First Circuit: "M4" generic for certain carbine firearms, summary judgment affirmed

May 21, 2007
Post by Blog Staff

The First Circuit on Friday held that, in the context of certain carbine firearms, the term "M4" was generic, and therefore not subject to trademark protection. The court found that notwithstanding a registration on the principal register, the evidence presented was such that the only reasonable inference was that M4 was generic in the minds of the purchasing public for the carbine firearm the military had designated as the "M4."

More details of Colt Defense LLC v. Bushmaster Firearms, Inc. after the jump.

In the early 1980s, Colt designed a prototype weapon for the United States military designed to be a more compact version of the M16. Eventually, the military adopted the name "M4" for this newly-designed firearm (the military designates new models of various pieces of equipment with the "M" designation for model, with each new version getting the next sequential number).

After the weapon was initially designed, several other manufacturers began producing and selling their own M4 carbines. One of these was Bushmaster, the defendant in this case, who manufactured M4 firearms for both the military early on and the general purchasing public. Bushmaster began using the M4 designation for its version of this particular carbine in 1991. In 2001, Colt filed for a trademark registration with the USPTO, and in 2003, the M4 mark was registered (reg. no. 2734001).

In 2004, Colt filed a trademark infringement lawsuit against Bushmaster and another manufacturer, Heckler & Koch. The cases were severed, and eventually Heckler & Koch settled. Bushmaster moved for summary judgment of genericness, which the district court granted.

The First Circuit affirmed. The court found that Bushmaster had presented compelling evidence that M4 was generic for M4 carbine firearms sufficient to rebut the presumption of validity provided by Colt's trademark registration. This evidence included:

  • Several media publications directed toward consumers using M4 as the generic term for the type of firearm
  • Use of M4 by several of Colt's competitors in their advertising to describe the type of weapon
  • Correspondence from consumers to Bushmaster using M4 to describe the type of weapon, not the manufacturer
  • Limited evidence that Colt itself has used M4 generically

The court noted that while consumer survey evidence on the issue of genericness is "desirable," it is not mandatory to show genericness.

While Colt argued that this evidence was not probative of the issue, the court ultimately rejected Colt's arguments as either unreasonable inferences or contrary to the record. The court also rejected Colt's contention that its registration of the M4 mark should "automatically" result in denial of summary judgment on the issue of genericness, but the court rejected this proposition as well.

The final nail in the coffin of Colt's case was its inability to provide a plausible argument for what Colt thought the appropriate generic name for these firearms should be. Colt asserted that the appropriate generic term should be "carbine," "rifle," or "firearm." However, the court noted that these terms fail to capture all aspects of the M4, namely that it is "a lightweight, gas-operated, air-cooled, magazine-fed, selective-rate-of-fire weapon with a collapsible stock." According to the court:

Colt has identified no word, other than M4, that captures these characteristics. The closest term Colt identifies is "carbine," but carbine means only a "short-barreled lightweight rifle." It does not capture the several characteristics that comprise an M4.

Based on the evidence described above, combined with the fact that the military designated the weapon as the "M4," the court affirmed the grant of summary judgment of genericness.

To read the full opinion in Colt Defense LLC v. Bushmaster Firearms, Inc., click here.

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