Acquiring Secondary Meaning: Manufacturing or Marketing/Distribution

Knights Armament Co. v. Optical Sys. Tech. Inc., No. 09-14480 (11th Cir. Sept. 2, 2011)

Appellant Optical Systems Technology Inc. (OSTI) and Appellees Knights Armament Company and its owner C. Reed Knight Jr. claimed ownership of the trademarks used in the manufacturing (OSTI) and marketing (KAC) of clip-on night vision devices: “Universal Night Sight” and “UNS”. The first part of the appeals affirmed the summary judgment summary judgment against OSTI in their claim for misappropriation of trade secrets in violation of FUTSA.  The second part of the appeal examined OSTI’s claim against KAC and Knight under U.S.C Section 1125(a) for trademark infringement, and under state and common law. The trial court found that there was no genuine issue of material fact as to the priority of the mark. The appeals court agreed. The appeals court decided the only remaining issue of fact was the extent of OSTI’s protected ownership of the mark. The appeals court affirmed the district court’s decision that the mark was descriptive. The appeals court stated that any party seeking trademark protection of a descriptive mark must demonstrate that the mark acquired secondary meaning before the alleged infringer first began use of the mark. Here, the district court found that any confusion n the marketplace was caused by the failure of both parties to identify each of their marks clearly in the key time period. Also, there was no indication that the UNS mark belonged to OSTI instead of KAC. So, consumers had no reason to associate OSTI’s mark with the product. Thus the court stated the mark was not distinctive because it had not acquired secondary meaning. The court found that OSTI owns the mark, but has no protectable rights in the mark because it is descriptive without secondary meaning.