Shootout at the CA1 Corral: "M4" Found Generic for a Certain Carbine Rifle
The U.S. Court of Appeals for the First Circuit affirmed a grant of summary judgment to Bushmaster Firearms, Inc., ruling that the designation M4 is generic for a certain carbine rifle. The court rejected Appellant Colt's argument that ownership of a federal registration for the mark M4 for rifles precluded summary judgment, i.e., created a per se issue of fact sufficient to defeat summary judgment. Instead, the court affirmed the granting of Bushmaster's counterclaim to cancel the M4 registration. Colt Defense LLC v. Bushmaster Firearms, Inc., Appeal No. 06-1696 (May 18, 2007).
In 1994, the U.S. Military designated a new compact version of the M16 carbine as the M4, derived from a prototype built by Colt under contract. The M4 was the military's "latest in a series of carbine designations beginning with M1 in 1940."
In 1997, in settlement of a dispute, the military recognized Colt's right to the proprietary information incorporated in the M4 design and in the settlement agreement defined "M4 carbine" to mean "the compact carbine designed by Colt, 5.56mm, having a 14.5" barrel ...." Colt was designated as the military's sole supplier of M4s until 2011.
Bushmaster began using the designation M4 for carbines in 1991, and other manufacturers also use M4 in their advertising.
The court recognized that registration of M4 on the Principal Register "establishes a rebuttable presumption that the term is not generic." This presumption may be overcome by a preponderance of the evidence. And, of course, evidence of genericness may come from "any competent source."
The evidence of genericness included "several examples of media publications" using M4 in a "generic fashion," use of the term M4 in advertising by several competitors, and e-mails from a variety of purchasers of carbines using the term M4 to describe "the type of gun they hope to purchase." Finally, there was evidence, "albeit limited," that Colt itself has used the term generically.
"In sum, Bushmaster presented sufficient evidence to rebut the presumption that Colt's mark is not generic. Moreover, this evidence if undisputed, would entitle Bushmaster to summary judgment on Colt's infringement claim and its cancellation counterclaim."
Colt, however, contended that the evidence was "misinterpreted and overvalued." The court disagreed regarding interpretation, and denied that any evidence was overvalued.
Colt asserted that, even after Bushmaster put forth evidence to rebut the presumption of validity established by the registration, "the registration continues to serve as strong evidence that the trademark is generic in the eyes of the relevant public." That shot missed the target:
"Colt's argument overstates the significance of a registered mark. As stated above, a registered mark serves to establish a rebuttable presumption that the mark is subject to trademark protection. Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 117-18 (1st Cir. 2006). However, once this presumption has been overcome, the party holding the certificate of registration may not avoid summary judgment simply by pointing to the certificate as evidence."
The appellate court disagreed with the district court in ruling that the military's understanding of the term M4 is relevant, even though the military could buy the rifle only from Colt. But the exclusive supplier agreement evidences merely a "business relationship of a limited duration between Colt and the military; it is not evidence of the military's general understanding of the meaning of M4 outside of the contractual relationship." The military may contract with another producer in 2011. If the agreement "supported a non-generic finding and the military does change suppliers in 2011, it could lead to the absurd result of the military being prevented from identifying the weapon by use of the very classification system that it originally  devised."
Similarly non-probative was a settlement agreement between Colt and another manufacturer, wherein the latter agreed that "Colt's M4 trademark is a valid and enforceable trademark that should not be cancelled on the grounds of genericness." Such a private agreement "has little, if anything, to do with the general understanding of M4 to the relevant public."
In sum, Bushmaster presented evidence that relevant consumers associate M4 with the military designation for a carbine that has certain characteristics. Colt presented "no more than a scintilla of evidence" showing that M4 is a source identifier for Colt's product. That mere scintilla is not enough to avoid summary judgment, and so the appellate court affirmed the judgment.
TTABlog comment: It seemingly didn't take much to blow away the registration's presumption of validity. Bushmaster's evidence of genericness hardly seemed overwhelming. Should the standard of proof for genericness be more than a preponderance of the evidence when the mark is registered?
Text Copyright John L. Welch 2007.