to show a material, per se unlawful use tainting FN’s rights. |
| Jury demand & amendment to seek profits (was striking jury and denying amendment proper?) | FN moved to strike when only equitable relief remained; consent to jury can be withdrawn where no right exists and no prejudice results. | Clyde contended waiver of jury was ineffective and denial of amendment to add profits claim (to regain jury right) was erroneous and prejudicial. | Held for FN: parties waived legal relief in pretrial order; striking jury demand and denying amendment were proper and not an abuse of discretion. |
Key Cases Cited
- Proudfoot Consulting Co. v. Gordon, 576 F.3d 1223 (11th Cir.) (standard for reviewing bench‑trial findings)
- Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188 (11th Cir.) (analogous use doctrine and priority test)
- Hana Fin., Inc. v. Hana Bank, 135 S. Ct. 907 (Sup. Ct.) (priority determined by first use in commerce)
- Knights Armament Co. v. Optical Sys. Tech., Inc., 654 F.3d 1179 (11th Cir.) (distinctiveness and secondary‑meaning requirements)
- Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (Sup. Ct.) (distinction between inherently distinctive and descriptive marks)
- Kramer v. Banc of Am. Sec., LLC, 355 F.3d 961 (7th Cir.) (withdrawal of consent to jury when only equitable issues remain)