M4 registration shot down by First Circuit
In Colt Defense LLC v Bushmaster Firearms Inc, the US Court of Appeals for the First Circuit has affirmed the District Court of Maine's grant of summary judgment on a counterclaim alleging genericness. Ownership of a federal trademark registration was not enough to overcome the fact that the term 'M4' is recognized, in the general understanding of the relevant public, as a generic term for a specific type of rifle, as opposed to as a source identifier for a rifle from a particular manufacturer.
The case centred on the use of the term 'M4' for lightweight, gas-operated, air-cooled, magazine-fed, selective rate-of-fire carbine rifles with a collapsible stock. Colt Defense LLC owned a federal trademark registration in the term and had used it for several years for rifles made pursuant to a military contract. Bushmaster Firearms Inc, a competitor, also used the term 'M4' to designate certain of its rifles having characteristics similar to those of Colt's rifles. In response to a claim of trademark infringement by Colt, Bushmaster counterclaimed for cancellation of Colt's registration, and thereafter moved for summary judgment.
In support of its motion, Bushmaster presented evidence that a website and several media publications had used the term 'M4' to refer to a type of rifle with certain characteristics, rather than a brand of rifle by a certain producer. Bushmaster also pointed to at least 15 third-party gun manufacturers using M4 to describe their competitive products, and to several emails sent to Bushmaster from consumers representing civilian, law enforcement and military purchasers, all using M4 as a generic descriptor. Making Colt's claim more difficult, Bushmaster established that Colt itself had used the 'M4' term generically in a patent application. In its defence, Colt tried unsuccessfully to minimize the relevance of the internet and media references, and also argued that the consumer emails were actually evidence of purchaser confusion, not genericness. The district court, however, agreed with Bushmaster, and concluded that the evidence presented by Bushmaster was sufficient to demonstrate the absence of any genuine issue of material fact on the question of whether 'M4' was a generic term.
On appeal, Colt argued that the district court's interpretation of the evidence had been erroneous, and that certain facts had been ignored by the district court, which, when viewed in a light most favourable to Colt, demonstrated, at a minimum, genuine issues of material fact. Specifically, Colt pointed to:
- its federal trademark registration;
- the fact that the military had allegedly recognized the association of M4 with Colt;
- the fact that Colt had obtained a settlement agreement from another rifle manufacturer specifically acknowledging Colt's rights in the 'M4' term; and
- the fact that there are other generic words that can be used to describe rifles of the type sold under the M4 name.
The appellate court was not persuaded and held that the district court had not erred in reaching its conclusion on the genericness issue. A federal registration, the appellate court stated, may entitle the trademark owner to a presumption that a term is not generic, but any such presumption is a rebuttable one, and can be overcome where the accused infringer demonstrates genericness by a preponderance of the evidence. The decision on genericness is made based on the "relevant public's understanding of the term", and that understanding may be obtained "from any competent source". Here, the evidence presented by Bushmaster overcame the presumption. As to the other main arguments raised by Colt, the military's "recognition" of the purported link between M4 and Colt was but a reference in a military contract, not an opinion from the military that it believed M4 was associated with Colt or evidence of the common use of the 'M4' term; and the third-party settlement agreement was a negotiated legal conclusion, and not evidence of how the relevant public understood the term.
Because the undisputed evidence established that 'M4' was a generic term for a class of rifles, Colt was not entitled to trademark protection, and Bushmaster was entitled to summary judgment on its cancellation counterclaim.
Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York
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