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.
-2-
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.
-3-
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.
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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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