Colt Defense LLC v. Bushmaster Firearms, Inc.

United States Court of Appeals
For the First Circuit

No. 06-1696

COLT DEFENSE LLC,

Plaintiff, Appellant,

v.

BUSHMASTER FIREARMS, INC.,

Defendant, Appellee.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MAINE

[Hon. George Z. Singal, U.S. District Judge]

Before

Lynch, Circuit Judge,

Selya, Senior Circuit Judge,

and Howard, Circuit Judge.

Michael A. Bucci, with whom Alexandra C. Fennell and Day,
Berry & Howard LLP were on brief for, appellant.
Jeffrey M. White, with whom Robert H. Stier, Jr., Gavin G.
McCarthy, and Pierce Atwood LLP were on brief, for appellee.

May 18, 2007
 HOWARD, Circuit Judge. This appeal arises out of a

trademark dispute between Colt Defense LLC (Colt) and Bushmaster

Firearms, Inc. (Bushmaster) over Bushmaster's use of the term "M4"

in conjunction with its sale of certain firearms. The district

court concluded that the term was generic and not entitled to

trademark protection. We affirm.

I.

In 1959, Colt purchased the right to develop the

Armalite Rifle model 15 (AR-15), a small-caliber, gas-operated

carbine rifle initially developed at the Armalite Division of

Fairchild Engine and Airplane Corporation. Colt sold a variant of

the AR-15 to the United States military, which eventually

designated it as the M16.1

In the early 1980s, the military determined that it

needed a more compact version of the M16. Colt originally designed

the prototype for this new weapon under a 1985 contract with the

military in which Colt agreed to build and test forty "XM4

Carbines."2 In 1990, the military entered into an agreement with

Bushmaster to provide sixty-five carbines "having all the physical

and technical characteristics of the M4 Carbine."

1
The "M" designation system is used by the military to
identify one piece in a series of various sorts of equipment, e.g.
firearms, tanks. "M" stands for model, with each new version in
the series receiving a sequential number.
2
The "X" before "M" means that the piece is experimental and
has not been officially classified.

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 In 1994, the military designated the new compact version

of the M16 carbine as the M4. This was the latest in a series of

carbine designations beginning with the M1 in 1940. The M4

characteristics were derived from the XM4 prototype designed by

Colt. The M4 is a lightweight, gas-operated, air-cooled, magazine-

fed, selective-rate-of-fire carbine with a collapsible stock. It

shares about eighty percent commonality with the M16.

An intellectual property dispute arose between Colt and

the military in the mid 1990's. Colt claimed that the military had

breached a licensing agreement concerning the technology for the

M16 by disclosing proprietary information to third parties. As

part of the settlement of this dispute, the military and Colt

executed the 1997 "M4 Carbine Addendum to Technical Data Sales and

Patent License Agreement" (Addendum). The Addendum recognized

Colt's right to the proprietary information incorporated in the M4

carbine design and defined the term "M4 Carbine" to mean "the

compact carbine designed by Colt, 5.56mm, having a 14.5" barrel,

with a telescoping buttstock, that is capable of firing in the

semi-automatic and or three round bursts, defined in U.S.

Government specification MIL-C-70559 . . . ." The design set forth

in MIL-C-70559 was deemed proprietary to Colt and, as part of the

Addendum, the military designated Colt as its sole supplier of M4s

until 2011.

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 Outside of the military context, Colt and Bushmaster have

long competed in the sale of carbines. Bushmaster is the leading

producer of carbines for the United States commercial and law-

enforcement markets, while Colt is the leading supplier to the U.S.

military but also sells to foreign governments, law enforcement

agencies, and the public.

Colt and Bushmaster each use the term "M4" in marketing

versions of their carbines. Bushmaster began using M4 in its

advertising in 1991 and has since done so continuously. In 1997,

Bushmaster began to refer to the "M4 type" weapon in its

advertising "to avoid possible confusion."3 Colt has also used M4

continuously in its advertising since at least 1992 and registered

M4 on the Principal Register of the Patent and Trademark Office in

2001. Other carbine manufacturers, including Heckler & Koch, Inc.,

also use M4 in their advertising.

In 2004, Colt filed an action in the United States

District Court for the Eastern District of Virginia against

Bushmaster and Heckler & Koch for, inter alia, infringing on its M4

mark in violation of the Lanham Act. See 15 U.S.C. § 1051 et seq.

Bushmaster, a Maine-based company, successfully moved to have the

claims against it severed and transferred to the United States

District Court for the District of Maine. Bushmaster

3
The record does not include an explanation of the sort of
"confusion" this modification is intended to avoid.

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counterclaimed for the cancellation of Colt's registration of the

M4 mark. See id. § 1064.

Heckler & Koch settled with Colt. In the settlement

agreement, Heckler & Koch was not required to pay Colt any money

but acknowledged "that Colt owns the M4 trademark and agrees that

Colt's M4 trademark is a valid and enforceable trademark that

should not be cancelled on the grounds of genericness."

Bushmaster did not settle and, in due course, moved for

summary judgment on Colt's infringement claim and its own

cancellation counterclaim. The motion was assigned to a magistrate

judge, who recommended granting Bushmaster's motion. The

magistrate judge concluded that the undisputed evidence established

that M4 was a generic term for a class of carbines and therefore

could not be trademarked by Colt. Colt objected, but the district

court adopted the recommendation without opinion. Colt appealed.

II.

We review the district court's grant of summary judgment

de novo. See Calvi v. Knox County, 470 F.3d 422, 426 (1st Cir.

2006). In so doing, we take as true the facts documented in the

record below, resolving any factual conflicts or disparities in

favor of the nonmovant. See Mulvihill v. Top-Flite Golf Co., 335

F.3d 15, 19 (1st Cir. 2003). A grant of summary judgment will be

upheld if, after construing the record favorably to the nonmoving

party, there is no genuine issue as to any material fact and the

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moving party is entitled to judgment as a matter of law. See Fed.

R. Civ. P. 56(c).

The purpose of a trademark is to identify and distinguish

the goods of one party from those of another. See 15 U.S.C. §

1127. To the purchasing public, a trademark "signi[fies] that all

goods bearing the trademark" originated from the same source and

that "all goods bearing the trademark are of an equal level of

quality." 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair

Competition § 3:2 (2007) [hereinafter McCarthy].

A proposed mark cannot acquire trademark protection

unless the mark is distinctive, that is, unless it serves the

purpose of identifying the source of the goods. Two Pesos, Inc. v.

Taco Cabana, Inc., 505 U.S. 763, 768 (1997). The Supreme Court has

divided marks into five categories of distinctiveness: (1) generic,

(2) descriptive, (3) suggestive, (4) arbitrary, or (5) fanciful.

See id. (citing Abercrombie & Fitch Co. v. Hunting World, Inc., 537

F.2d 4, 9 (2d Cir. 1976) (Friendly, J.)). The further along this

spectrum a term falls, the more likely it is to receive trademark

protection. Id.

Generic terms, being the least distinctive, receive no

trademark protection. See Park 'N Fly, Inc. v. Dollar Park & Fly,

Inc., 469 U.S. 189, 193-94 (1985); I.P. Lund Trading ApS v. Kohler

Co., 163 F.3d 27, 39 (1st Cir. 1998). "A generic term is one that

does not distinguish the goods of one producer from the goods of

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others. Instead, it is one that either by definition or through

common use has come to be understood as referring to the genus of

which the particular product is a species." Keebler Co. v. Rovira

Biscuit Corp., 624 F.2d 366, 373-74 (1st Cir. 1980)(internal

quotations omitted). Stated differently, a generic term answers

the question "What are you?" while a mark answers the question

"Where do you come from?" McCarthy § 12:1. For a term to be

generic, then, its "primary significance . . . to the relevant

public" must be to identify the nature of a good, rather than its

source. 15 U.S.C. § 1064(3); Magic Wand, Inc. v. RDB, Inc., 940

F.2d 638, 641 (Fed. Cir. 1991).

Where, as here, the party claiming infringement has

registered the term on the Principal Register, the registration

establishes a rebuttable presumption that the term is not generic.

15 U.S.C. § 1115(a); Door Sys. Inc. v. Pro-Line Door Sys., Inc., 83

F.3d 169, 172 (7th Cir. 1996); Keebler, 624 F.2d at 373. This

presumption may be overcome where the alleged infringer

demonstrates genericness by a preponderance of the evidence.

Keebler, 624 F.2d at 373; see also Yellow Cab Co. of Sacramento v.

Yellow Cab of Elk Grove, Inc., 419 F.3d 925, 929 (9th Cir. 2005);

Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1529 n.4 (4th Cir.

1984). "In deciding genericness, evidence of the relevant public's

understanding of a term may by obtained from any competent source."

Schwan's IP, LLC v. Kraft Pizza Co., 460 F.3d 971, 974 (8th Cir.

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2006) (internal quotations omitted). Such sources include consumer

surveys, e.g., Keebler, 624 F.2d at 375, the use of the term in

media publications, e.g., Murphy Door Bed Co. v. Interior Sleep

Sys., Inc., 874 F.2d 95, 101 (2d Cir. 1989), use of the term by

competitors in the industry, e.g., Schwan's, 460 F.3d at 975,

purchaser testimony concerning the term, e.g., In re Merrill Lynch,

Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 1570 (Fed. Cir.

1987), and the plaintiff's use of the term, Retailer Servs., Inc.

v. Freebies Publ'g, 364 F.3d 535, 544 (4th Cir. 2004).

With this background, we consider the record evidence

supporting Bushmaster's contention that M4 is generic. There are

several examples of media publications using M4 in a generic

fashion.4 For example, an article appearing on a website called

quarterbore.com described the "M4 Carbine [as] like the M16 but .

. . more compact and featur[ing] a collapsible stock." This

article, and several similar ones, refer to the M4 as a type of

carbine with certain characteristics, not a brand of carbine sold

by a certain producer, and therefore support a determination of

genericness. See Murphy Door Bed, 874 F.2d at 101 (concluding that

evidence of "numerous examples of newspaper and magazine use of the

phrase Murphy bed to describe generally a type of bed" indicated

genericness). In addition, there are several articles in the

4
Bushmaster did not submit a consumer survey to support its
claim but such evidence, while "desirable" to establish
genericness, is not required. Keebler, 624 F.2d at 375.

-8-
record that review and compare M4 carbines made by different

producers. Consistent with generic use, these articles

predominantly refer to the name of the manufacturer as the source

identifier for an M4-type weapon, e.g., "Bushmaster M4A1," "Colt

M4A1," "Rock River M4."

There is also evidence demonstrating that the term M4 is

used by several of Colt's competitors in their advertising. This

evidence is probative of generic use because "[t]he more members of

the public see a term used by competitors in the field, the less

likely they will be to identify the term with one particular

producer." Classic Foods Int'l Corp. v. Kettle Foods, Inc., 468 F.

Supp. 2d 1181, 11190 (C.D. Cal. 2007). Recently, the Eighth

Circuit affirmed a summary judgment ruling that the term "brick

oven" was generic as used to describe pizza. Schwan's, 460 F.3d at

971. To support its ruling, the court identified four other

retailers that described their product as "brick oven pizza." Id.

at 975. While there may be differences between the import of the

terms "M4" and "brick oven pizza," the relevance of competitor

usage to our inquiry is the same. And here, the record evidence is

even stronger than in Schwan's -- at least fifteen gun

manufacturers use M4 to describe their products.

Undisputed information from purchasers of carbines also

supports the conclusion that M4 is generic. The record includes

email messages sent to Bushmaster by a variety of consumers

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representing civilian, law enforcement, and miliary purchasers.

The emails use M4 as a generic descriptor. Some of the emails are

from customers asking Bushmaster for the price of its M4 and

information concerning shipment of its M4. These customers use the

phrase M4 to describe the type of gun that they hope to purchase,

not to identify the manufacturer of the gun. Cf. Glover v. Ampak,

Inc., 74 F.3d 57, 59 (4th Cir. 1996) (stating that genericness can

be shown by evidence showing that a purchaser entering a store uses

a term to mean any brand of a particular item rather than the brand

made by a single company).

Finally, there is evidence, albeit limited, that Colt

itself has used M4 generically. Generic use by the party seeking

trademark protection is relevant because "[a] kind of estoppel

arises when the proponent of [a] trademark use is proven to have

itself used the term before the public as a generic name . . . ."

McCarthy § 12:13. The record contains a Colt document using the

term M4 to describe a type of carbine. Specifically, a patent

application filed by a Colt employee referred to "M4 type rifles

and carbines" (emphasis added). See Pilates, Inc. v. Current

Concepts, Inc., 120 F. Supp. 2d 286, 299 (S.D.N.Y. 2000) (use of

challenged term to describe a product in a generic way by the party

claiming infringement can suggest that a term is generic); Birtcher

Electro Med. Sys., Inc. v. Beacon Labs., Inc., 738 F. Supp. 417,

420-21 (D. Colo. 1990) (similar).

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 In sum, Bushmaster presented sufficient evidence to rebut

the presumption that Colt's mark is not generic. Moreover, this

evidence if undisputed, would entitle Bushmaster to summary

judgment on Colt's infringement claim and its cancellation

counterclaim.5 Colt contends, however, that the evidence submitted

by Bushmaster was misinterpreted and overvalued, and that other

evidence that would create a genuine issue of material fact was

ignored. We first consider Colt's challenges to the evidence

relied on by Bushmaster and then consider the evidence that Colt

contends was ignored.

Colt claims first that the evidence concerning media

publications is not particularly useful in the genericness inquiry

and therefore should have been accorded "limited significance." In

support of this proposition, it relies on a dictum from the Third

Circuit that use of a term in trade journals to show generic use

may be "problematic." Berner Int'l Corp. v. Mars Sales Co., 987

F.2d 975, 983 (3d Cir. 1993). The Third Circuit's concern related

to the use of trade publications that are directed to producers of

a product. The court explained that the use of these materials was

"problematic" because "[a]rticles in trade journals may indicate

5
Colt does not dispute that a conclusion that M4 is generic as
a matter of law would support a summary judgment ruling in
Bushmaster's favor on the infringement claim and cancellation
counterclaim. See McCarthy § 20:56 ("A registration can be
cancelled at any time if the registered mark becomes the generic
name for the good or services, or a portion thereof, for which it
is registered.").

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what a term means to the producer but not what it means to the

relevant consuming public." Id. Here, however, the articles cited

by Bushmaster to show generic use were articles written for

consumers, not producers.6 Thus, the concern expressed in Berner

has no application because the articles relied on by Bushmaster do

show the meaning of M4 to the relevant consuming public.7

Colt next challenges Bushmaster's reliance on purchaser

testimony. As mentioned above, this evidence consisted of several

communications from customers to Bushmaster in which they asked

Bushmaster questions about its M4 carbine. Colt asserts that this

evidence does not show generic use of M4 but rather purchaser

confusion. It contends that these purchasers could be understood

to have used M4 as a replacement for the name "Colt" and were

demonstrating that they were confused about the source of the gun.

This is not a reasonable inference from the evidence. See Nat'l

6
In addition to the "quarterbore" website discussed above,
Bushmaster relied on articles from Soldier of Fortune, Special
Weapons, Gun & Weapons for Law Enfrocement and Shotgun News. These
are all consumer-oriented publications.
7
Colt also criticizes the reliance on Bushmaster's publication
evidence on the ground that the magistrate judge's analysis
contained an internal inconsistency. According to Colt, it is
impossible to reconcile the magistrate judge's observation that the
record contains numerous articles that identify M4 "as a Colt
product" with his ultimate conclusion that the publication evidence
supported genericness. This was not a contradiction at all. The
magistrate judge meant that several articles used M4 to describe
Colt's product in the same manner that M4 was used to describe
other competitors' products, viz., along with the name of the
producer (e.g. the "Rock River M4"/the "Colt M4"). As discussed
earlier, this type of usage supports a finding of genericness.

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Amusements, Inc. v. Town of Dedham, 43 F.3d 731, 743 (1st Cir.

1995) ("a court pondering a Rule 56 motion need not embrace

inferences that are wildly improbable or that rely on tenuous

insinuation"). These purchasers intentionally directed their email

communications about purchasing M4s to Bushmaster at Bushmaster's

website; there is nothing to suggest that, in asking Bushmaster

about an M4 that it was selling, these purchasers thought that they

were asking Colt about a weapon that it was selling or were asking

Bushmaster about a Colt product.

Turning to the evidence that Colt contends was

overlooked, we begin with Colt's registration of M4 on the

Principal Register. Colt claims that its successful registration

is a fact that, by itself, defeats Bushmaster's summary judgment

motion. This is so, according to Colt, because even after

Bushmaster put forward evidence to rebut the presumption of

validity established by the registration, "the registration

continued to serve as strong evidence that the trademark is not

generic in the eyes of the relevant public."

Colt's argument overstates the significance of a

registered mark. As stated above, a registered mark serves to

establish a rebuttable presumption that the mark is subject to

trademark protection. Borinquen v. Biscuit Corp. M.V. Trading

Corp., 443 F.3d 112, 117-18 (1st Cir. 2006). However, once this

presumption has been overcome, the party holding the certificate of

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registration may not avoid summary judgment simply by pointing to

the certificate as evidence. See Retail Servs., 364 F.3d at 543-

44; Natron Corp. v. STMicroelectronics, Inc., 305 F.3d 397, 405

(6th Cir. 2002); Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778,

784 (9th Cir. 2002); Liquid Controls Corp. v. Liquid Control Corp.,

802 F.2d 934, 937 n.2 (7th Cir. 1986).

Colt relies on the Fourth Circuit's decision in America

Online, Inc. v. AT&T Corp. 243 F.3d 812 (4th Cir. 2001), for the

proposition that proof of registration is, by itself, adequate to

defeat a summary judgment motion. But America Online "nowhere

suggested that registration created a per se issue of fact

sufficient to defeat summary judgment." Retail Servs., 364 F.3d at

543. The certificate of registration was sufficient to defeat

summary judgment in America Online only because the plaintiff

submitted "other evidence" that the mark was not generic. Id.; see

also Tie Tech, 296 F.3d at 784 (concluding that America Online does

not stand for the proposition that "registration itself would

always raise a material issue of fact").

Colt next asserts that summary judgment was improper,

because there was evidence that the military associates the term M4

with Colt and that, based on this evidence, a reasonable factfinder

could conclude that M4 is not generic. Colt contends that this

evidence was incorrectly excluded, because its exclusion was based

on the court's erroneous view that the military's understanding was

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irrelevant because "it was not among the classes of purchasers who

are free to choose among the products of competing manufacturers."

We agree with Colt that it would be incorrect to exclude

evidence of the military's understanding of the term M4 simply

because it had a sole-source contract with Colt and therefore could

not purchase the weapon elsewhere. The test for genericness is the

"primary significance of the mark to the relevant public." 15

U.S.C. § 1064(3) (emphasis added). Sometimes, the relevant public

will not be the potential purchasing public as a whole but rather

"a relatively small group of highly trained and knowledgeable

customers." Nartron Corp., 305 F.3d at 406. The military is, of

course, a significant and sophisticated participant in the carbine-

purchasing market, and we know of no trademark law principle that

renders its understanding of the meaning of M4 inadmissible simply

because it was under contract to buy exclusively from Colt.

But that evidence should be considered does not mean that

it carries enough weight to create a triable issue. Colt relies

primarily on the Addendum to show that the military associates the

term M4 with Colt and points specifically to the provision of the

Addendum that provides that the M4 is a carbine "designed by Colt."

The Addendum does not provide an opinion from the

military that it believed that M4 was a term associated with Colt.

The Addendum memorialized a procurement arrangement negotiated

between Colt and the military to resolve an intellectual property

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dispute. The military could have contracted with multiple

producers or given a sole-source contract to another producer to

provide it with M4s. Indeed, in 1990, the military did so by

contracting with Bushmaster for M4s.

At bottom, the Addendum is merely evidence of a business

relationship of a limited duration between Colt and the military;

it is not evidence of the military's general and enduring

understanding of the meaning of M4 outside of the contractual

relationship. The genericness inquiry is "concerned with the

common use of language," McCarthy § 12:4, not the defined terms in

a negotiated contract between the trademark holder and a third

party.8 Indeed, there is every possibility that the military will

contract with another producer to build M4s in 2011, when the

Addendum's sole-source provision expires. If the Addendum

supported a non-generic finding and the military does change

suppliers in 2011, it could lead to the absurd result of the

military being prevented from identifying the weapon by use of the

very classification system that it originally have devised.

Colt next points to Heckler & Koch's settlement of Colt's

infringement claim as evidence of non-generic use. In the

settlement (which did not require Heckler & Koch to pay any money),

8
We further observe that terms within an agreement are often
defined for the very reason that the common use of a term does not
accurately capture the parties' intended meaning for purposes of
the relationship.

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Heckler & Koch stated "that Colt owns the M4 trademark and agrees

that Colt's M4 trademark is a valid and enforceable trademark that

should not be cancelled on the grounds of genericness." This

statement is not probative for the same basic reason as the

evidence concerning the Addendum: it is not evidence of the common

use of M4. It is evidence that Heckler & Koch agreed to a legal

conclusion for which Colt negotiated. For obvious reasons, such

evidence has little, if anything, to do with the general

understanding of M4 to the relevant public.9

Finally, Colt contends that evidence that there are

words other than M4 to designate the product at issue was ignored.

According to Colt, such evidence is probative of non-generic use

because the existence of other suitable identifiers suggest that M4

is not a name for a type of gun but rather is an identifier of the

brand of gun. Colt argues that the words carbine, rifle, and

firearm are adequate alternative descriptors of the M4.

This argument is misplaced. The M4 is a lightweight,

gas-operated, air-cooled, magazine-fed, selective-rate-of-fire

9
Colt also contends that Bushmaster "implicitly acknowledged"
that M4 is a non-generic term by agreeing in 1997 to use the term
M4-type "to reduce confusion." As we noted earlier, supra note 3,
the record contains neither an explanation of the type of confusion
that Bushmaster sought to reduce nor other evidence concerning
Bushmaster's decisions to refer to the M4-type weapon (although one
possible inference is that the reason was that it would be illegal
to sell an automatic M4 to the public). In any event, it would be
pure speculation to conclude that this is evidence of Bushmaster's
understanding that M4 was not a generic term; the evidence adds
little to Colt's case.

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weapon with a collapsible stock. 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." Webster's Third New Int'l Dictionary

335 (1993). It does not capture the several characteristics that

comprise an M4.

To summarize, Colt was integral to the development of the

technology that comprised the type of carbine designated by the

military as the M4. But there is no dispute that the term M4 was

coined by the military as part of its weapons designation

nomenclature. Bushmaster presented evidence that the relevant

consuming public continues to associate M4 with the military

designation for a carbine that has certain characteristics. Colt

has presented no more than a scintilla of evidence to show that the

relevant public has come to understand M4 as an identifier of a

Colt-made product. See Hochen v. Bobst Group, Inc., 290 F.3d 446,

453 (1st Cir. 2002) (stating that non-moving party must offer more

than a "mere scintilla" of evidence to survive summary judgment

motion). Accordingly, the district court correctly granted

Bushmaster summary judgment on Colt's infringement claim and its

cancellation counterclaim.10

10
Colt also sued Bushmaster for infringement of the term "Match
Target." The magistrate judge recommended granting Bushmaster
summary judgment on the ground that there was no likelihood of
confusion. See Borinquen Biscuit, 443 F.3d at 120 (showing of
likelihood of confusion is element of trademark infringement

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 III.

For the reasons stated above, the judgment is affirmed.

Costs are awarded to Bushmaster.

claim). In its objection to the magistrate judge's recommendation,
Colt did not specifically challenge the ruling pertaining to the
"Match Target" infringement claim. Accordingly, Colt's appellate
challenge to this ruling is waived. Santiago v. Canon USA, Inc.,
138 F.3d 1, 4 (1st Cir. 1998) ("[A] party's failure to assert a
specific objection to a report and recommendation irretrievably
waives any right to review by the district court and the court of
appeals.").

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