IP Law Daily, TRADEMARK—D.N.M.: Security USA’s “Firefly” gunshot detection registration cancelled, (Jun 6, 2022)

By Thomas K. Lauletta, J.D.

The registrant did not own the mark because it was not the first user of the mark in commerce.

The U.S. district court in Albuquerque, New Mexico has ordered cancellation of the federal registration for the trademark “Firefly” owned by Security USA Services (Security) for a gunshot detection system upon a showing by Invariant Corp. and Hyperion Technology Group that their joint continuous use in commerce of their Firefly gunshot detection systems predated Security’s registration. Invariant and Hyperion established that they first used their mark in 2011, compared to Security’s first use of its mark in commerce in 2014. Because Security could not establish prior use of the Firefly mark it could not show it was the owner of the mark, a requirement for trademark registration. Accordingly, the court cancelled Security’s registration for the Firefly mark (Security USA Services, LLC v Invariant Corp., June 1, 2022, Riggs, K.).

Prior claim for infringement. Plaintiff Security and defendants Invariant and Hyperion both market and sell gunshot detection systems under the “FIREFLY” mark. As the registered holder of the Firefly mark Security brought suit for trademark infringement under the Lanham Act against defendants Invariant and Hyperion. Security first used its Firefly mark in commerce in connection with its gunshot detection system in 2014 and received its trademark registration (No. 5,328,570) in 2017. The defendants proved that they first used their Firefly mark in commerce as early as 2011. They showed that the U.S. Army commissioned and paid for a commercial demonstration of their jointly-developed Firefly systems in August 2011 and these Firefly systems were sold as early as 2012 by the defendants. Analyzing the question of trademark ownership, the U.S. district court in New Mexico noted that the “party who first uses a mark in commerce is said to have priority over other users.” Accordingly, the court held on January 18, 2022, that as prior users of the mark Invariant and Hyperion did not infringe Security’s mark as a matter of law.

Responding to interrogatories in the infringement proceeding, Security stated that its first use of the mark was in 2014. Security also argued that it had licensed the mark from a third party, Battelle, and began using the mark in 2007. The court rejected this argument, holding that Security had presented no admissible evidence in support of this argument. First, the court noted that although the record showed that Security may have licensed certain technology from Battelle, the record did not establish that this license was for the Firefly trademark. Second, even if the license was for the Firefly mark, the documents presented only granted Security as non-exclusive license, which would not give it authority to bring an infringement action.

Action to cancel Security’s mark. The instant action relates to Defendants/Counterclaimants’ motion to cancel Security’s Firefly mark under 15 U.S.C. § 1119. The defendants relied on the court’s reasoning in its January 18, 2022, ruling that they had not infringed Security’s mark. The court here again concluded that even if Battelle had assigned the Firefly mark to Security, Security failed to establish in the record that Battelle had used the mark in commerce before defendants Invariant and Hyperion. The court once again held that Security had failed to show that it was the owner of the Firefly mark through prior use. Accordingly, the court ordered cancellation Security’s Firefly registration No. 5,328,570.

The Case is No. 1:20-cv-01100-KWR-KRS.

Attorneys: Augustine M. Rodriguez, Jr (Law Office of Augustine M. Rodriguez, L.L.C.) for Security USA Services, LLC. Michael Woods (Bardacke Allison LLP) for Invariant Corp. and Hyperion Technology Group, Inc.

Companies: Security USA Services, LLC; Invariant Corp.; Hyperion Technology Group, Inc.

Cases: Trademark NewMexicoNews GCNNews