IP Law Daily, TRADEMARK—DNev: Air Soft Rifle Maker Preliminarily Enjoined from Selling Replicas of Well-Known Guns Designed by FN Herstal, (Oct 15, 2012)

By Thomas Long, J.D.

Cybergun, a seller of air soft guns, air guns, and paint ball guns, and firearms designer and manufacturer FN Herstal (“FNH”) were entitled to a preliminary injunction barring air soft rifle importer and distributer, Jag Precision, from selling products that were copies of FNH’s weapons designs and from using the plaintiffs’ trademarks, the federal district court in Las Vegas has decided (Cybergun, S.A. v. Jag Precision, October 11, 2012, Dawson, K).

Cybergun was the holder of an exclusive license to sell airsoft guns (replica firearms that fire plastic pellets), air guns, and paint ball guns that are replicas of FNH’s firearms. FNH was the developer of the M249, M249PARA, and P90 weapons, which had been adopted by the U.S. military and had achieved popularity and high sales. The M249, M249 PARA, and P90 have been featured in popular video games, movies, and television shows.

Trade Dress and Trademarks

Given their distinctive designs, the M249 and P90 guns enjoyed trade dress rights, the court said. The length of use of the designs (over three decades), extensive advertising, and high sales figures indicated that consumers recognized the guns as high-quality products that derived from or were authorized by FNH.

Cybergun’s license included all rights to the design, including trade dress rights, and trademarks for use with airsoft guns, air guns, and paintball guns. Cybergun and its subsidiaries had a market share of approximately 30 percent in the United States, making Cybergun a relatively large player in the market.

In addition to years of continuous use of the M249, M249 PARA, and P90 trademarks, FNH held a federal registration for the P90 trademark, dating back to 1996.

Jag imported, distributed, and sold air soft rifles that can be used to fire BB pellets, paintballs, and other non-bullet projectiles. Recently, Jag allegedly advertised and sold identical copies of the M249, M249 PARA, and P90 firearm design, using the same trademarks used by the plaintiffs to sell their guns. The specific products alleged to infringe the plaintiffs’ rights included the ECHO1 USA M249 MKII, the ECHO1 USA M249 PARA, and the ECHO1 USA E90.

Comparing the products revealed that Jag had deliberately copied the plaintiffs’ proprietary designs. For example, Jag’s M249 MKII featured a design that shared FNH’s M249 design, both overall and with respect to specific design elements, such as a pistol grip having lateral grooves, a contoured carrying handle extending from the top of the barrel, a groove where the stock widens, and a rounded portion that protrudes in the upper portion of the rear of the stock.

Functionality

Under the Lanham Act, there was a presumption of functionality, and the plaintiffs had the burden to prove nonfunctionality. The plaintiffs met their burden in demonstrating that the overall product configurations of the weapons were nonfunctional, the court determined.

Although they functioned as firearms, the guns were uniquely identifiable by their appearance. Their appearance set them apart from each other and from other firearms. There was no evidence that the guns were de jure functional—that is, that they worked better in their shape and configuration. They were not merely an assemblage of functional parts, the court said.

The designs of the firearms created no particular utilitarian advantage, either in terms of their use or manufacture. It was unquestioned that there were numerous alternative designs for firearms and airsoft guns. There was no advertising that touted the utilitarian advantages of the designs of the guns.

Distinctiveness

The court rejected an argument by Jag that the plaintiffs could not show that their firearms had acquired secondary meaning because the public associated the weapons with the U.S. armed forces, and not with FNH or Cybergun. The fact that the military forces used the firearms was evidence of secondary meaning, the court said, whether or not the public knew that the source was FNH. The plaintiffs had shown that the weapons were highly associated with the U.S. military, a licensed user. A licensee’s use of trade dress inures to the benefit of the trademark owner or licensor, the court said. Furthermore, the weapons were featured in popular video games that clearly identified FN Herstal as the manufacturer.

In addition, other evidence of secondary meaning—sales figures, length of use in commerce, the prominent media presence of the weapons—established that the designs of the guns had the requisite distinctiveness for Lanham Act protection.

Likelihood of Confusion

The plaintiffs met their burden in demonstrating a likelihood of confusion, the court said. A majority of the Sleekcraft factors favored a likelihood of confusion finding. The trade dress and trademarks used by the parties were almost identical. The plaintiffs’ trade dress was strong. The marketing channels for the respective goods were almost identical. Jag admitted its intent to copy the designs.

Irreparable Harm and Balance of Equities

The court found that the plaintiffs would be irreparably harmed by Jag’s infringement. The balance of equities tipped in the plaintiffs’ favor because the plaintiffs would be damaged by Jag’s infringing behavior, whereas Jag would only have to stop marketing and selling the infringing products, which were only a portion of its product offerings. The public interest favored an injunction where there was a likelihood of confusion.

The case is No. 2:12-CV-0074-KJD-GWF.

Brett L. Foster (Holland & Hart LLP) for Cybergun, S.A. Robert L. Rosenthal (Howard and Howard) for Jag Precision.

Cases: Trademark NevadaNews