IP Law Daily, TRADEMARK—E.D.N.Y.: Tactical camouflage gear has not been victim of ‘genericide,’ court finds, (Sep 18, 2024)

By Matthew Hersh, J.D.

The MULTICAM mark was not adopted by the public nor was it generic.

The trademarked name of a popular brand of camouflage gear had not lost its trademark protection by being adopted by the public in the manner of generic terms like aspirin, thermos, and cellophane, the federal court for Brooklyn has held. The court, in granting a preliminary injunction in favor of the camouflage design company against a company that allegedly infringed its mark, also found that the company had made shown a reasonable likelihood of success on its copyright infringement claim (Crye Precision LLC v. Concealed Carrier, LLC, No. 1:23-cv-04469-EK-LKE (E.D.N.Y. Sept. 17, 2024)).

The lawsuit was brought by Crye Precision, a Brooklyn-based design and manufacturing firm that specializes in producing military and police uniforms and equipment. The product at issue in the case is the company’s “MultiCam” design, a camouflage pattern created by Crye’s founder, Caleb Crye. Crye holds, through an affiliate, the copyright in and to the MultiCam pattern. It also owns two federally registered trademarks that are used in connection with the advertising, marketing, and sale of MultiCam products bearing the MultiCam design.

The lawsuit takes aim at Tacticon, a California corporation that markets, distributes, and sells products through e-commerce websites throughout the United States. The Brooklyn company, believing that its California competitor was selling and marketing products bearing a camouflage pattern that was virtually identical to the MultiCam design, brought suit in 2023. The complaint alleged claims of copyright infringement, several violations of the Lanham Act, and unfair competition under New York law.

The Brooklyn corporation moved for a preliminary injunction, leading to this opinion.

Copyright infringement. The court found that the Brooklyn company was likely to prevail on its copyright infringement claim. The first question it had to tackle was whether the company’s camouflage design was sufficiently original to be protectable by copyright. The court found that it was. Its owner, the court noted, attested to the process by which he created MultiCam—hand-drawing more than a hundred unique shapes and then selecting, grouping, and layering them in a specific arrangement. Indeed, the court noted, he combined seven distinct colors in different layers to create the final pattern. “The selection, contours, arrangement, and colors of the various shapes all involved aesthetic choices,” the court observed. The design was therefore original.

The design was also not disqualified by virtue of being a utilitarian product. The California company argued that because camouflage’s function is to disguise the wearer’s location by blending into the background, MultiCam was an unprotectable “useful article.” But under Star Athletica, L.L.C. v. Varsity Brands, 580 U.S. 405 (2017), the Supreme Court’s latest pronouncement on the useful article doctrine, the court noted, the design of a useful article is “eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.” The camouflage design easily met this test, the court found. It was easy to spot the two-dimensional elements of the design that had pictorial and graphic qualities, the court noted—and equally easy to imagine the design standing on its own. Indeed, the court noted, imagination was not even necessary in this case: the design had already been used on a NASCAR car, on professional sports team jerseys, and as a piece of artwork featured in the Museum of Modern Art. The useful article doctrine would not bar protection here.

Finally, the court held, the substantial similarity test was also met. In light of the design’s wide dissemination, the court noted, the California company was certainly likely to have had access to it. Moreover, the Brooklyn company provided substantial evidence of copying by lining up or overlaying the two patterns. “When superimposed on top of MultiCam’s pattern,” the court noted, “the Tacticon design continues the shapes and arrangement of the underlying pattern in a near-seamless manner.” Given these striking similarities, the court noted, “an ordinary observer would likely recognize Tacticon’s design as having been appropriated from the MultiCam pattern. The Brooklyn company was likely to prevail on its copyright infringement claim, the court concluded.

Trademark infringement. The Brooklyn company was also likely to prevail on its trademark claim, the court found. The first question was whether the company’s federally registered trademarks were valid. The California company argued that one of the trademarks had been obtained by fraud, claiming that the Brooklyn company misled the USPTO by representing that the term “Multicam” had no significance nor was a term of art in the relevant trade or industry. The statement was false, the California company argued, because “MultiCam” was “short for the descriptive phrase ‘multi-environment camouflage’” and therefore clearly had “significance to the [camouflage] goods described in the application.” But the California company did not proffer “meaningful evidence” that the word was in fact functioning as a term of art in the industry, the court noted—and in any event, the court observed, “the statement appears to be technically accurate.” Indeed, the evidence showed “MultiCam” was simply “a made-up word that had no meaning in the industry and was not used to describe the goods identified in the [] Registration.” The fraud claim would fail.

Nor had the mark lost its protected status by having become generic, the court found. Even an incontestable mark can be rendered invalid if it has become “the generic name for the goods or services, or a portion thereof, for which it is registered,” the court noted. As relevant here, the court noted, “a term is the victim of ‘genericide’ where “a seller establishes trademark rights in a term which a majority of the relevant public then appropriates as the name of a product.” Notable examples of genericized terms, the court observed was aspirin, cellophane, escalator, and thermos. The California company argued that the term “multicam” had become a generic term for “camouflage used in multiple environments” and therefore could not function as a trademark. But the company could marshal evidence of only 11 third-party online retailers that use the term “multicam” in selling camouflage gear—and four of them, in turned out, were actually licensed distributors or sellers of MultiCam products. There was no genericide here.

Finally, the court found, the evidence for likelihood of consumer confusion was strong. Most importantly, the court found, the MultiCam mark was neither generic nor descriptive but rather suggestive. The mark “[did] not immediately describe the nature of Crye’s products—camouflage suitable for multiple environments—but instead require[d] the consumer to make at least some additional mental effort to identify the associated product in particular,” the court noted. Moreover, the court noted, there was evidence that the California company’s products were of inferior quality—particular taking into account the exacting specifications that the Brooklyn company imposed on the companies that it authorized to reproduce its designs on military gear. The only factor that appeared to weigh in favor of the California company, the court noted, was the sophistication of consumers, as many of the purchasers of the product were in the professional military and police fields. But that would not tilt the balance in the end, the court found.

Other preliminary injunction factors. With the likelihood established that the Brooklyn company would prevail on the merits, the court found, the other factors also supported an injunction. The most important fact, the court noted, was that the California company sold a pattern virtually identical to the MultiCam design, “but on fabrics and materials that undisputedly lack the specifications required by Crye.” Thus, the court noted, the California company’s products “threaten to cause confusion among customers and loss of goodwill for plaintiffs.” That was enough to easily push the court in favor of the injunction.

The Case is No. 1:23-cv-04469-EK-LKE.

Judge: Komitee, E.

Attorneys: Robert Allen Horowitz (Greenberg Traurig, LLP) for Crye Precision LLC. Anna Antonova (Kilpatrick Townsend & Stockton LLP) for Concealed Carrier LLC.

Companies: Crye Precision LLC; Concealed Carrier LLC

Cases: Copyright Trademark NewYorkNews