RULING ON CROSS-MOTIONS FOR SUMMARY JUDGMENT
Pursuant to Fed.R.Civ.P. 56, Plaintiffs and Defendants have filedcross-motions for summary judgment. For the reasons stated herein,Plaintiffs' Motion [Doc. No. 157] is granted in part,denied in part and Defendants' Motion [Doc. No. 144] isgranted in part, denied in part. Additionally,Defendants' Motions to Strike [Doc. Nos. 186 and 193] aredenied.
Plaintiffs New Colt Holding Corporation and Colt's ManufacturingCompany, Inc. brought this action against RJG Holdings of Florida, Incf/k/a American Western Arms and AWA International, Inc. t/a AmericanWestern Arms alleging violations of the Lanham Act. 15 U.S.C. § 1051,et seq. (LEXIS 2004) and the Connecticut Unfair Trade PracticesAct ("CUTPA"), Conn. Gen. Stat. § 42-110b(a) (LEXIS 2004). Pursuantto Sections 32, 43(a), and (c) of the Lanham Act, 15 U.S.C. § 114,1125(a), and (c), Plaintiffs allege infringement of the trade dress oftheir Peacemaker revolver (Count One), dilution of the trade dress of thePeacemaker revolver (Count Two), infringement of their registeredtrademarks "Peacekeeper"Page 2(Count Three) and "Rampant Colt (Count Four), infringement ofPlaintiffs' unregistered marks "Peacekeeper" (Count Five) and "ArmsearCrest" (Count Six), federal unfair competition (Count Seven), and unfaircompetition under state law pursuant to the CUTPA, Conn. Germ. Stat.§ 42-110b(a) (Count Eight).
Defendant AWA asserts five counterclaims against Plaintiffs. Pursuantto the Lanham Act, 15 U.S.C. § 1125(a)(1), Defendant AWA allegesfalse designation of origin claims as to whether Plaintiffs' Cowboyrevolver is manufactured in the USA and false advertising concerninghistorical significance (First Counterclaim). Defendant AWA also allegesfalse designation of origin in as much as Plaintiffs mark their revolversas manufactured in Hartford, Connecticut (Second Counterclaim). Aviolation of the CUTPA, Conn. Gen. Stat. § 42-1 10a et seq.is asserted when Plaintiffs filed a letter of protest with respect toDefendant's attempt at registration of the mark "Peacekeeper" (ThirdCounterclaim). Finally, it is alleged that the name "Single Action Army"and Plaintiffs' alleged trade dress have either been abandoned or becomegeneric (Fourth and Fifth Counterclaims).
The majority of the relevant facts will be discussed as necessary inthe substance of this Ruling, however, some background is necessary.1Plaintiff New Colt Holding Corp. is a corporation organized and existingunder the laws of Delaware with its principal place of business in NewYork, NY. New Colt is the parent company of Plaintiff Colt'sManufacturing Company, Inc., which is a corporation organized andexisting under the laws of the Delaware with a corporate address inHartford, CT. Defendant RJG Holdings of Florida, Inc. is aPage 3corporation organized and existing under the laws of Florida.Defendant AWA International, Inc. is a corporation organized and existingunder the laws of Florida with its principal place of business in DelrayBeach, FL. In October 2000, Defendant AWA assumed the operations ofDefendant RJG.
In 1872, Colt's Fire Arms began manufacturing the Model 1873 revolver,also known as the Peacemaker, Single Action Army, and/or the Model P. Theintroduction of the revolver was successful and by the end of the year,the United States Army adopted it as its standard issue. It is theappearance of this revolver, which Plaintiffs argue remains basicallyunchanged in its present day instantiation, that Plaintiffs claim astheir trade dress.
The revolver was continuously manufactured until 1941 when productionof the revolver was halted. Plaintiffs claim this was necessary in orderto dedicate their production facilities to manufacturing arms for WorldWar II. Defendants contend production stopped because the revolvers wereno longer selling well. Nonetheless, after approximately 14 years ofnon-production, manufacture of the Peacemaker resumed in late 1955. Therevolvers produced after 1955 are typically referred to as SecondGeneration Peacemakers.
Production was again continuous until 1976 when the revolver wasretooled once more. Revolvers produced after this retooling are referredto as Third Generation Peacemakers, which are produced to this day.Plaintiffs contend that the differences between the three generations ofrevolvers are negligible and that the overall appearance and trade dressremain virtually unchanged. Defendants allege there have been significantchanges and that the trade dress is not the same. It is agreed, however,that since 1873 virtually all of Plaintiffs' revolvers have had the nameaddress, either in full or abbreviated, — "Colt's Patent FirearmsManufacturing Company,Page 4Hartford Connecticut USA" — stamped as a rollmark on thebarrel of the revolver. Moreover, since 1956 Plaintiffs have beencompeting with various manufacturers of replicas of the Peacemakerrevolver.
Defendant RJG formerly known as American Western Arms was incorporatedfor the purpose of manufacturing replica Peacemaker revolvers. Itspresident, Robert Gangi, sought to manufacture the most accurate replicasof First Generation Peacemakers on the market. Mr. Gangi decided to offertwo models for sale which were based on the Armi San Marco. revolver— another replica. One of the revolvers offered was the Peacekeeperrevolver which is an extremely accurate replica of the First GenerationModel P. The other revolver is closer to the Armi San Marco. revolver andknown as the Longhorn. Defendants allege that Mr. Gangi made numerousattempts to obtain a licensing agreement from Plaintiffs. After thoseefforts failed, the first sales of Mr. Gangi's replicas were made in Juneof 2000. Shortly thereafter, the assets of his company were sold to AWAInternational. Plaintiffs filed this lawsuit in January 2002.
Plaintiffs' Peacemaker revolver retails for well over $1,000.Plaintiffs also market the "Cowboy" revolver, which they refer to as an"economy version" of the Peacemaker. It retails for approximately $700.
Plaintiffs produced a Peacekeeper revolver from approximately 1985through 1988. It was not a western style revolver and marketed towardslaw enforcement and home defense. Plaintiffs contend that they stillprovide repair services for the revolver.
"The Rampant Colt" is a registered trademark of Plaintiffs'. It is apicture of a horse rearing up with a spear between its forelegs andanother in its mouth. It often appears on the grips of Plaintiffs'revolvers inside an oval. Plaintiffs contend that they have been usingsomePage 5form of the Rampant Colt logo since 1836 and that it has appearedon the grips of Plaintiffs' revolvers since approximately 1897. TheRampant Colt also appears in connection with Plaintiffs' other firearmsand related accessories.
Plaintiffs' Armsmear Crest is the family crest of Colt's founder SamuelColt. It pictures a horse similar in appearance to the horse visible inthe Rampant Colt mark.
Defendants place a logo of a horse on their revolver grips. This logoinvolves a running horse, as opposed to rearing up, and does not pictureany spears, but is inside an oval and appears in a similar location onDefendants' revolvers. Defendants contend that the logo was designedwithout reference to Plaintiffs'.
II. STANDARD OF REVIEW:
A party moving for summary judgment must establish that there are nogenuine issues of material fact in dispute and that it is entitled tojudgment as a matter of law. Fed.R.Civ.P. 56(c); Anderson v.Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505,91 L.Ed.2d 202 (1986). "A party opposing a properly brought motion for summaryjudgment bears the burden of going beyond the pleadings, and `designatingspecific facts showing that there is a genuine issue for trial.'"Amnesty Am. v. Town of W. Hartford, 288 F.3d 467, 470 (2d Cir.2002), citing Celotex Corp. v. Catrett, 477 U.S. 317,324, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). "In moving for summaryjudgment against a party who will bear the ultimate burden of proof attrial, the movant's burden of establishing that there is no genuine issueof material fact in dispute will be satisfied if he or she can point toan absence of evidence to support an essential element of the nonmovingparty's claim." Legg v. Dellavolpe, 228 F. Supp.2d 51, 56 (D.Conn. 2002), citing Celotex, 477 U.S. at 322. Indetermining whether a genuine issue has been raised, allPage 6ambiguities are resolved and all reasonable inferences are drawnagainst the moving party. United States v. Diebold, Inc.,369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962); Quinn v.Syracuse Model Neighborhood Corp., 613 F.2d 438, 445 (2d Cir. 1980).Summary judgment is proper when reasonable minds could not differ as tothe import of evidence. Bryant v. Maffucci, 923 F.2d 979, 982(2d Cir. 1991). "Conclusory allegations will not suffice to create agenuine issue." Delaware & H.R. Co. v. Conrail,902 F.2d 174, 178 (2d Cir. 1990). Determinations of the weight to accordevidence or credibility of witnesses are improper on a motion for summaryjudgment as such are within the sole province of the jury. Haves v. N.Y.City Dep't of Corr., 84 F.3d 614, 619 (2d Cir. 1996).
A. Plaintiffs' Trade Dress Claims:
Counts One, Two, Seven, and Eight deal with claims for relief based onPlaintiffs' alleged trade dress. Defendants move for summary judgment oneach of these counts.3 Defendants' Motion is denied for thereasons stated herein.Page 7
"The concept of trade dress encompasses the design and appearance ofthe product together with all the elements making up the overall imagethat serves to identify the product presented to the consumer."Fun-Damental Too v. Gemmy Indus. Corp., 111 F.3d 993, 999 (2dCir. 1997) (citation omitted). Plaintiffs seek protection of the overallimage or design of the product and not its packaging, as trade dressclaims once exclusively involved. See Wal-Mart v. SamaraBros., 529 U.S. 205, 209, 120 S.Ct. 1339, 146 L.Ed. 182 (2000)(discussing recent expansion of trade dress to encompass design featuresof the product itself). A plaintiff asserting trade dress rights in adesign must prove (1) that its design is "distinctive as to the source ofthe good," i.e. that it has acquired secondary meaning, and (2) "thatthere is a likelihood of confusion between its good and the defendant's."Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir.2001). Even assuming demonstration of those elements, trade dress doesnot protect designs descriptions that are "overbroad or `generic'"— i.e. "those that `refer to the genus of which the particularproduct is a species.'" Id. (citation omitted). Trade dress isnot designed to protect ideas or generalized appearances and thus properinterpretation of trade dress protection avoids the "monopolization ofproducts and ideas." Id. Finally, trade dress protection "maynot be claimed for product features that are functional." QualitexCo. v. Jacobson Prods. Co., 514 U.S. 159, 164-65, 115 S.Ct. 1300,131 L.Ed.2d 248 (1995). Therefore, the burden is on a plaintiff seekingtrade dress protection for a design to demonstrate that it is notfunctional. TrafFix Devices, Inc. v. Marketing Displays, Inc.,532 U.S. 23, 29, 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001). Based on thestrong likelihood of functional features appearing in product designs andthe desire to avoid creating a monopoly in the goods themselves, asopposed to simply their appearance, courts exercise "particular caution"when "extending protection to product designs."Page 8Yurman, 262 F.3d at 114-15. As Defendants move forsummary judgment with respect to each of these elements, they will bedefined further and discussed below.
1. Sufficiency of Plaintiffs' Description of Their TradeDress:
Defendants argue that Plaintiffs cannot be afforded any protectionbecause they have failed to adequately describe their claimed tradedress. With respect to a product line, a "focus on the overall look of aproduct does not permit a plaintiff to dispense with an articulation ofthe specific elements which comprise its distinct dress." LandscapeForms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 381 (2d Cir.1997). Requiring an appropriate level of specificity furthers severalimportant interests: 1) "without a specification of the design featuresthat compose the trade dress, different jurors viewing the same line ofproducts may conceive the trade dress in terms of different elements andfeatures, so that the verdict may be based on inconsistent findings"; 2)"no juror can evaluate secondary meaning, overbreadth, ornonfunctionality without knowing precisely what the plaintiff is tryingto protect"; 3) "a plaintiff's inability to explain to a court exactlywhich aspects of its product design(s) merit protection may indicate thatits claim is pitched at an improper level of generality, i.e., theclaimant seeks protection for an unprotectable style, theme or idea[,]"which will help eliminate claims that "are overbroad as a matter of law";and 4) "courts will . . . be unable to shape narrowly-tailored relief ifthey do not know what distinctive combination of ingredients deservesprotection." Yurman Design, 262 F.3d at 117 (internal citationsomitted).
Plaintiffs argue that although they meet the requirements set outabove, because Yurman and Landscape Forms apply toproduct lines, not individual products, they are not applicable. Pl. Br.Opp. Def. Mot. for Summ. J. at 8-9 n. 3. Moreover, Plaintiffs cautionagainst requiring anPage 9emphasis on written descriptions of the dress over and above thevisual representations submitted. Id. at 7, citingImagineering, Inc. v. Van Klassens, Inc., 851 F. Supp. 532, 542(S.D.N.Y. 1994) ("To require that [a plaintiff] describe its trade dressonly in prose would run the risk, first, that the description might notadequately describe this `image,' and, second, that defendants' would beprovided numerous opportunities to seek to evade the injunction'sproscription by, for example, changing one aspect of a multi-faceted`image' and claiming that the trade dress, as defined, was not beinginfringed").
While the present action does not involve an entire line of products,Plaintiffs do not point to any case law that would prevent a court fromimposing similar standards here. Indeed, the reasoning behindLandscape Forms and Yurman Designs is persuasive inany trade dress claim. It is more relevant when, as here, the productinvolved is part of a long and well-known history and where Defendantsargue that the design itself is part of the public domain and notPlaintiffs' to claim. Under these circumstances it is appropriate torequire Plaintiff to clearly articulate the basis for its trade dressclaim rather than risk overbroad protection and imprecise relief (shouldany be granted). With that said, the usefulness of visual representationsof the product to aid the trade dress definition is not in dispute.
As to the actual description, in their Complaint Plaintiffs describethe trade dress in the following way: (a) the shape, style, composition and finish of the grip frame; (b) the angle of the grip frame in relation to the frame and barrel; (c) the shape, style, composition and finish of the trigger and trigger guard; (d) the angle or slant of the trigger guard in relation to the frame and barrel; (e) the shape, style, composition and color of the grip panels, including the rampant colt and eagle emblazoned on the sides;
(f) the shape and style of the front sight;Page 10
(g) the shape and style of the rear sight;
(h) the shape, style and finish of the checkered hammer; (i) the shape, style and finish of the color case hardened frame; (j) the shape, length, style and finish of the steel barrel; (k) the shape, style and finish of the steel cylinder; (1) the shape, style and finish of the cylinder pin; and (m) the shape, style and finish of the ejector rod and ejector rod housing.Amended Complaint ¶ 43. Although not elaborating on thisdescription in the text of their Opposition Brief, Plaintiffs point totwo exhibits to further define the nature of their claims. Pl. Br. Opp.Summ. J. at 10.
In a lengthy response to Defendants' interrogatory requesting thatPlaintiffs more specifically detail the features of the revolver claimedto be unique and/or distinctive, Plaintiffs describe the shape andappearance of the frame, rear sight, hammer, cylinder, cylinder pin,trigger, trigger guard, grips, grip frame, front sight, barrel, ejectorrod, ejector rod housing, and some variations in finish and barrel lengththat are available. See Former Decl., Exh. 75. The obviousimplication of this description is that Plaintiffs are quite literallyclaiming the appearance of the entire gun leaving nothing out.
Michael Reissig's testimony supports this conclusion, explaining thatPlaintiffs claim "the overall appearance of the gun." Decl. of RobertGill, Exh. 1, Reissig Depo. at 173. According to Reissig, this entailsany available barrel length, the current configuration of the frontsight, any combination of colors that may appear through the color casehardening process, both the half moon and donut shapes of the ejector rodhead (and any variations thereof), the position of the roll marks on thegun, other words appearing on the barrel, the rampant colt and eaglestamped on the grips, the overall appearance of the hammer (including thecolor, which may include nickel, color-case, plated, blue, and fireblue), and the hammer as it relates to the rest of thePage 11appearance of the gun.4 Id. at 172-89.
Defendants contend that these descriptions are insufficient. Inparticular, Defendants point to changes in the alleged trade dress overthe years and question which changes are part of Plaintiffs' trade dressclaims and which are excluded — if any. Defendants point to changesin the revolver's frame, including the various frame finishes mentionedabove, finishes to the barrel, cylinder, trigger guard and backstrap,variations in hammer shapes and hammer gnurling, base pin, cylinderbeveling, ejector rod heads, ejector rod housings, firing pins, frontsights, rear sights, trigger guard shapes, and cylinder bushings. Def.Br. Supp. Summ. J. at 7. Defendants also point to variations in the gripsranging from rubber with rampant colt, but no eagle, to rubber with bothrampant colt and eagle. Id. at 13. Defendants allege that thegrips have been offered in wood with medallions and wood withoutmedallions as well. Id.5
While disputing the extent and significance of these variations,nowhere do Plaintiffs assert that there have been no variations at all.In fact, Plaintiffs assert that Defendants' revolver matches some of thevariations mentioned and that variation in a 130 year old product is tobe expected. Pl. Br. Opp. Summ. J. at 11 and n.6, citingSamara Bros. v. Wal-Mart Stores, 165 F.3d 120, 129 (2d Cir.1998) ("We do not mean to suggest, however, that in order to gainprotection each garment must contain identical specified design elements.We expect that in a product line there will be inevitable variation inthe products"), rev'd in part 529 U.S. 205, 146 L.Ed.2d 182,120 S.Ct. 1339 (2000). Plaintiffs clarify that with respect to colorcase hardening, what isPage 12distinctive is the fact that the frame, as opposed to the entiregun, is finished in that fashion. Id. at 12. And Plaintiffsassert that despite all this, the overall look of the revolver hasremained essentially unchanged and recognizable. They assert that itwould be improper to focus too narrowly on individual features, as they"need not be separately protectible" in light of the overall appearance.Id., citing Bristol-Myers Squibb Co. v.McNeil-P.P.C., Inc., 973 F.2d 1033, 1042 (2d Cir. 1992) ("Individualaspects of a trade dress may be eligible for trademark protection intheir own right, but in an action for trade dress infringement eachaspect should be viewed in relation to the entire trade dress"). Whilethis may be true, at some point deflecting focus from individual featuresin favor of the whole becomes a sort of claim construction sleight ofhand that prevents meaningful interrogation of the nature of the claimasserted.
On the facts presented, any lack of clarity in Plaintiffs' descriptionsstems from their attempts to claim the entire appearance of the revolverand the difficulty inherent in adequately describing all the requisitedetails. Should all other elements be met, there is no rule of law knownor cited that prohibits a plaintiff from claiming the entire appearanceof a product as its trade dress. In this sense, Plaintiffs adequatelydescribe the claimed trade dress.6
2. Proof of Secondary Meaning:
In order to be protected, trade dress must be distinctive.See Wal-Mart Stores. Inc. v. Samara Bros.,529 U.S. 205, 209, 120 S.Ct. 1339, 146 L.Ed.2d 182 (2000) (Without theprotected trade dress being distinctive, potentially infringing tradedress would not cause confusion as to the origin, sponsorship or approvalof the goods). Trade dress can be distinctivePage 13in two ways: 1) it is inherently distinctive if its "intrinsicnature serves to identify a particular source of a product"; or 2) if thedress has acquired distinctiveness that "in the minds of the public, theprimary significance" of the trade dress "is to identify the source ofthe product rather than the product itself." Id. at 210-11. Ineither case, it is the ability of the trade dress to designate a productsource that is decisive. However, as to product designs, trade dresscannot be inherently distinctive and a plaintiff must show secondarymeaning for the dress to be protected under the Lanham Act. Id.at 215. Accordingly, Plaintiffs here must be able "to show that, overtime, the trade dress has become identified with its producer in theminds of potential consumers." L. & J.G. Stickley, Inc. v. CanalDover Furniture Co., 79 F.3d 258, 263 (2d Cir. 1996). Proof ofsecondary meaning "entails vigorous evidentiary requirements" andgenerally involves demonstration of six factors: 1) advertisingexpenditures; 2) consumer studies linking product appearance to productsource; 3) sales success; 4) unsolicited media coverage of the product;5) attempts to plagiarize the trade dress; and 6) length and exclusivityof use. Thompson Medical Co. v. Pfizer, Inc., 753 F.2d 208, 217(2d Cir. 1985). However, no single factor is determinative and everyelement need not be proven. Id. Because a producer may use acompetitor's trade dress if it is without secondary meaning, the propertime period for determining secondary meaning is when the allegedinfringement began, not the date of the original product's introduction.Nora Beverages, Inc. v. Perrier Group of Am. Inc.,164 F.3d 736, 745 (2d Cir. 1998). In this case, that date is the year 2000when Defendants began selling their replicas.
a. Advertising Expenditures:
Plaintiffs argue that the "record contains an abundance of evidence"relating to theirPage 14advertisements. P1. Br. Opp. Def. Mot. for Summ. J. at 69. Therecord does not support this assertion. Plaintiffs cite only sevenexhibits containing catalogs or advertisements that focus on therevolver's trade dress. Id. Plaintiffs do not produce anyevidence of expenditures or other relevant evidence pertaining toadvertising. Furthermore, they concede that since 1999 they have notadvertised any single action revolver in gun periodicals. Id.at 70. Considering that Plaintiffs have been manufacturing the revolverfor about 50 years since resuming production, the evidence produced couldproperly be denied weight by a fact finder. Nevertheless, Plaintiffsproduce some evidence of advertising and therefore the question cannot beresolved on summary judgment and must be counted against Defendants.
b. Consumer Studies:
Plaintiffs point to the survey conducted by Warren Keegan as evidenceof consumers linking Plaintiffs' alleged trade dress with Plaintiffs. Thesurvey Keegan conducted, although "designed to determine consumerconfusion of the names, trade symbols, and overall appearance of the twosingle action revolvers . . . also [allegedly] had the effect of testingconsumer awareness of the marks and trade dress." Decl. of H. DavidStarr, Exh. 26 at 3. To this effect Keegan states that "[w]hen shown theAWA Peacekeeper 67% indicated that they knew who made the gun. Of those,only 26% named AWA while 58% incorrectly named Colt's." Id. at8. This finding does not demonstrate a link between the claimed tradedress with Plaintiffs. In order to demonstrate such a link, consumerssurveyed would have to be shown Plaintiffs' gun and identify Plaintiffsas the manufacturer. Keegan's report goes onto state that of those who"claimed to know who made the Peacemaker" 91% correctly named Colt,Id., but it is somewhat unclear from the write up whether thisrefers to people being shown the Peacemaker (thus looking at its tradedress) or thePage 15point in the survey when participants are asked (without viewingthe revolver itself) whether they have heard of a gun called thePeacekeeper and if they know who manufactures that gun. Based on anexamination of the survey results, this statement apparently refers tothe former and would be some evidence of secondary meaning. To the extentthat it is the latter, that question would have no value towardsdemonstrating secondary meaning with respect to Plaintiffs' trade dress.
Defendants argue that this survey cannot be considered evidence ofsecondary meaning because it was designed to test consumer confusion.Def. Br. Supp. Summ. J. at 68. Defendants point to no law that wouldrequire this conclusion and it is not desirable to formulate a rule oflaw that would prevent consideration of unintended, but relevant,consequences of a survey so long as those results indicatetrustworthiness. Defendants also argue that because source indicatorswere left on the pictures of the revolvers, the survey results are notprobative as to secondary meaning. Def. Br. Supp. Summ. J. at 69.Plaintiffs counter that this is irrelevant because participants were notexposed to the manufacturers' names until towards the end of the surveywhen they viewed the photographs and even when exposed to the namesparticipants still misidentified Defendants' revolver as being made byPlaintiffs. Pl. Br. Opp. Summ. J. at 70-71. Plaintiffs misstate thenature of secondary meaning. It is inconsequential that the participantsmisidentified Defendants' revolver as Plaintiffs'. Plaintiffs mustaffirmatively show that participants identified their revolver's tradedress with Plaintiffs' manufacture. To assume misidentification ofDefendants' revolver demonstrates secondary meaning in Plaintiffs' tradedress presupposes an answer to the very question this litigation isintended to answer. Furthermore, if Plaintiffs' name appeared on therevolver the trade dress of which is at issue, then this fact castssubstantial doubt on any attempt to link participants' identification ofPlaintiffs asPage 16the manufacturer to the distinctive nature of the trade dress andnot simply the fact that Plaintiffs' name appeared on the revolver.Accordingly, as a matter of law this factor does not weigh in Plaintiffs'favor. Although, a court cannot weigh the credibility of the evidence atsummary judgment, the nonmoving party must still produce enough evidencesuch that a reasonable trier of fact could find in their favor.See Bryant, 923 F.2d at 982 (Summary judgment isappropriate when reasonable minds could not differ as to the import ofthe evidence). Plaintiffs have failed to meet that burden with respect tothis factor.
c. Unsolicited Media Coverage of the Product:
Both parties acknowledge that much has been written about Plaintiffs'revolvers. Defendants, however, argue that much of what was writtenfocuses on the time period before 1940 when Plaintiffs initially haltedproduction of the revolver and is not relevant to demonstrate secondarymeaning today. Def. Br. Supp. Summ. J. at 70-71. As stated above, therelevant period for determining secondary meaning is when Defendantsentered the market in 2000. It is unlikely therefore that media coveragefrom over 60 years ago or pertaining to that period is relevant to thatdetermination. However, Plaintiffs also produce evidence of more recentmedia attention. Defendants argue that because media attention has beenfocused on replicas as well, media attention dedicated to Plaintiffs doesnot demonstrate secondary meaning. Id. at 71. Determining theweight to accord this evidence is properly a question for a trier of factand not a court on summary judgment.
d. Sales Success:
Plaintiffs contend that since the introduction of its revolver, thetotal sales reach approximately one million. Pl. Br. Opp. Summ. J. at 72.Defendants contend that in recent yearsPage 17replica revolvers have sold at least as many revolvers asPlaintiffs, suggesting a lack of secondary meaning in Plaintiffs' tradedress. Def. Br. Supp. Summ. J. at 71. Recent sales success is moreprobative towards demonstrating secondary meaning as it pertains to thisaction, but a question nevertheless remains as to the proper weight givento each party's evidence. Attempting to resolve that question would beinappropriate on summary judgment.
e. Attempts to Plagiarize the Product:
Intentional copying may constitute "persuasive evidence of consumerrecognition." Coach Leatherware Co. v. Ann Taylor, Inc.,933 F.2d 162, 169 (2d Cir. 1991). This is particularly so when "thecircumstances indicate an intent to benefit from the good will of theprior user through confusion." Laureyssens v. Idea Group, Inc.,964 F.2d 131, 136 (2d Cir. 1992). However, this fact alone does notestablish secondary meaning, Coach Leatherware, 933 F.2d at169, and should be balanced against the recognition that, absent otherlegal protections, imitation in the marketplace is a good thing.See American Safety Table Co. v. Schreiber,269 F.2d 255, 272 (2d Cir. 1959) ("It is the unimpeded availability ofsubstantially equivalent units that permits the normal operation ofsupply and demand to yield the fair price society must pay for a givencommodity") (citation omitted).
It is undisputed that Defendants were manufacturing replicas ofPlaintiffs' revolver. Furthermore, Defendants' advertising has at leastreferenced Plaintiffs' history and founder Sam Colt. P1. Br. Opp. Summ.J. at 72. While, these facts alone are not necessarily determinative— Defendants point out, there have been manufacturers of similarreplicas for years and they continue to this day — Defendants havenot presented undisputed evidence that would entitle them to summaryjudgment. At best, Defendants create a question out of this factor whichwould havePage 18otherwise looked very much like Defendants were purposely tradingon Plaintiffs' good will. Accordingly, summary disposition is unavailableon this factor.
f. Length and Exclusivity of Use:
Plaintiffs have been manufacturing their revolvers since 1873.Defendants, however, note that since 1956 Plaintiffs have been competingwith other replica makers and that when Defendants began marketing theirgun, nine replica sellers were in the market. Def. Br. Supp. Summ. J. at72. Plaintiffs argue that the significance of "third-party copyingdepends wholly upon their usage, and third-party marks must be `wellpromoted' or `recognized' by consumers in order to be of significance."Pl. Br. Opp. Summ. J. at 73, citing Scarves by Vera. Inc.v. Todo Imports, Ltd., 544 F.2d 1167, 1170 (2d Cir. 1976)("Defendant introduced no evidence that these [third-party] trademarkswere actually used by third parties, that they were well promoted or thatthey were recognized by consumers"). Plaintiffs' arguments are in error.Scarves by Vera dealt with registered trademarks which arepresumptively distinctive, Lois Sportswear, U.S.A., Inc. v. LeviStrauss & Co., 799 F.2d 867, 871 (2d Cir. 1986), but Plaintiffsreceive no such presumption concerning their trade dress. In fact, thevery purpose of this discussion is a determination of whether Plaintiffs'claimed trade dress is distinctive. Thus, requiring Defendants todemonstrate that competing users are recognized by customers misplacesthe burden of proof and places the proverbial cart before the horse.Accordingly, based on the undisputed facts, length of use weighs inPlaintiffs' favor, but exclusivity certainly does not.7 This ineffect creates a factual question over how to weigh this factor and mustcount against summary judgment in favor ofPage 19Defendants.
g. Conclusion as to Secondary Meaning:
On balance Plaintiffs do not present particularly strong evidence ofsecondary meaning in their trade dress. However, because there arefactual disputes with respect to some of the factors discussed, and afinding of secondary meaning can only be made by a careful considerationof all six factors, with no single factor being determinative, thequestion cannot be decided as a matter of law, but is properly to bedecided by a jury. Accordingly, Defendants' Motion is denied onthis ground.
3. Whether Plaintiffs' Trade Dress has been Abandoned or isGeneric:
Defendants argue that Plaintiffs have either abandoned their tradedress or that it has become generic and is no longer protectable. Tosupport a finding of abandonment, use of the mark or trade dress musthave been "discontinued with intent not to resume such use" or, as aresult of the conduct of the owner, "become the generic name for thegoods or services on or in connection with which it is used" and havelost "its significance as a mark." L. & J.G. Stickley,Inc., 79 F.3d at 263. Thus, the claims that a mark is generic orabandoned are related.
Even assuming a product design is distinctive, that "is insufficient toprotect product designs that are overbroad or generic — those thatrefer to the genus of which the particular product is a species."Yurman Design, 262 F.3d at 115 (citation and quotationsomitted). Trade dress may be generic if it "conforms to awell-established industry custom." Nora Beverages, 164 F.3d at743. Defendants argue that Plaintiffs abandoned their trade dress andthat when they resumed manufacturing western style single actionrevolvers in 1955, there "was already at least one other companymanufacturing replicas" of Plaintiffs' Model "P." Def. Br. Supp. Summ. J.atPage 2061. Since that time, others have entered the market to producesimilar replicas, which are produced to this day. Defendants allege thatPlaintiffs knew of these replicas and did nothing to stop theirproduction. Thus, because Plaintiffs' "trade dress has been used for somany years by these numerous entities and because [Plaintiffs'] ownactions promoted and acknowledged that it had no exclusive rights to theappearance of the Colt Model `P'," the appearance has become generic.Id. at 64-65.
Common usage may render trade dress that was once distinctive genericif, by virtue of the use, the dress "can no longer be understood torepresent a source" of the product. BellSouth Corp. v. DataNationalCorp., 60 F.3d 1565, 1570 (Fed. Cir. 1995). This inquiry may involvea highly factual analysis to demonstrate that consumers do not in factidentify the trade dress with its source, or any source. SeeHermes Int'l v. Lederer de Paris Fifth Ave., Inc.,219 F.3d 104, 110 (2d Cir. 2000) (Discussing with approval district court'srequirement that a "highly factual analysis of consumer perception andidentification" be undertaken in order to prove that the trade dress isgeneric). The question is linked to whether Plaintiffs can provesecondary meaning, or that their trade dress is identified with a source.Defendants are not precluded from proving the product generic throughcommon usage but, in order to so prove, it entail proving that Plaintiffstrade dress lacks secondary meaning. As discussed above, there is aquestion of fact as to whether consumers identify Plaintiffs' trade dresswith a source. As a consequence, simply pointing to the existence ofother replica makers is not sufficient to establish that there is noquestion that the trade dress is generic. Summary judgment on Defendantsgeneric argument is therefore inappropriate.
Defendants' assertion of a defense of abandonment also centers on theinterruption inPage 21Plaintiffs production of the Peacemaker revolver from 1941 to 1955and the near constant presence of replica makers since Plaintiffsreturned to the market in 1956. Def. Br. Opp. Summ. J. at 60. Plaintiffsargue that they did not intend to permanently cease production of therevolver and that they maintained consumer goodwill during the period ofnon-production such that when they resumed production in 1956 it retainedits secondary meaning among consumers. Pl. Br. Supp. Summ. J. at 57-60.
Defendants rely heavily on the Second Circuit's opinion in L.& J.G. Stickley, Inc. v. Canal Dover Furniture Co., 79 F.3d 258(2d Cir. 1996) to support their claim for abandonment. See Def.Br. Opp. Summ. J. at 61-63. Stickley involves a furnituremaker, Gustav Stickley who was largely part responsible for a popularstyle of furniture. L. & J.G. Stickley, Inc., 79 F.3d at260. When the designs became commercially unpopular, Stickley ceasedproducing them and joined his brothers in a cabinet making business.Id. That company became L. & J.G. Stickley, which 60 yearslater decided to capitalize on the renewed popularity of the designs andbegan to manufacture them once more. Id. at 260-61. Given thesefacts, the Second Circuit noted the difficulty the manufacturer wouldface "in establishing that consumers identify the [presentlymanufactured] trade dress with L. & J.G. Stickley rather than withthe maker of the popular originals." Id. at 264. Because ofthat difficulty, the Second Circuit found L. & J.G. Stickley unlikelyto succeed on the merits and vacated a preliminary injunction against thedefendant. Id. at 264-65.8
In this respect, the Second Circuit distinguished its decision fromFerrari S.P.A. EsercizioPage 22v. Roberts, 944 F.2d 1235 (6th Cir. 1991) because theSixth Circuit "found that even though Ferrari had ceased production ofits 365 GTB/4 Daytona in 1974, the car design maintained secondarymeaning in the eyes of the public because Ferrari continued to designcars with a very similar appearance and continued to manufacture partsfor 365 GTB/4 Daytona owners." L. & J.G. Stickley, Inc.,79 F.3d 258 at 264 n. 5. Loss of secondary meaning during the period ofnon-production is therefore essential to a finding of abandonment.However, as discussed above, there remains a dispute of fact over theexistence of secondary meaning. Accordingly, Defendants claim ofabandonment cannot be resolved on summary judgment.
It bears mentioning however, that even "[o]nce a registered trademarkhas been abandoned, any subsequent user of the mark must measure itsrights from the time the subsequent use begins, and cannot rely upon anyresidual secondary meaning in the mark from the original period of use."Id. at 263-64. This is the case even if the original userresumes use of the abandoned trade dress. Id. at 264(emphasis added). Thus, even if a fact-finder were to find that, based onthe interruption in production, Plaintiffs' trade dress lost itssecondary meaning, this would not preclude Plaintiffs from rebuildingsecondary meaning in the almost 60 years it has been manufacturing therevolvers before Defendants entered the market. All that Plaintiffs wouldbe prohibited from doing is relying on secondary meaning acquired priorto abandoning its trade dress. In this sense, the abandonment argument,even if successful, is not likely to get Defendants far because secondarymeaning must be established at the time Defendants entered the market,Nora Beverages, 164 F.3d at 745, and thus focusing on any lossof secondary meaning 60 years ago may not be determinative. Similarly forPlaintiffs, focusing on the storied history of their revolver may nothelp them in establishing secondary meaning ifPage 23they cannot demonstrate that such goodwill persists to this day.
As discussed above, trade dress protection cannot be had for featuresthat are functional and the burden is on the party seeking protection toprove nonfunctionality. TrafFix, 532 U.S. at 32. Functionalityis a question of fact, Innovative Networks v. Satellite AirlinesTicketing Ctrs., 871 F. Supp. 709, 723 (S.D.N.Y. 1995), thus anyfactual disputes will preclude summary judgment. There are two types offunctionality at issue: traditional or utilitarian functionality andaesthetic functionality.
a. Traditional/Utilitarian Functionality:
The Supreme Court recently reasserted the prominence of the so-called"traditional rule" of functionality. Id. at 33. Under this ruleand "`in general terms, a product feature is functional,' and cannotserve as a trademark, if it is essential to the use or purpose of thearticle or if it affects the cost or quality of the article, that is, ifexclusive use of the feature would put competitors at a significantnon-reputation-related disadvantage." Qualitex Co. v. JacobsonProds. Co., 514 U.S. 159, 165, 115S. Ct. 1300, 131 L.Ed.2d 248(1995), citing Inwood Labs. v. Ives Labs.,456 U.S. 844, 851 n. 10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982). InTrafFix, the Supreme Court discussed the effect of priorpatents, noting that a "utility patent is strong evidence that thefeatures therein are functional." 532 U.S. at 29. However, even in thecontext of a patent, a manufacturer might be successful in seeking "toprotect arbitrary, incidental, or ornamentalPage 24aspects of features of a product found in the patent claims, suchas arbitrary curves in the legs or an ornamental pattern painted on thesprings" if "those aspects do not serve a purpose within the terms of theutility patent." Id. at 34. The "Lanham Act does not exist toreward manufacturers for their innovation in creating a particulardevice; that is the purpose of the patent law and its period ofexclusivity." Id.10
The TrafFix decision is also important with respect to therelevance of design alternatives to a functionality inquiry. In the past,the Second Circuit (and others) considered the availability of designalternatives in determining the functionality of a feature. Seee.g. Fabrication Enterprises, v. Hygenic Corp.,64 F.3d 53, 59 (2d Cir. 1995) ("a court must examine a number of variables,including (1) the degree of functionality of the similar features of theproduct, (2) the degree of similarity between the non-functional(ornamental) features of the competing products,Page 25and (3) the feasibility of alternative designs that would notimpair the utility of the product"); Stormy Clime, Ltd. v. Progroup.Inc., 809 F.2d 971, 977 (2d Cir. 1987) (directing consideration ofthe same factors); see also Landscape Forms, 70 F.3d at 254-55(remanding for the district court to consider whether the design confersa significant competitive benefit that cannot practically be duplicatedby the use of alternative designs). In TrafFix, however, theCourt wrote that the functionality of the design at issue under thetraditional Inwood analysis meant "competitors need notexplore whether other spring juxtapositions might be used. Thedual-spring design is not an arbitrary flourish in the configuration of[the plaintiff's] product; it is the reason the device works." 532 U.S.at 33-34 (emphasis added).
Nevertheless, Plaintiffs argue that this language does not precludeconsideration of design alternatives. P1. Br. Opp. Def. Mot. for Summ. J.at 20. In support, Plaintiffs cite to a post-TrafFix SecondCircuit opinion that requires looking to the feasibility of designalternatives. Id., citing Neiman Marcus Group,Inc. v. A'Lor Int'l, Ltd., No. 00-9504, 2001 U.S. App. LEXIS 25182,*4 (2d Cir. Nov. 20, 2001). Neiman Marcus makes no mention ofTrafFix, but it does post-date it by several months. However,the opinion in Neiman Marcus is unpublished and clearly marked"summary order." According to the Second Circuit's Local Rules ofAppellate Procedure, because summary orders "do not constitute formalopinions of the court and are unreported or not uniformly available toall parties, they shall not be cited or otherwise used in unrelated casesbefore this or any other court." Local Rule § 0.23. Plaintiffs'reliance on Neiman Marcus is therefore misplaced and is notbinding authority. This is not to say that there is no authority for theproposition that design alternatives may still be considered,see P1. Br. Opp. Def. Mot. for Summ. J. at 21-22 (citing tovarious unpublished district court cases in this circuit), butPage 26Plaintiffs have not pointed to any binding authority.
Other circuits are divided as to the question of design alternatives.The Federal Circuit has found that even though "there is no need toconsider the availability of alternative designs . . . that does not meanthat the availability of alternative designs cannot be a legitimatesource of evidence to determine whether a feature is functional in thefirst place." Valu Engineering, Inc. v. Rexnord Corp.,278 F.3d 1268, 1276 (Fed. Cir. 2002). The Federal Circuit concluded,therefore, that TrafFix did not change applicable law, ValuEngineering, 278 F.3d at 1276, and thus because prior case lawdirected consideration of design alternatives, it is still necessary todo so. The Sixth Circuit found differently, opting not to consider designalternatives, because "at the very least, a court is notrequired to examine alternative designs when applying thetraditional test for functionality" and that if "if a product is clearlyfunctional under Inwood, a court need not apply thecompetitive-necessity test and its related inquiry concerning theavailability of alternative designs." Antioch Co. v. W. TrimmingCorp., 347 F.3d 150, 156 (6th Cir. 2003) (emphasis in original). Thelatter position is more in line with TrafFix. There is nothingto suggest that courts are prohibited from considering designalternatives, but when functionality is apparent under theInwood test, the inquiry is over and the existence of designalternatives cannot resurrect an otherwise functional feature.Accordingly, to the extent that Second Circuit law required considerationof design alternatives in all circumstances, that is no longer the law.
However, under the present circumstances and given the nature of theproduct, the existence of design alternatives is helpful for determiningwhether a particular design is truly necessary to the way the revolverworks. For example, Plaintiffs assert that with respect to the grip frameon the revolvers that they are not claiming the handle itself (inlayman's terms), butPage 27rather a specific shape of a handle that is separable from thehandle itself. In order to determine whether the specific shape is infact separable, it is instructive to look to whether other shapes existand whether they are similarly effective. The critical inquiry then isthe "feasibility of alternative arrangements of functional features thatwould not impair the utility of the product." FabricationEnterprises, 64 F.3d at 59 (emphasis added). The mere existence ofother designs does not satisfy that requirement as those designs may befunctionally deficient by comparison. Accordingly, for designalternatives to be probative, Plaintiffs must produce evidence that coulddemonstrate that the alternative design would be equally effective as afunctional matter.
Because Plaintiffs are seeking trade dress protection for the overallappearance of the revolver, breaking down the trade dress into itsindividual elements and then attacking them as functional may be error.Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71, 76 (2d Cir.1985); see also Fuddruckers, Inc. v. Doc's B.R. Others,Inc., 826 F.2d 837, 842 (9th Cir. 1987) ("We examine trade dress asa whole to determine its functionality . . . elements that are separatelyunprotectable can be protected together as part of a trade dress")."Nonetheless, the fact that a trade dress is composed exclusively ofcommonly used or functional elements might suggest that that dress shouldbe regarded as unprotectable or `generic,' to avoid tying up a product ormarketing idea." Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth,Inc., 58 F.3d 27, 32 (2d Cir. 1995). As a result, Plaintiffs'claimed trade dress will be considered first as to its individual partsand then as a whole.
i. The shape, style, composition, and finish of the gripframe:
Defendants argue that the shape and style of the grip frame "serve toallow the shooter to best hold the revolver and to handle the recoil ofthe gun when fired." Def. Br. Supp. Summ. J.Page 28at 32. They also argue that the composition of the frame, steel,works more effectively than other metals and that the finishes that areavailable (blued or nickeled) prevent oxidation. Id. at 33.Plaintiffs' characterization of Defendants' arguments as simply allowing"the shooter to grip the gun," P1. Br. Opp. Summ. J. at 24, (like anygrip frame would) misses Defendants' assertion that the specific shapeallows for certain advantages. Defendants point to many other possibledesigns for the grip frame, but simply pointing to these other designsfails to elucidate how these designs offer similar or better functionaladvantages such that a buyer would not suffer in functional efficiencywhen purchasing a gun with these designs alternatives. As stated above,the fundamental inquiry when looking to design alternatives is that theother arrangements do not impair the utility of the product. StormyClime, 809 F.2d at 977.
Plaintiffs also argue that "the contours of the frame do not serve anyspecific purpose." Id. This argument is conclusory and nowhereelaborated, not even in the exhibit cited. See Gill Decl., Exh.19, ¶ 19.
Plaintiffs point to statements by Defendants' personnel to the effectthat because they were making replicas of Plaintiffs guns they chose notto use other possible designs. P1. Br. Opp. Def. Mot. for Summ. J. at 25.This does raise a question concerning other possible motivations forusing a grip frame similar to Plaintiffs', but does not address directlythe issue of functional advantages. Nowhere is it established that thedesire to copy negates or is mutually exclusive to the issue offunctionality. That is, there is no reason why Defendants' desire to copya feature, as opposed to using similar features on other revolvers,negates functionality.
As to the finishes and metals used on the grip frame, Plaintiffs, whileconceding a certain functionality, again simply point to alternativeswithout establishing that these other finishes andPage 29metals would work just as well. Id. at 25.
Accordingly, Plaintiffs fail to meet their burden to produce evidencesufficient to raise a question of nonfunctionality with respect to thegrip frame.
ii. The angle of the grip frame in relation to the frame andbarrel:
Plaintiffs define the angle of the grip frame in relation to the frameand barrel as approximately 7 ½ degrees. Pl. Br. Opp. Summ. J. at25. Plaintiffs assert that this angle is cosmetic11 and serves to"make the gun look the way it does" but does not serve any function.Id. at 26. Plaintiffs point to no design alternatives thatwould work just as well. Defendants argue that this angle is functionalin that "it positions your hand so that the barrel will shoot." Def. Br.Supp. Summ. J. at 33. If the angle were different, the user would have topoint the barrel differently to make it shoot accurately. Former Decl.,Exh. 32 at 90. It is not clear whether this angle is necessary to itsfunctioning or merely incidental — i.e. would having to point thebarrel differently impede the revolver's use? On the other hand, it isnot clear that Plaintiffs have established nonfunctionality. There iscertainly nothing about the angle that prevents it from both giving thegun a distinct look and serving the purpose of correctly lining up thebarrel when it is held. The weighing and crediting of these two accountsis therefore in the province of the fact finder and not a court's onsummary judgment. Accordingly, this feature must be considerednonfunctional in considering Defendants' Motion.
iii. The shape, style, composition, and finish of thetrigger and trigger guard:Page 30
The trigger and trigger guard serve the obvious function of firing thegun and protecting against premature firing. Nonetheless, Plaintiffsargue that neither the specific shape (not size) of the trigger guard northe finish of both the trigger and the trigger guard are dictated by thisfunction. Pl. Br. Opp. Summ. J. at 26. Plaintiffs argue that although theshape of the trigger has to be different from that of a double actionrevolver and that the trigger design on their revolver is designed for asingle action revolver, that this does not mean that the trigger designis functional. Pl. Br. Opp. Summ. J. at 26-7. How this is so is entirelyunclear and counterintuitive. Indeed, it seems to be a statement that thetrigger design is functional as it is dictated by the mechanicalnecessities of the gun. Furthermore with respect to the blued finish,Plaintiffs continue to fail to address the alleged functional benefitsdiscussed above with respect to the grip frame and simply point to theexistence of alternatives as if this fact by itself raises a question offunctionality. Pl. Br. Opp. Summ. J. at 27. Thus, Plaintiffs fail to meettheir burden to produce evidence sufficient to raise a question of factas to the functionality of the trigger design.
iv. The angle or slant of the trigger guard in relation tothe frame and barrel:
Defendants argue that the rounded and slanted shape of the triggerguard aid in holstering the revolver. Def. Br. Supp. Summ. J. at 33-34.Plaintiffs argue that while this may be true, any rounded shape will doand the specific shape of their trigger frame is not therefore necessaryand functional. Pl. Br. Opp. Summ. J. at 26-27. There is therefore adispute of fact with respect to this feature which cannot be resolved onsummary judgment.
v. The shape, style, composition, and color of the grippanels, including the Rampant Colt and eagle emblem emblazonedPage 31 on the sides:
Defendants allege that users often change the grips on their revolversfor functional (e.g. a better fit) and cosmetic reasons. Def. Br. Supp.Summ. J. at 34. Defendants also argue that the eagle on the sides ofPlaintiffs' grips serve the function of providing a "tacfileacknowledgment" that the user has the proper grip on the gun.Id. Plaintiffs counter that any logo would serve the samepurpose and there is no need for the logo to involve an eagle asPlaintiffs' do. P1. Br. Opp. Summ. J. at 28. Plaintiffs do not respond toDefendants' argument about the generally functional nature of the grips,but Defendants' argument is conclusory and fails to elaborate how ifusers change the grips for both functional and cosmetic purposes thisdemonstrates that the functional aspect of the grips is essential to theuse or purpose of the item. Indeed, by their own argument cosmeticreasons may be just as important. Accordingly, although the ultimateburden of persuasion remains with Plaintiff, the burden of production forthe purposes of summary judgment on this point has not been properlyshifted to Plaintiff.
vi. The shape and style of the front sight:
A front sight serves the obvious purpose of allowing the user toproperly aim the revolver. Defendants further contend that the specificshape of Plaintiffs' sight, namely that it is rounded, eases holsteringby preventing snags. Def. Br. Supp. Summ. J. at 35. Plaintiffs argue thatthere are other designs, including different rounded designs, that wouldserve the same purpose without affecting quality or effectiveness. P1.Br. Opp. Summ. J. at 28. Accordingly, there are material factual disputesas to the functionality of the front sight.
vii. The shape and style of the rear sight:
Again, the rear sight serves an obvious functional purpose. Although,Plaintiffs oncePage 32again argue that the specific shape is not functional, they cite tono witness testimony or other evidence to that effect. Pl. Mem. Opp.Summ. J. at 29. Indeed, Plaintiffs' own witness, Edwin Zalewa, whotestified at deposition that the shape of the front site was notfunctional as the shape could vary, Former Decl., Exh. 11, Zalewa Depo at115, testified that as to the rear sight, the shape is functional.Id. at 113. Plaintiffs cite to a purported admission byDefendants' witness, Robert Gangi, that were it not for the fact thatDefendants were manufacturing replicas of Plaintiffs' first generationsingle action revolver, there would be other design options for rearsights available. P1. Br. Opp. Summ. J. at 29, citing GangiDepo., Starr Decl., Exh. 37 at 216-17. The testimony cited does notaddress the issue of functional benefits, which the mere existence ofother designs does not disprove or negate. Plaintiffs presumably view thetestimony as an admission that the design of Defendants' revolver was notbased on functional considerations. It is not clear that the testimonyamounts to such an admission, nor is it clear that the desire to copy adesign for its aesthetic appeal or its functionality are mutuallyexclusive. While this argument may not be enough to carry Plaintiffs'burden to prove nonfunctionality at trial, it is enough to carry theirburden on summary judgment and raise a dispute of material fact. Thefunctionality of the rear sight cannot therefore be resolved on summaryjudgment.
viii. The shape, style, and finish of the checkeredhammer:
The hammer is functional in that it allows the revolver to fire.Defendants further contend that the specific shape of the hammer onPlaintiffs' revolver is functional in that it allows for ease of cockingthe revolver and that the knurling or checkering on the hammer aid in theuser's ability to grip the hammer without slipping. Def. Br. Supp. Summ.J. at 36. Plaintiffs once again point to the existence of alternativedesigns, but in conclusory fashion without explainingPage 33how these alternative designs would not impair the utility of theproduct. Pl. Br. Opp. Summ. J. at 29-30. Plaintiffs also argue thatDefendants have acknowledged that they could have used alternativedesigns. Id. at 30, citing Gill Decl., Exh. 13,Taffin Depo. at 107, 128. The actual transcript is not so blunt and doesnot necessarily amount to an admission. Accordingly, with respect to thehammer shape, Plaintiffs do not meet their burden to provide evidencethat would support a finding of nonfunctionality.
ix. The shape, style, and finish of the color case hardenedframe:
Defendants contend that the case frame is functional because it holdsthe gun together and that the rounded shape of it aids in bolstering therevolver. Def. Br. Supp. Summ. J. at 36. While it is of course true thatthe frame does hold the gun together, Plaintiffs claim is addressed tothe specific shape which they allege is not necessary to ensure that thegun is held together. Defendants do not suggest that this particularshape is the only shape that will hold together a revolver. Defendants'argument concerning the ease of bolstering the evidence is notconclusive. As Plaintiffs point out, the testimony on the subject was notunequivocal. Pl. Br. Opp. Summ. J. at 30. Finally, Plaintiffs contendthat the use of color-case hardening is not what is claimed, but the factthat only the frame is color-case hardened in contrast to the rest of therevolver. Id. Defendants do not contend that this selective useof color-case hardening is functional. Accordingly, the functionality ofthis feature cannot be decided in favor of Defendants on summaryjudgment.
x. The shape, length, style, and finish of the steelbarrel:
The barrel serves the function of providing the path through which thebullet travels whenPage 34the revolver is fired. All guns must have some sort of barrel.However, this does not end the inquiry and the specific appearance/designof the barrel must be considered. Barrel length is clearly a functionalconsideration. As Defendants argue, the length of the barrel affects thepower and accuracy of a revolver. Def. Br. Supp. Summ. J. at 37-38.Defendants' reference to historical accuracy does not, as Plaintiffscontend, tip their hand and demonstrate their motive to copy. As theinformation cited by Defendants makes clear, the 7.5 inch barrel lengthwas required by the military in order to balance the needs of soldiersfor accuracy, power, and convenience of use. O'Meara Decl., Exh. B., Item8. Plaintiffs do not rebut this argument. Plaintiffs only argue thatother lengths are available. P1. Br. Opp. Summ. J. at 31-32. Of courseother lengths are available, but changes in barrel length will alter theaccuracy and power of the revolver. Accordingly, the length of the barrelby itself is deemed functional.
With respect to other features of the barrel, the answer is not asclear. Defendants contend that the rounded shape aids in holstering. Def.Br. Supp. Summ. J. at 37. Plaintiffs do not address this argument, butinstead point to other possible shapes and testimony from Defendants'witnesses suggesting that were it not for their desire to manufacturereplicas they would have been able to use those designs. P1. Br. Opp.Summ. J. at 31-32. Plaintiffs also point to the arbitrary positioning oftheir rollmark as part of their trade dress. Id. Accordingly,with respect to these features, there are questions of fact which must beresolved at trial.
xi. The shape, style, and finish of the steel cylinder:
As with all of the features of Plaintiffs' revolver, the cylinderserves a function. However, the question to be resolved is whether thedesign contains arbitrary or fanciful elements that are not essential tothe purpose of the feature. With respect to the cylinder itself,Plaintiffs contendPage 35that Defendants could have used "a longer or wider cylinder." Pl.Br. Opp. Summ. J. at 32, citing Gill Decl., Exh. 19, ScheidelReport at ¶ 25. Scheidel's report does not actually state anything tothat effect in the paragraph cited and refers only to the decorativegrooves and cylinder pin. Accordingly, Plaintiffs do not meet theirburden on summary judgment and the shape and size of the cylinder isdeemed functional for the purposes of the Ruling. There is, however, adispute as to the functionality of the flutes on the cylinder. Defendantsallege that the fluting improves balance, allows for heat dissipation,and provide a surface for turning the cylinder. Def. Br. Supp. Summ. J.at 38. Plaintiffs do not dispute that the flutes serve a purpose, butassert that having the same number of flutes, or even any flutes at allis not a mechanical necessity. Pl. Br. Opp. Summ. J. at 32. Accordingly,this issue cannot be resolved here.
xii. The shape, style, and finish of the cylinder pin:
Defendants argue that in addition to being generally functional, thespecific design features of the cylinder pin are functional as well. Inparticular, Defendants allege that the "ribbed detail and design of thepin . . . provide a surface to grasp when removing the pin from a dirty,oily revolver." Def. Br. Supp. Summ. J. at 38. Plaintiffs counter thatsome of the features are arbitrary and that other designs would have beenacceptable but for Defendants' purpose to copy Plaintiffs. Pl. Br. Opp.Summ. J. at 33. The functionality of this particular feature cannottherefore be resolved at summary judgment.
xiii. The shape, style, and finish of the ejector rod andejector rod housing:
Defendants again point to the ease with which the gun can be bolsteredbased on the specific shape of the features here at issue as well as thepossibility of overall greater ease of use.Page 36Def. Br. Supp. Summ. J. at 39. Plaintiffs once more simply point tothe existence of alternative designs without elaborating on theirrelative merit compared to the features as they exist on the revolvers atissue. Pl. Br. Opp. Summ. J. at 33, citing Pl. Exh. Opp. Summ.J., Gill Decl., Exh. 19, Scheidel Report at ¶ 26 ("Defendants couldhave designed these at least slightly differently from [Plaintiffs'], butchose not to"). While this is not exactly strong evidence ofnonfunctionality, Defendants' evidence in favor of functionality issimilarly weak. See Def. Exh. Supp. Summ. J., Fortner Decl.,Exh. 45, Scheidel Depo. at 144 (discussing "stories" that he heard aboutthe difficulty of holstering prior to the design at issue) and Exh. 14,Reissig Depo. at 117 (acknowledging the possibility that other designsmight get snagged). Accordingly, summary judgment as to the functionalityof this feature is inappropriate.
xiv. Functionality of trade dress considered as awhole:
It is clear that there are functional elements to every aspect ofPlaintiffs' revolver. There are, however, also numerous factual disputesas to the functionality of individual features. If there are factualdisputes as to the individual elements, then it follows that there wouldbe a factual dispute as to whether these individual features add up to afunctional whole. Considering these disputes, it is inappropriate torender summary judgment on the question of functionality. Defendants'Motion on this basis is denied.
b. Aesthetic Functionality:
If "a design's aesthetic value lies in its ability to confer asignificant benefit that cannot practically be duplicated by the use ofalternative designs, then the design is functional." Qualitex Co. v.Jacobson Prods. Co., 514 U.S. 159, 170, 115 S.Ct. 1300,131 L.Ed.2d 248 (1995) (citation and quotations omitted). Thus, the"ultimate test of aesthetic functionality . . . isPage 37whether the recognition of trademark rights would significantlyhinder competition." Id. (citation and quotations omitted);see also TrafFix, 532 U.S. at 33 (noting thedifference between the aesthetic functionality discussion inQualitex that necessitates looking to "competitive necessity"versus the traditional Inwood analysis that does not requiresuch an inquiry); and Landscape Forms, 70 F.3d at 253 (citingthe rule in Qualitex as the appropriate test for assessingaesthetic functionality).
Defendants argue that Plaintiffs' revolver is aesthetically functionalbecause they and other replica makers would no longer be able to makereplicas of the revolvers in question and they would no longer be able tomeet the "consumer need" of those such as cowboy action shooters who seekhistorically accurate revolvers but cannot afford to purchase Plaintiffs'revolvers. Def. Br. Supp. Summ. J. at 43. The argument is baseless.Assuming that Plaintiffs' trade dress is otherwise protectable, the factthat such protection would shut down a replica industry that isinfringing Plaintiffs' trade dress is not a reason to find aestheticfunctionality. However, most determinative is that the question ofaesthetic functionality explicitly turns on the existence of designalternatives. As discussed in the prior section, there are significantquestions of fact surrounding the existence of design alternatives.Plaintiffs have continually maintained that there are other possibledesigns for single action revolvers. Defendants advance no new argumentswith respect to those questions now, thus as summary judgment wasinappropriate with respect to utilitarian functionality, it is as toaesthetic functionality. Defendants' Motion on this ground isdenied.
5. Evidence of the Likelihood of Customer Confusion:
"Likelihood of confusion exists when customers viewing the mark wouldprobablyPage 38assume that the product or service it represents is associated withthe source of a different product or service identified by a similarmark." Clicks Billiards, Inc. v. Sixshooters Inc.,251 F.3d 1252, 1265 (2d Cir. 2001) (citation omitted). "In determining alikelihood of confusion, it has long been the practice of this Circuit toapply the multi-factor balancing test articulated by Judge Friendly inPolaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2dCir. 1961)." New Kayak Pool Corp. v. R&P Pools, Inc.,246 F.3d 183, 185 (2d Cir. 2001). This involves looking at 1) actualconfusion, 2) sophistication of the buyers, 3) strength of the mark, 4)degree of similarity between the two marks, 5) proximity of the products,6) the likelihood that the prior owner will bridge the gap between itsproduct and the alleged infringer's, 7) Defendants' good faith inadopting its own mark, and 8) the quality of Defendants' product.Polaroid, 287 F.2d at 495. The court must also make anaggregate assessment. Patsy's Brand, Inc. v. I.O.B. Realty,Inc., 317 F.3d 209, 219 (2d Cir. 2003). In balancing the factors,"[n]o one of the Polaroid factors is dispositive, and the list is notexhaustive . . ." Estee Lauder v. Gap, Inc., 108 F.3d 1503,1510 (2d Cir. 1997). Thus, while "the application of the Polaroid testneed not be rigid, it is nevertheless incumbent upon the district judgeto engage in a deliberate review of each factor, and, if a factor isinapplicable to a case, to explain why." New Kayak Pool, 246F.3d at 185. Whether there is a likelihood of confusion is "usually aquestion of fact." Mana Prods. v. Columbia Cosmetics Mfg.,65 F.3d 1063, 1069 (2d Cir. 1995) (citation omitted). "[S]ummary judgment ina trademark action may be appropriate in certain circumstances, where theundisputed evidence would lead only to one conclusion as to whetherconfusion is likely." Cadbury Beverages v. Cott Corp.,73 F.3d 474, 478 (2d Cir. 1996) (citations omitted).
Plaintiffs contend that this Court already found that "the similaritiesof the revolvers raisePage 39`genuine issues of material facts as to the likelihood of productconfusion'" and that this finding precludes further consideration ofconfusion now. Pl. Br. Opp. Summ. J. at 41, citing Ruling onMotion for Partial Summary Judgment at 5. Plaintiffs mischaracterize thatRuling. The Ruling only addressed the dispositive nature of productlabels as they pertain to confusion in this case. Accordingly, it has nobearing on the questions now at issue and the Polaroid analysismust be performed.
a. Evidence of Actual Confusion:
For the purposes of trade dress infringement, "actual confusion meansconsumer confusion that enables a seller to pass off his goods as thegoods of another." Sports Auth. v. Prime Hospitality Corp.,89 F.3d 955, 963 (2d Cir. 1996) (citation and quotation omitted). "Actualconsumer confusion often is demonstrated through the use of directevidence, e.g., testimony from members of the buying public, as well asthrough circumstantial evidence, e.g., consumer surveys or consumerreaction tests." PPX Enters, v. Audiofidelity Enters.,818 F.2d 266, 271 (2d Cir. 1987) (citation omitted). The parties dispute thesignificance of demonstrating actual confusion for showing a likelihoodof confusion. Plaintiffs argue that demonstrating actual confusion is notstrictly necessary. Pl. Br. Opp. Summ. J. at 43. Defendants argue thatwithout demonstrating instances of actual confusion, courts can properlyinfer a lack of any likelihood of confusion. Def. Br. Supp. Summ. J. at49. The law on the subject is somewhat unclear. SeeMcGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1130 (2dCir. 1979) ("While a plaintiff need not prove actual confusion in orderto prevail [citation omitted] "it is certainly proper for the trial judgeto infer from the absence of actual confusion that there was also nolikelihood of confusion"). However, because Plaintiffs offer evidence ofactualPage 40confusion, it is unnecessary to reach this question.
Most notably12 Plaintiffs submit a survey conducted by Dr. WarrenKeegan, which purportedly "found significant affirmativemisidentification, in that consumers shown photographs of Defendants'revolver with all markings in plain view identified the maker as Colt."P1. Br. Opp. Summ. J. at 45. Furthermore, they argue that the "surveyalso found forty percent of all respondents believed that theguns are made by the same company, or believed the makers to beaffiliated, connected or associated." Id.
Defendants, however, challenge the reliability and admissibility ofthis survey on numerous grounds. See Def. Br. Supp. Summ. J. at51-54 and Def. Br. Opp. Summ. J. at 27-59. Defendants'challenges lead to Plaintiffs' submission of a Declaration by Keegan inresponse to Defendants' claims [Doc. No. 186]. Defendants' in turn movedto strike this Declaration and in the alternative requested leave tosubmit a rebuttal expert report [Doc. No. 186].
While not articulated as such, Defendants' arguments resemble argumentsbased on Rule 702 of the Federal Rules of Evidence. SeeFed.R.Evid. 702 (setting forth procedures for challenging the admissibility ofexpert testimony based on the expert's qualifications and the quality ofhis/her work); see also United States v. Dukagjini,326 F.3d 45, 52 (2d Cir. 2002) (Stating that Rule 702 "incorporates theSupreme Court's guidelines for reliability of expertPage 41testimony set forth in Daubert v. Merrell Dow Pharms.,Inc., 509 U.S. 579, 125 L.Ed.2d 469, 113 S.Ct. 2786 (1993)").Indeed, Plaintiffs' primary argument in support of the submission ofKeegan's Declaration is that Defendants have advanced a"Daubert-like" challenge and that such a declaration would bean appropriate response to the challenge. Def. Br. Opp. Mot. to Strike at2-5.
Regardless of the merit of this argument, Defendants do notcharacterize their arguments as such and cite no authority involvingRule 702. Accordingly, Plaintiffs arguments to that effect are unavailing.Defendants reference Fed.R.Evid. 403 and conclusorily assert that theprobative value of Keegan's survey is outweighed by its prejudicialeffect. Def. Br. Opp. Summ. J. at 32. Indeed, under certaincircumstances, there is support for excluding surveys on that basis.See Starter Corp. v. Converse, Inc., 170 F.3d 286,297 (2d Cir. 1999) ("We hold that the district court did not abuse itsdiscretion in finding that any probative value of the survey wasoutweighed by its potential to confuse the issues in the case"). Yet,Defendants also rely on cases elaborating on hearsay objections to surveyevidence. In particular, the case Defendants rely on most heavily,Toys "R" Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F. Supp. 1189(E.D.N.Y. 1983), cites to rules applicable to a hearsay objection.See Toys "R" Us, 559 F. Supp. at 1205 (discussingnecessity and genuine guarantees of trustworthiness as a bases foradmitting survey evidence and citing to what is now Fed.R.Evid. 807,the residual hearsay exception); see also StarterCorp. 170 F.3d at 297 (citing Toys "R" Us in the contextof Fed.R.Evid. 807 and the residual hearsay exception). As the majorityof Defendants' analysis is formulated pursuant to the discussion inToys "R" Us, while not explicitly invoking a hearsay objection,this is the primary basis for theirPage 42objection.13 The distinction may be academic when it comes tothe analysis in this case, but the statutory basis for findingadmissibility is not insignificant. See Schering Corp. v.Pfizer Inc., 189 F.3d 218, 227 (2d Cir. 1999) (noting the confusionthat the trend of failing to cite to a statutory base concerning theadmissibility of survey evidence has engendered).
Toys "R" Us employs a seven factor test of thetrustworthiness and admissibility of survey evidence. 559 F. Supp. at1205. It is not clear from Defendants' brief that this is the necessarytest. See Schering Corp., 189 F.3d at 225 (citing Toys "R"Us factors with apparent approval, without adopting them). TheSecond Circuit has discussed three general theories for admitting surveyevidence over a hearsay objection: the state of mind exception, theresidual hearsay exception under Rule 807, and the party admissiontheory. Id. at 227-39.
To be admissible under Rule 807, the evidence must "fulfill fiverequirements: trustworthiness, materiality, probative importance, theinterests of justice and notice." Id. at 231 (citationomitted). The classic risks the hearsay rule addresses are those of "(1)insincerity, (2) faulty perception, (3) faulty memory and (4) faultynarration." Id. at 232. Survey evidence is susceptible to allthese risks as well as an additional class of risk stemming from the factthat "parties usually offer surveys to support statistical inferences."Id. at 233. Such inferences can be manipulated through "artfuldata collection or presentation" and exacerbated through methodologicalerrors. Id. A methodologically sound survey can reduce thisdanger as well as the danger of insincerity and faulty narration byemploying interviewers who lack knowledge of the litigation and posingquestions in a "clear, precise and non-leading manner." Id. at233-34;Page 43see also Zippo Mfg. Co. v. Rogers Imports,Inc., 216 F. Supp. 670, 684 (E.D.N.Y. 1963) (The danger ofinsincerity is raised even "if the interviewers asked fair questions in aleading manner"). "The only risks that proper survey methodology does nottend to mitigate are those of faulty memory and perception."Schering Corp., 189 F.3d at 234. Nevertheless, "a particularmemory survey, which, for example, relates to events that were learned bydirect perception and are unlikely to be forgotten, can, if properlyconducted, minimize all five of the classes of risks ordinarilyassociated with survey evidence." Id. (citations omitted).
Defendants' arguments go to the issue of relating trustworthiness toprobative value (and thus prejudice) allegedly suggested by virtue of thesurvey's untrustworthiness. See Def. Br. Opp. Summ. J. at 33(discussing the reliability and trustworthiness of the survey).Plaintiffs assert the trustworthiness of the survey and offer no otherbasis for admissibility. Thus, without adopting the Toys "R" Usfactors as the rule in this case, Defendants' reliance on those factorswill be considered as they weigh on the trustworthiness of the survey andin turn its admissibility under the residual hearsay exception.
i. The survey universe:
The survey universe refers to the population sample chosen for thesurvey by those administering it. Keegan's survey was conducted in gunshops and participants were chosen based on whether they said they mightpurchase a handgun within the next five years. Defendants contend thatKeegan's survey failed to achieve a relevant consumer group.
First, Defendants allege that the survey should have focusedspecifically on Defendants' customers and not potential purchasers ofhandguns in general. Def. Br. Opp. Summ. J. at 36-37, citingHutchinson v. Essence Communications, Inc., 769 F. Supp. 541,546 (S.D.N.Y. 1991) ("InPage 44evaluating confusion in a trademark infringement case, it isimportant to remember that the courts are dealing with confusion as tosource, and that the only `relevant population' is potential purchasersof the junior user's goods or services"), compare SterlingDrug v. Bayer AG, 14 F.3d 733, 741 (2d Cir. 1994) (When "therelevant issue is whether consumers mistakenly believe that the senioruser's products actually originate with the junior user, it isappropriate to survey the senior user's customers"). In this case,Defendants contend the market would be cowboy action shooters.Id. at 37. Plaintiffs respond that such market differentiationdoes not exist and Plaintiffs' customers overlap Defendants'. Pl. ReplyBr. Supp. Summ. J. at 5-6.
Defendants also contend that by focusing on individuals who may buy ahandgun within five years, the survey universe is overbroad as reachingpurchasers of any handgun, not single action revolvers like the ones atissue, and because five years is too open-ended requiring those surveyedto predict their behavior rather than having concrete planned action.Def. Br. Opp. Summ. J. at 37-41. Plaintiffs respond that the surveypurpose was to predict future buying behavior and that five years is anappropriate time frame to predict such behavior. Pl. Reply Br. Supp.Summ. J. at 6.
ii. Whether the questions posed were leading:
Defendants contend that the questions in Plaintiffs' survey wereleading and biased. In particular Defendants point to survey questionswhich, after being shown pictures of either both revolvers, logos, orbeing asked whether participants were familiar with the names"Peacemaker" and "Peacekeeper," the participants were asked if theythought the makers of the two products were in any way related.See Former Decl., Exh. 50: Expert Report of Keegan, Exh. 5,Survey A, at p. 2 (questions 9-10), p. 3 (questions 19-20), p. 5(questions 26-27) and Survey B, at p. 2Page 45(questions 7-8), page 3 (questions 15-16), page 5 (questions21-21). Plaintiffs argue, without conceding the questions are biased,that excluding these questions, the survey validly evidences actualconfusion. Pl. Reply. Br. Supp. Summ. J. at 6-7.
iii. Approximating market conditions:
Defendants argue that the survey fails to approximate actual marketconditions as to potential consumers by showing participants photographsand not the actual revolvers and by allowing only a few seconds to viewthe photographs. Def. Br. Opp. Summ. J. at 52-56. Plaintiffs do notdirectly respond to this argument. They cite a case finding a similarsurvey involving pictures and similar lines of questioning as admissible.Pl. Reply Br. Supp. Summ. J. at 7, citing McGraw-EdisonCo. v. Walt Disney Productions, 787 F.2d 1163, 1172-73 (7th Cir.1986).
iv. Other Alleged Methodological Deficiencies:
Defendants argue that Keegan's participation in the survey, bypersonally conducting 18 surveys with his son conducting an additional20, was impermissible and that the failure to utilize controls renderedthe survey results suspect. Def. Br. Opp. Summ. J. at 35-36 and 41-42.Plaintiffs argue that controls were unnecessary and that Keegan'sparticipation in the survey was not impermissible and in any eventharmless. Pl. Reply Br. Supp. Summ. J. at 5-6.
v. Conclusion as to admissibility:
Defendants raise serious questions about the trustworthiness of thesurvey. As discussed above, participation in the administration of thesurvey by those with knowledge of the litigation and the use of leadingquestions raise the risk of insincerity in responses and cast doubt onthe trustworthiness of the survey. Schering Corp., 189 F.3d at233-34. The questions challenged asPage 46leading clearly are both in form and in context (i.e. consideringthe preceding questions). Furthermore, Keegan and his son should not haveadministered the survey.
To be reliable surveys "must rely upon responses by potential consumersof the products in question." Dreyfus Fund, Inc. v. Roval Bank ofCanada, 525 F. Supp. 1108, 1116 (S.D.N.Y. 1981). In this sense, thetime frame for potential purchases is also troubling. While it ispermissible to attempt to predict future behavior using surveys, fiveyears is a long time that risks mere speculation on the part of thosesurveyed. It also raises all of the "classic" concerns about admittinghearsay evidence. See Id. at 232. Furthermore, the fact thatKeegan's survey was geared only towards those purchasing a handgun (andnot this particular type of handgun or even "historic" guns in general)casts doubt on whether the survey focuses on potential consumers14 ofthe product in question, leaving aside Defendants' arguments thatconsumers of Plaintiffs' or Defendants' revolvers is appropriate.
However, even considering all these arguments together, because thesurvey focuses on direct perception of the marks, even if throughphotographs, it approximates "a particular memory survey[,]"Schering Corp., 189 F.3d at 234, and has enough indications oftrustworthiness to be admitted over Defendants' objections. Defendants'objections, while serious and could properly convince a fact finder todiscount the survey entirely, properly go to the weight of the survey.Accordingly, evidence of actual confusion must weigh in Plaintiffs' favorin the consideration of Defendants Motion for Summary Judgment.Additionally, becausePage 47the additional Keegan Declaration was in response to Defendants'arguments and peripheral to the resolution of Defendants' challenges,Defendants' Motion to Strike [Doc. No. 186] is denied.
b. Customer Sophistication:
It is not disputed that the revolvers at issue, while ranging in price,are a significant investment. See Def. Br. Supp. Summ. J. at 55(stating price range for single action revolvers from $375 to over$1900). Furthermore, it is undisputed that potential customers willexercise great care in purchasing a revolver. Id. at 55-56.Defendants argue that these facts suggest that customers are not confusedbetween the two brands of revolvers and require a finding that thisfactor weighs in their favor. Plaintiffs advance two arguments withrespect to customer sophistication: 1) that the sophistication ofcustomers alone does not resolve the issue of confusion, and 2) thatcustomer sophistication, while potentially relevant to point of saleconfusion, it is not equally relevant towards assessing initial interestconfusion, post-sale confusion, and confusion as to source sponsorship oraffiliation. Pl. Br. Opp. Summ. J. at 52-53. Plaintiffs' arguments seem aconcession that customer sophistication, at least with respect to pointof sale confusion, weighs in favor of Defendants. Regardless, as statedabove, no one factor in this analysis is dispositive, EsteeLauder, 108 F.3d at 1510, and while customer sophistication may beless relevant outside of point of sale confusion, Plaintiffs have offeredno evidence that definitively speaks to this sort of confusion.Accordingly, based on the undisputed facts, this factor must weighagainst Plaintiff. However, it should be noted that when "there is a highdegree of similarity between the parties' services and marks, thesophistication of the buyers cannot be relied on to prevent confusion."Morningside Group, Ltd. v. Morningside Capital Group. L.L.C.,182 F.3d 133, 143 (2d Cir. 1999).Page 48
c. Strength of the Mark:
"The strength of a mark is its tendency to identify the goods soldunder the mark as emanating from a particular, although possiblyanonymous, source." Cadbury Beverages, 73 F.3d at 479. Partiesfocus on the same arguments discussed above with reference to whetherPlaintiffs' trade dress has acquired secondary meaning. SeeDef. Br. Supp. Summ. J. at 56 (discussing market presence of replicamakers) and Pl. Br. Opp. Summ. J. at 53-55 (arguing thatrevolver's appearance is distinctive and recognizable). As above, theparties produce evidence that weighs on both sides of the issue.Accordingly, this factor must be construed in favor of Plaintiffs andsuggest that summary judgment is not appropriate.
d. Degree of Similarity:
Defendants contend that because certain features of Plaintiffs' allegedtrade dress do not appear on their revolver, the products are notconfusingly similar. See Def. Br. Supp. Summ. J. at 82(Pointing to differences in the finish of the hammer, the lack ofPlaintiffs' rollmark, the "rampant colt" symbol on the frame, and thatone of Defendants' revolver, "The Longhorn," does not have similar gripsto Plaintiffs'). While this maybe, it is also undisputed that Defendants'revolver is intended to be a replica thus suggesting a not insignificantsimilarity between the two products. Indeed, it would be disingenuous forDefendants to argue that the overall appearance of the revolvers was notat all similar. This does not of course necessitate a finding oflikelihood of confusion or infringement, but certainly bears on thisfactor of the analysis. See McGregor-Doniger, Inc. v.Drizzle, Inc., 599 F.2d 1126, 1133 (2d Cir. 1979) ("Similarity inand of itself is not the acid test. Whether the similarity is likely toprovoke confusion is the crucial question"). Nonetheless, the productsare superficially similar enough that this factor must countPage 49against Defendant.
e. Market Proximity and Likelihood that Prior Owner willBridge the Gap:
Market proximity refers to the "likelihood that customers may beconfused as to the source of the products, rather than as to the productsthemselves." Charles of Ritz Group. Ltd. v. Quality KingDistributors, Inc., 832 F.2d 1317, 1322 (2d Cir. 1987). As such,proximity necessitates looking at "whether and to what extent the twoproducts compete with each other and the nature of the productsthemselves and the structure of the relevant market." MorningsideGroup, 182 F.3d at 140. Plaintiffs argue that because the productsare often sold in the same locations, this establishes that the productscompete in the same market. Pl. Br. Supp. Summ. J. at 29. Defendantsacknowledge that the products share some "of the same channels of trade,"but argue that price differentials place them in different markets andthat price difference is a salient factor for the relevant consumers,which helps them distinguish replicas from Plaintiffs' revolvers. Def.Br. Opp. Summ. J. at 20. In considering this factor, differences in pricealone may be "insufficient to establish competitive distance."McGregor-Doniger, 599 F.2d at 1132, n. 5. Bridging the gaplooks to whether the senior user intends to enter the market of thejunior user and protects "the senior user's interest in being able toenter a related field at some future time." Lois Sportswear, U.S.A.,Inc. v. Levi Strauss & Co., 799 F.2d 867, 874 (2d Cir. 1986)(citation omitted). Plaintiffs assert that they have already "bridged thegap" between the products by introducing an "economy" version of thePeacemaker revolver, the Cowboy. Pl. Br. Supp. Summ. J. at 30. Plaintiffstherefore contend that they have already bridged the gap. Defendantsresponse that this gap was already filled by other replica makers, Def.Br. Opp. Summ. J. at 20-21,Page 50misses the point of preserving the senior users ability toexpand. Considering that Defendants' arguments center entirely aroundprice differentials and how that affects and creates consumer groups(e.g. cowboy action shooters), and given the at least colorable evidenceof slippage in these differentials, summary judgment is not appropriate.
f. Defendants' Good/Bad Faith:
"[E]vidence of intentional copying raises a presumption that the secondcomer intended to create a confusing similarity." Charles of RitzGroup, 832 F.2d at 1322. However, it must be remembered that"intentional copying is not a requirement under the Lanham Act" and that"intent is largely irrelevant in determining if consumers likely will beconfused as to source.", Lois Sportswear, U.S.A., 799 F.2d at875. As a consequence, "this factor alone is not dispositive," but it"bolsters a finding of consumer confusion." Charles of RitzGroup, 832 F.2d at 1322. It is undisputed that Defendants' productsare replicas of Plaintiffs' revolvers. This suggests intentional copyingand thus a finding of bad faith. Defendants, however, argue that theexistence of other replicas and the belief that the features were eithergeneric or functional mitigates against this finding. Def. Br. Supp.Summ. J. at 90. Furthermore, as discussed above, Defendants haveconsistently maintained that they target consumers such as cowboy actionshooters who cannot or would not want to spend the money necessary topurchase Plaintiffs' products. Accordingly, Defendants assert that theyare simply attempting to compete (not confuse) by offering a lower pricedalternative to Plaintiffs' revolvers. Def. Br. Supp. Summ. J. at 90;see also George Basch Co. v. Blue Coral, Inc.,968 F.2d 1532, 1541 (2d Cir. 1992) ("Absent confusion, imitation of certainsuccessful features in another's product is not unlawful and to thatextent a `free ride' is permitted") (citation omitted). This factor doesnot weigh inPage 51Defendants' favor on summary judgment. There is however a factualquestion as to whether Defendants' conduct constitutes a bad faith effortto confuse or simply an attempt to compete. It is up to a fact finder tocredit or discredit this account. Accordingly, summary disposition isinappropriate.
g. Quality of Defendants' Product:
The parties dispute whether there is actually a difference in qualitybetween the revolvers. See PI. Br. Opp. Summ. J. at 43 (arguingthat Defendants have admitted the inferior nature of their product)and Def. Br. Opp. Summ. J. at 27 (arguing that any differencegoes to cosmetics, not quality/performance). Assuming however that thereis a difference in quality, both parties dispute the legal significancesuch a concession. Compare Charles of Ritz Group, 832F.2d at 1323 ("This marked difference in quality lessens the likelihoodof consumers' misapprehending the source of either product")with Morningside Group, Ltd., 182 F.3d at 142 ("Underthis factor a court first examines whether defendant's products orservices are inferior to plaintiff's, thereby tarnishing plaintiff'sreputation if consumers confuse the two"). There is, of course, nodispute that there is a difference in price between the revolvers.Nevertheless, the dispute over quality precludes summary resolution ofthis factor and it must be resolved by a fact finder.
h. Aggregate Analysis:
Factual disputes exist on every factor except customer sophisticationand degree of similarity which weigh in favor of Defendants andPlaintiffs respectively. Accordingly, the undisputed evidence does not"lead only to one conclusion" and summary judgment in favor of Defendantson likelihood of confusion is not possible. Cadbury Beverages,73 F.3d at 478. Defendants' Motion on this basis is denied.Page 52
6. Conclusion as to Trade Dress Claims:
Because Plaintiffs' description of its claimed trade dress is legallysufficient, there are factual questions as to its functionality, andlikelihood of confusion, Defendants' Motion for Summary Judgment onPlaintiffs' trade dress claims, Counts One, Two, Seven, and Eight isdenied.
B. Plaintiffs' Unregistered "Peacekeeper" Trademark:
Defendants move for summary judgment on Count Five which claimsinfringement of Plaintiffs' alleged trademark in the name "Peacekeeper."Plaintiffs manufactured and sold a double action revolver under the name"Peacekeeper" from approximately 1985 to 1987. Plaintiff no longermanufactures the revolver, but continues to provide repair services. Therevolver is not a western style revolver and is targeted at lawenforcement and home defense. It is undisputed that Plaintiffs neverregistered the "Peacekeeper" trademark.
Defendants argue that Plaintiffs have abandoned any rights they mayhave had in the Peacekeeper when they ceased producing the revolver in1987. Def. Br. Supp. Summ. J. at 73-74. Plaintiffs do not dispute thatthey ceased producing the revolver, nor do they argue that they areplanning to resume production of the revolver or have any plans to usethe mark "Peacekeeper." Plaintiffs' only argument with respect toabandonment is that because they continue to make repairs, there is"significant evidence of persisting goodwill and consumer association ofthe `Peacekeeper' name." Pl. Br. Opp. Summ. J. at 81. With respect to thefrequency of these repairs, Plaintiffs only produce evidence that therewere two to three repair requests in 2002. Id. This isinsufficient. Even the authority Plaintiffs cite to support theirposition, Ferrari S.p.A. Esercizio Fabbriche Automobili e Corse v.McBurnie, No. 86-1812-BPage 53(IEG), 1989 U.S. Dist. LEXIS 13442 (U.S. Dist., 1989), at *18-19(S.D. Cal. June 5, 1989), involves substantially different facts in whichthe manufacturer produced evidence of repairs for at least 10 years priorto the lawsuit. Accordingly, Plaintiffs have abandoned any rights theymay have had and Defendants' Motion for Summary Judgment as to Count Fiveis granted.
C. Plaintiffs' Registered "Peacemaker" and "Rampant Colt"Trademarks:
Parties submit cross-motions for summary judgment as to Counts Threeand Four dealing with Plaintiffs' registered "Peacemaker" and "RampantColt" trademarks. Plaintiffs claim that Defendants "Peacekeeper" markinfringes on their "Peacemaker" mark and that Defendants' running horsestyle unregistered mark infringes on their "Rampant Colt" registeredmark.
There are two distinctions between the marks at issue now andPlaintiffs' trade dress claims discussed above: 1) the two marks are notproduct designs; and 2) Plaintiffs' marks are both registered. Becauseproduct designs are not at issue, there is no prohibition on Plaintiffs'marks being inherently distinctive. See Wal-MartStores, 529 U.S. at 215 (stating rule that trade dress protectionfor product designs cannot be inherently distinctive). Moresignificantly, however, a certificate of registration "is prima facieevidence of the validity of the registration, of the registrant'sownership of the mark, and of the registrant's exclusive right to use themark in commerce on the goods or services specified therein." GoyaFoods, Inc. v. Tropicana Products, Inc., 846 F.2d 848, 854 (2d Cir.1988). This establishes a presumption in favor of the mark's validity andshifts the burden of persuasion to the Defendant to contest the mark'svalidity. Chere Amie, Inc. v. Windstar Apparel, Corp.,191 F. Supp.2d 343, 347 (S.D.N.Y. 2001). Indeed, Defendants do not dispute thevalidity of the marks. The presumption does not however effectPlaintiffs' burden to demonstrate a likelihood of confusion. Thus, theparties' arguments forPage 54summary judgment center on the likelihood of confusion. The factorsnecessary to consider in addressing confusion are the same as thosediscussed above with reference to Plaintiffs' trade dress claim.See Polaroid Corp., 287 F.2d at 495 (setting fortheight factor test).
1. Actual Confusion:
This factor is identical to the issues discussed above. Plaintiffs'survey provides evidence of actual confusion with respect to the marks atissue here. However, given the serious questions as to the weight that itshould be afforded, for purposes of the cross motions for summaryjudgment, there is a question of fact as to actual confusion and thisfactors weighs in neither party's favor.
2. Customer Sophistication:
The discussion necessary under this factor is also identical to thediscussion above. Although customer sophistication is not sufficient toresolve the question of confusion on its own, it does weigh inDefendants' favor on summary judgment.
3. Strength of the Mark:
The marks here are different than the trade dress discussed above. As aconsequence, this factor must now be addressed with respect to the"Rampant Colt" and "Peacemaker" marks. As above, strength is evaluatedbased on distinctiveness, however, here distinctiveness is measured on asliding scale from least distinctive to most distinctive: (1) generic;(2) descriptive; (3) suggestive; and (4) arbitrary or fanciful.TCPIP Holding Co. v. Haar Communs., Inc., 244 F.3d 88, 93 (2dCir. 2001). Generic marks "identify the type or species of goods orservices to which they apply [and] are totally lacking in distinctivequality . . ." Id. "Descriptive marks are marks that describe aproduct or its attributes. Because they are descriptions, they also lackdistinctivePage 55quality as marks." Id. "Marks that do not directlydescribe goods or services or their attributes, but rather are suggestiveof them, have some distinctive quality and are thus protected withoutneed to prove secondary meaning." Id. at 94. Finally, "[t]hemost distinctive marks, and thus the strongest, are marks that arearbitrary or fanciful" and have no descriptive quality whatsoever.Id.
a. "The Peacemaker":
Plaintiffs argue that this mark is arbitrary or, at the very least,suggestive. Pl. Br. Supp. Summ. J. at 24. Defendants, however, produceevidence that the term "Peacekeeper," or substantially similar marks,have been used as a mark both to refer to firearms and to other types ofproducts. Def. Br. Opp. Summ. J. at 22, Parent Decl., Exh. 31. Consideredby itself the mark "Peacekeeper" as applied to a revolver is suggestiveor arbitrary. However, common usage of the same mark can reduce thestrength of the mark and the likelihood of confusion. Amstar Corp.v. Domino's Pizza, Inc., 615 F.2d 252, 259-60 (5th Cir. 1980).Nevertheless, when that use is applied to different types of products,"third-party uses and registrations . . . merely limit the protection tobe accorded plaintiff's mark outside the uses to which plaintiff hasalready put its mark." Id. at 260. Thus, as Plaintiffs are notseeking protection of their mark outside the revolver market most of thethird-party use pointed to by Defendants is irrelevant here. Defendantsthen only point to two uses of the term "Peacekeeper" in the context offirearms. Def. Br. Opp. Summ. J. at 22. This is hardly extensive use andwithout more could not reasonably be relied on as undermining thedistinctiveness of Plaintiffs' mark. Accordingly, this factor must weighin Plaintiffs' favor.
b. The "Rampant Colt":
Again, this is a mark that is in no way descriptive and taken on itsown is arbitrary orPage 56fanciful. Defendants, however, claim that horse symbols are usedeven more often among western style firearms. Def. Br. Opp. Summ. J. at22-23. Defendants further argue that Plaintiffs' failure to police theseuses has resulted in a weakening of the mark. Id. at 23. Themere use of a horse in a mark is not sufficient to weaken all other marksthat involve horses. Defendants attempt to cast Plaintiffs' claims in anoverbroad manner such that if they are afforded protection all othermanufacturers will be precluded from using horse symbols on theirfirearms. This conclusion is of dubious value, nevertheless, it need notbe examined as Defendants fail to produce enough evidence to suggest thatsimilarly styled marks have weakened Plaintiffs' registered mark. Theinclusion of a couple photographs of replica grips, see e.g.Parent Decl., Exh. 20 and 30, is simply not enough. Accordingly, thisfactor weighs in Plaintiffs' favor.
4. Similarity of the Marks:
The parties, not surprisingly, take wildly diverging positions on thisfactor. See Def. Br. Opp. Summ. J. at 7-13 and P1.Br. Supp. Summ. J. at 27-29. Suffice it to say that the two marks are notso dissimilar that it is impossible to reasonably anticipate consumerconfusion, but neither are they so similar that the conclusion ofconsumer confusion is unavoidable or even predictably likely.Accordingly, the resolution of this question lies within the province ofthe fact-finder and cannot be resolved on summary judgment. Consideringthat cross-motions have been filed this factor must be construed in favorof neither party.
5. Proximity of the Products and the Likelihood of Bridgingthe Gap:
The analysis with respect to the marks "Peacekeeper" and "Rampant Colt"is the same as that pertaining to Plaintiffs' trade dress claims. Becausethere was a dispute of fact with respectPage 57to that discussion, there is also a question of fact here. Thisfactor falls in favor of neither party.
6. Defendants'Good/Bad Faith:
As above, "evidence of intentional copying raises a presumption thatthe second comer intended to create a confusing similarity." Charlesof Ritz Group, 832 F.2d at 1322. However, here Plaintiffs point tono direct evidence of intentional copying of and rely on evidence thatDefendants intended to create a replica of Plaintiffs' revolvers tosupport the inference that Defendants must also have intended to copyPlaintiffs' "Peacekeeper" and "Rampant Colt" marks. Pl. Br. Supp. Summ.J. at 33-35. While this may raise the question of bad faith, it does notresolve it. Defendants claim that there was no intent to copy and citethe alleged differences between the marks and that, at least with respectto their horse symbol, the design was conceived without reference toPlaintiffs'. Def. Br. Opp. Summ. J. at 9. This coupled with the previousdiscussion of the questions surrounding Defendants' bad faith precludesummary disposition of this factor.
7. Quality of the Products:
The parties address this factor as it applies to the products the marksdesignate and not the marks themselves. Accordingly, there is nothing toadd to the analysis as it pertained to Plaintiffs' trade dress. Becausethe parties dispute whether there is a difference in quality, there is asimilar question of fact here.
8. Conclusion as to Likelihood of Confusion:
The bulk of the factors do not weigh in either parties' favor, butrather weigh against both for the purposes of summary judgment.Accordingly, the likelihood of confusion between Plaintiffs' andDefendants' marks cannot be resolved here and both Plaintiffs' andDefendants'Page 58Motions for Summary Judgment are denied with respect toCounts Three and Four.
D. Plaintiffs' Unregistered "Armsmear Crest":
In Count Six of their Amended Complaint, Plaintiffs claim infringementof their unregistered Armsmear Crest mark, which is the family crest ofPlaintiffs' founder Samuel Colt. See Pl. Br. Opp. Summ. J. at79. Defendants move for summary judgment on this Count.
Defendants argue that their running horse symbol is not similar to theArmsmear Crest and that even if it was, Plaintiffs' use of the crest doesnot establish exclusivity, see Def. Br. Supp. Summ. J. at 83 n.37 (Plaintiffs have used the crest less than 50 times on customizedorders), and as Plaintiffs' survey does not involve the crest, there isno evidence establishing a likelihood of confusion. Id. at 84.Plaintiffs counter that the crest has been associated with Colt since1851 and that their use has been exclusive which suggests strength. Pl.Br. Opp. Summ. J. at 80. The moving party in a motion for summaryjudgment may point to a lack of evidence concerning an issue thenon-moving party will bear the burden of persuasion on at trial cansatisfy the moving party's burden, Legg, 228 F. Supp.2d at 56,citing Celotex, 477 U.S. at 322, but Defendants onlypoint to a lack of evidence as to actual confusion and dispute thestrength of Plaintiffs' mark. These are but two factors in the likelihoodof confusion analysis. Even assuming a lack of evidence of these points,Defendants are not necessarily entitled to summary judgment because theother factors must be considered. See New Kayak Pool,246 F.3d at 185 (While "the application of the Polaroid testneed not be rigid, it is nevertheless `incumbent upon the district judgeto engage in a deliberate review of each factor, and, if a factor isinapplicable to a case, to explain why"). Defendants arguments are notsufficient to allow for such an inquiry. As a consequence, Defendants'Motion for Summary Judgment on Count Six is denied.Page 59
E. Defendants' Affirmative Defenses and Counterclaims: 1. Acquiescence:
Defendants assert the affirmative defense of acquiescence and move forsummary judgment on that ground. Plaintiffs cross-move for summaryjudgment on the ground that Defendants are not entitled to anacquiescence defense.
Acquiescence "requires proof of three elements: (1) the senior useractively represented that it would not assert a right or a claim; (2)delay between the active representation and assertion of the right orclaim was not excusable; and (3) the delay caused the defendant undueprejudice." Times Mirror Magazines, Inc. v. Field & StreamLicenses Co., 294 F.3d 383, 395 (2d Cir. 2002) (citation omitted). Afinding of delay is central to this defense. Profitless PhysicalTherapy Ctr. v. Pro-Fit Orthopedic & Sports Physical TherapyP.C., 314 F.3d 62, 67 (2d Cir. 2002). While a plaintiff may notsimply sleep on its rights, there is no obligation to sue until thethreat of confusion "looms large" and the right to protection has"clearly ripened." Id. at 68 (citation omitted).
In this case, Defendants allege that Plaintiffs were on notice as toDefendants intentions as early as April 1999 when a meeting took placebetween representatives from Plaintiffs' company and Defendants'. Def.Br. Supp. Summ. J. at 77. Defendants brought to the meeting an example ofthe replica revolver they were planning to sell. Id. Anothermeeting took place in 1999 and then in January of 2000, Defendant RJGdisplayed one of Defendants' replicas at the SHOT Show in Las Vegas.Id. at 77-78. In February and March of 2000 Defendants sentletters to Plaintiffs advising them of their efforts to manufacturereplicas. Id. at 78. Defendants entered the market in June orJuly of 2000. Pl. Br. Opp. Summ. J. at 77. In the spring of 2001,PlaintiffsPage 60sent Defendants a cease and desist letter, filing suit in Januaryof 2002. Id. Defendants argue that the failure to raise theissue of infringement in the parties' several meetings constituted arepresentation that Plaintiffs would not assert a claim and that theperiod of delay between the meetings and Plaintiffs lawsuit constituted aprejudice. Def. Br. Supp. Summ. J. at 78-79.
Regardless of whether failure to raise the issue of infringement at themeetings constituted a representation that Plaintiffs would not assert aright, Plaintiffs delay is not unduly prejudicial. As cited, Plaintiffswere not under any obligation to file suit or assert their rights untilripe. Plaintiffs' claims were certainly not ripe prior to Defendants'entry into the market and thus Plaintiffs' delay was for a period of lessthan two years. This delay is not unduly prejudicial as a matter of law.Many statute of limitations allow a party two years to assert their claimby filing suit. Defendants' Motion for Summary Judgment based on adefense of acquiescence is denied and Plaintiffs' Motion forSummary Judgment on Defendants' acquiescence defense isgranted.
2. Plaintiffs' Entitlement to Monetary Damages:
Defendants move for summary judgment on the question of damages,arguing that based on the facts involved, Plaintiffs have no entitlementto monetary damages.
Generally under Section 35 of the Lanham Act a plaintiff is entitled,"subject to the principles of equity, to recover (1) defendant's profits,(2) any damages sustained by the plaintiff, and (3) the costs of theaction." 15 U.S.C.S. § 1117(a) (LEXIS 2004). However, to recover anydamages Plaintiffs must be able to prove "actual consumer confusion ordeception resulting from the violation . . . or that the defendant'sactions were intentionally deceptive thus giving rise to a rebuttablepresumption of consumer confusion." George Basch Co. v. Blue Coral,Inc.,Page 61968 F.2d 1532, 1537 (2d Cir. 1992) (citations omitted). Plaintiffs havealready raised a question of fact as to actual confusion with theirsurvey evidence, thus, summary disposition of their entitlement todamages is not appropriate on that basis. Similarly, there is a questionof fact as to whether Defendants' conduct was intentionally deceptive.While Defendants surely intended to produce replicas, they haveconsistently maintained that they are attempting to compete, not deceive,by targeting a different consumer demographic, that consumers know thedifference between their revolvers and Plaintiffs', and that theirrevolvers are readily identifiable through the use of their rollmark.Whether these arguments are to be credited is not a question for summaryjudgment. Thus, Defendants' Motion for Summary Judgment on damages underthe Lanham Act is denied.15
3. Damages Under the Connecticut Unfair Trade Practices Act(CUTPA):
Under the CUTPA, Plaintiffs may be entitled to recover actual damages,punitive damages, reasonable attorney's fees, or other equitable relief.Conn. Gen. Stat. § 42-110g(a) and (g) (LEXIS (2004). Defendantsconclusorily argue based on their discussion of damages under the LanhamAct, that damages cannot be awarded under the CUTPA. Def. Br. Supp. Summ.J. atPage 6292. As to actual damages, Defendants are presumably invoking theirargument that Plaintiffs cannot show actual confusion to demonstrateactual damages under the Lanham Act. Id. at 89. This argumentis unavailing as there is a question of fact surrounding actualconfusion. The standard for awarding punitive damages under the CUTPA iswhether the evidence reveals "wanton and malicious injury, evil motiveand violence" such that "a reckless indifference to the rights of othersor an intentional and wanton violation of [Plaintiffs'] rights" isapparent. Gargano v. Heyman, 203 Conn. 616, 622, 525 A.2d 1343,1347 (1987) (citations omitted), see also Staehle v.Michael's Garage, 35 Conn. App. 455, 462, 646 A.2d 888, 892 (1994).Certainly if a jury were to disbelieve Defendants' arguments concerningits good faith an award of punitive damages could be proper. Assuming allclaims are proven, attorneys fees cannot now be precluded. Accordingly,Defendants' Motion for Summary Judgment on damages under the CUTPA isdenied.
4. Defendants' False Designation of Origin and AdvertisingClaims:
Defendants make several separate false advertising claims and one falsedesignation of origin claim. The parties file cross motions on one ofPlaintiffs' false advertising claims — namely that Plaintiffs'revolvers are made in the United States — and Defendants move forsummary judgment on all of Defendants' remaining counterclaims.
Under the Lanham Act, (1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which —
(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercialPage 63 activities by another person, or
(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities,15 U.S.C.S. § 1125(a).
In order to establish standing to bring a claim Defendants must
demonstrate a "reasonable interest to be protected" against the advertiser's false or misleading claims, and a "reasonable basis" for believing that this interest is likely to be damaged by the false or misleading advertising. The "reasonable basis" prong embodies a requirement that the plaintiff show both likely injury and a causal nexus to the false advertising.Havana Club Holding, S.A. v. Galleon, S.A., 203 F.3d 116,130 (2d Cir. 2000) (citation omitted).
While Defendants here need not be "a direct competitor, it is apparentthat, at a minimum, standing to bring a section 43 claim requires thepotential for a commercial or competitive injury." Id. In otherwords, there must be more than a "subjective belief in damages.Ortho Pharmaceutical Corp. v. Cosprophar, Inc., 32 F.3d 690,694 (2d Cir. 1994). When the products are not in direct competition, "amore substantial showing" of injury and causation is required.Id.
A party asserting a false advertising claim must demonstrate that thechallenged statement is false. "Falsity may be established by provingthat (1) the advertising is literally false as a factual matter, or (2)although the advertisement is literally true, it is likely to deceive orconfuse customers." NBA v. Motorola, Inc., 105 F.3d 841, 855(2d Cir. 1997) (citation omitted). However, "[s]ubjective claims aboutproducts, which cannot be proven either true or false, are not actionableunder the Lanham Act." Lipton v. Nature Co., 71 F.3d 464, 474(2d Cir. 1995). This extends to claims that are "mere puffing." JRTobacco. of Am. v. Davidoff of Geneva (CT),Page 64957 F. Supp. 426, 432 n. 6 (S.D.N.Y. 1997).
Finally, it must be established that the alleged falsity deals with aninherent quality or characteristic of the product such that consumerswould consider it material and influence their purchasing decisions.NBA, 105 F.3d at 855.
a. "Made in the USA":
In their First Counterclaim, Defendants assert that numerous periodicalreferences (either in advertisements or other stories) to Plaintiffs'Cowboy revolver state that it is made in the U.S.A. and that thisdesignation is false. Def. Br. Supp. Summ. J. at 96-99. Many of thereferences cited appear in periodicals prior to Defendants' entry intothe market in the year 2000. With respect to those references, Defendantslack standing to pursue a claim of false advertising under the LanhamAct. At the time the ads appeared, Defendants were not in directcompetition with Plaintiffs. Accordingly Defendants are held to a higherstandard with respect to demonstrating injury and causation. The onlyclaim Defendants make is that the references in various periodicals couldhave "enhanced the public's perception of the Cowboy revolver as `Made inthe USA.' and negatively impacted [Defendants] at the time it wasentering the replica revolver market." Def. Br. Opp. Summ. J. at 95. Thisargument is pure speculation. Defendants produce no specific evidence toback up this claim and it simply does not amount to a "more substantialshowing" of either injury or causation. Defendants, therefore, have nostanding to assert a claim involving periodical references that appearedbefore they entered the market.
Defendants also cannot demonstrate injury with respect to thoseperiodical references that appeared after the year 2000. While Defendantsconducted a consumer survey that suggests whether a revolver is ofdomestic origin is an important consideration to many firearmsPage 65purchasers, Def. Br. Supp. Summ. J. at 99-100, it is undisputedthat Defendants' revolvers are of foreign origin. Assuming Plaintiffs'revolvers are not of domestic origin, there is no evidence to suggestthat if consumers knew the truth of its origin they would cease to careabout the revolvers domestic origin and purchase Defendants' foreignproduced revolvers. It is therefore unclear how Defendants are damaged.Plaintiffs may reap some undue benefit, but at best this injures othermanufacturers whose products are manufactured in the U.S. and notDefendants. There is no reasonable basis to infer "likely injury" or a"causal nexus." Havana Club Holding, 203 F.3d at 130.Accordingly Defendants have no standing to assert their falseadvertising/designation of origin counterclaim and their Motion forSummary Judgment is denied. Plaintiffs' Motion on the samecounterclaim is granted.16
b. Claims of Historical Significance:
In their First Counterclaim, Defendant AWA claims that Plaintiffs'sadvertising their single action revolvers, in particular the Model P, asthe "gun that won the west" is falsePage 66advertising under the Lanham Act. See15 U.S.C. § 1125(a)(1)(B). Plaintiffs' move for summary judgment on thiscounterclaim.
Defendants argue that because historical significance is important toconsumers purchasing western style revolvers, Plaintiffs' advertising ismaterial and, if false, likely to draw away customers causing injury toDefendants. Def. Br. Opp. Summ. J. at 96-97. Defendants argue that it isnot true that Plaintiffs' revolvers won the west and that the Winchester73 rifle is the gun that won the west. Id. at 97.
Defendants arguments are based on an overly literal interpretation ofPlaintiffs' advertising. The statement is clearly a form of puffing andnot entirely susceptible to proof or disproof. If one is inclined to beso literal, an inanimate object, such as a gun, cannot literally winanything such as a war or the drive to colonize the western region ofthis country. While the use of a revolver or rifle may have helpedindividuals "win the west,"17 which single firearm was decisive, ifany, is not the sort of question subject to resolution. While any claimmay have some basis in fact, the claim of exclusive responsibility isinevitably an exaggeration. The statement, much like "Energizer Bunny"going on and on or "The Best a Man Can Get" is a form of puffing, notliteral truth. Accordingly, Plaintiffs' Motion for Summary Judgment onthis claim is granted.
c. Designation of Origin on Plaintiffs' Rollmark:
Plaintiffs move for summary judgment on Defendant AWA's SecondCounterclaim, which asserts that the rollmark on the barrel ofPlaintiffs' revolvers which reads "Colt's Pt. F.A. Mfg. Co. Hfd Conn.USA" is a false designation of origin. Plaintiffs argue that they are thePage 67corporate descendants of Colt's Patent Firearms ManufacturingCompany, the company whose name is abbreviated on the rollmark, and arethus entitled to use the name. P1. Br. Supp. Summ. J. at 51. Furthermore,they argue that although Plaintiffs maintain their physical presence inWest Hartford, their corporate address is in Hartford. Id.Accordingly, Plaintiffs argue that there is nothing untruthful about therollmark.
Defendants' base their opposition solely on the argument that becausePlaintiffs' revolvers have been manufactured in West Hartford and notHartford, Connecticut since at least 1994, the rollmark is literallyfalse. Def. Br. Opp. Summ. J. at 97. It is noteworthy that the rollmarkitself does not represent that the products were actually manufactured inHartford and could be easily read to reference the corporate address notthe manufacturing address. However, even assuming that there is somefalsity to the rollmark, Defendants cannot demonstrate materiality.Defendants conclusorily argue that "historical authenticity" is importantto consumers of western style revolvers and that one should assume thatthe difference between Hartford and West Hartford is crucial to thatauthenticity such that a corporate address in Hartford is not sufficientto establish the appropriate level of authenticity. Id. Thereis simply no evidence produced to suggest this level of attention todetail. As a consequence, Plaintiffs' Motion for Summary Judgment onDefendants' Second Counterclaim is granted.
5. Defendants' CUTPA Claim:
____ The CUTPA states that "[n]o person shall engage in unfair methodsof competition and unfair or deceptive acts or practices in the conductof any trade or commerce." Conn. Gen. Stat. § 42-110b(a) (LEXIS2004). In order to determine what is unfair, a court must consider:
(1) [W]hether the practice, without necessarily having been previously consideredPage 68 unlawful, offend public policy as it has been established by statutes, the common law, or otherwise — whether, in other words, it is within at least the penumbra of some common law, statutory, or other established concept of unfairness; (2) whether it is immoral, unethical, oppressive, or unscrupulous; (3) whether it causes substantial injury to consumers [(competitors or other businessmen)]
Web Press Services Corp. v. New London Motors, Inc.,203 Conn. 342, 355, 525 A.2d 57, 65 (1987) (alterations in original). Thus, aviolation of the CUTPA may be established by showing either an actualdeceptive practice . . . or a practice amounting to a violation of publicpolicy." Id. (citation omitted).
Defendant AWA's Third Counterclaim alleges a violation of the CUTPAwhen Plaintiffs filed a letter of protest with the United States Patentand Trademark Office ("PTO") on December 7, 2001 over Defendant AWA'sattempt to register the trademark "Peacekeeper." In that letter,Plaintiffs informed the PTO of their registration of the mark"Peacemaker." Then, after this lawsuit was filed, Plaintiffs filed asecond letter of protest on February 20, 2002 requesting that theapplication for registration be suspended pending the outcome of thislitigation. That request was granted and the PTO suspended action onDefendant AWA's application. Defendants argue that because Plaintiffsnever registered the "Peacekeeper" mark "their effort to block[Defendant] AWA's registration was in bad faith." Def. Br. Opp. Summ. J.at 99. Defendants also argue, based on the counterclaims concerning falsedesignation of origin and advertising, that a violation of the Lanham Actis a per se violation of the CUTPA and that they are therefore entitledto relief under the CUTPA. Id. at 98.
Plaintiffs move for summary judgment on the basis that their actionsare simply not actionable under the CUTPA as they do not involve immoral,unethical, or unfair behavior which violates any public policy or damagesconsumers. PI. Br. Supp. Summ. J. at 54-56. PlaintiffsPage 69argue they were simply following standard procedure under PTOregulations. Id. at 55. Plaintiffs do not address Defendantsother Lanham Act counterclaims as bases for the CUTPA claim, but becausesummary judgment has already be granted in favor of Plaintiffs onCounterclaims One and Two, there is no need to address them here.Accordingly, the only bases left for a possible CUTPA claim are theletters of protest.
For Defendants to go forward they are essentially asking the Court tofind that actions taken in the context of governmental administrativeand/or judicial proceeding can constitute unfair methods of competitionand unfair, deceptive acts, or practices in the conduct of trade orcommerce. Without finding that this would never be possible, it would atleast have to amount to more than a simple assertion of what Plaintiffsbelieve to be their legal rights. See e.g. SuburbanRestoration Co. v. ACMAT Corp., 700 F.2d 98, (2d Cir. 1983) ("[T]hefiling of a single non-sham lawsuit — cannot form the basis of aclaim under CUTPA . . ."); Norse Sys. v. Tingley Svs.,49 Conn. App. 582, 596, 715 A.2d 807 (1998) (Interpreting a CUTPA claimbased on an allegedly frivolous lawsuit with the motive to destroy acompetitor as a "hybrid" vexatious litigation claim — which requires a lackof probable cause — and tortious interference with a business orcontractual relationship claim). Plaintiffs legal action, while certainlynot guaranteed to succeed, is not so without base as to be unethical,unfair, or in violation of public policy. Accordingly, without a showingthat Plaintiffs' actions amounted to more than an at least colorableattempt to preserve legal rights, of which there is none, there is nobasis to assert a CUTPA violation. Plaintiffs' Motion for SummaryJudgment on Defendant AWA's Third Counterclaim is granted.
6. Whether the Name "Single Action Army" and thePeacemakerPage 70
Trade Dress is Generic or Abandoned:
Defendant AWA's Fourth and Fifth Counterclaims allege that the name"Single Action Army" (which in their Amended Complaint Plaintiffs assertis their common law trademark) and the Peacemaker trade dress is genericand/or abandoned. Defendants arguments on these claims have already beenaddressed, however, Plaintiffs also move for summary judgment on theseissues. Although Defendants did not establish their right to summaryjudgment on the question of whether the trade dress is generic, thecontinued existence of replica makers does raise a question of fact.See BellSouth Corp., 60 F.3d at 1570 (A mark "maybecome generic over time through common usage if the otherwisenondescriptive term is not policed as a trademark and it is commonly usedto describe a type of product). Accordingly, Plaintiffs are not entitledto summary judgment on the question of whether their trade dress isgeneric. Plaintiffs' Motion is denied.
Similarly, the issue of abandonment has been addressed. Plaintiffsarguments center around the maintenance of secondary meaning during theperiod of non-production and that secondary meaning in their trade dressdid not, as a matter of law, dissipate. Pl. Br. Supp. Summ. J. at 59.Plaintiffs certainly raise a question of fact as to whether theymaintained secondary meaning, but considered against the plausible claimthat the existence of replicas weakened that distinctiveness the issuecannot be resolved on summary judgment. Accordingly, Plaintiffs' Motionfor Summary Judgment on Defendants' Fourth and Fifth Counterclaim onabandonment is denied. Parties are, however, cautioned againthat focusing too much on this period of non-production may not bear onany dispositive question of fact or law.
Finally, Plaintiffs argue that they are entitled to summary judgment onDefendants'Page 71counterclaim on the name "Single Action Army." This argument iscurious in that neither parties' briefs contain any particularizeddiscussion of this name. Plaintiffs' Brief Supporting their Motionfocuses on the failure of Defendants' argument about copying todemonstrate that the trade dress is generic, but does not address howthis applies to a product name. It may apply in the same manner, but theargument must be made. Defendants Opposition Brief not surprisingly alsofocuses on the "overall appearance" of the trade dress and not the name"Single Action Army." See Def. Br. Opp. Summ. J. at 71-80. Thesame holds true for Defendants' Brief in Support of their Motion.See Def. Br. Supp. Summ. J. at 60-74. Plaintiffs have thereforenot met their initial burden on summary judgment and their Motion isdenied.
For the reasons stated herein, Plaintiffs' Motion for Summary Judgment[Doc. No. 157] is granted in part, denied in part.Plaintiffs' Motion is granted with respect to Defendants' acquiescencedefense and Defendant AW A' First, Second, and Third Counterclaim. It isdenied with respect to all other issues. Defendants' Motion for SummaryJudgment [Doc. No. 144] is granted in part, denied inpart. Defendants' Motion is granted with respect to Count Five ofPlaintiffs' Amended Complaint and denied with respect to all otherCounts. Additionally, Defendants' Motions to Strike [Doc. Nos. 186 and193] are denied.
1. Unless otherwise noted, the facts are taken from the parties'Local Rule 56(a) statements of material facts not in dispute.
2. It bears mentioning at the outset that the hostility evident inboth parties' briefs is entirely inappropriate and unprofessional.Referring to another party's argument as preposterous, ludicrous, absurd,or anything similar does nothing to advance rational discussion of anissue or aid in its resolution. In fact, such language has the tendencyto discredit rather than bolster legal arguments.
3. Count Eight asserts a violation of the CUTPA. Defendants do notmake any arguments tailored to the CUTPA. Presumably they are relying onthe fact that many courts view a violation of the Lanham Act as a per seviolation of the CUTPA. See e.g. Timex Corp. v.Stoller, 961 F. Supp. 374, 381 (D. Conn. 19971. but seealso Sporty's Farm, LLC v. Sportsman's Mkt., Inc., No.3:96CV0756 (AVC), 1998 U.S. Dist. LEXIS 23290, *25 (D. Conn. 1998)(Finding of a violation of the Lanham Act does not necessarily obviatethe necessity to consider the CUTPA standard). Thus, if Defendantsestablish their entitlement to summary judgment on Counts One, Two, andSeven, they presumably establish their entitlement to judgment on CountEight. However, because Defendants fail to establish their entitlement tosummary judgment on Plaintiffs' trade dress claims, separateconsideration of Count Eight is unnecessary.
4. The witness does not appear to claim the actual firing pin, butrather as stated how the shape of the hammer looks in relation to therest of the gun. Reissig Depo. at 187:17-20.
5. Plaintiffs object to some of Defendants' evidence in support ofthis contention as hearsay. Pl Br. Opp. Summ. J. at 11 n. 7. Plaintiffs'objection is conclusory and does not properly raise the question. It willnot be considered.
6. It should be noted however that Plaintiffs are bound to what theyclaim and it is therefore possible that relatively minor variations inthe replicas may affect the overall appearance and defeat Plaintiffsclaims.
7. Of course, the significance of this fact may be mitigated byweighing the import of evidence of intentional copying. No position istaken on the outcome of this balancing of factors here.
8. This procedural detail is important in that the Second Circuitdid not prevent Stickley from going forward, as Defendants ask this Courtto do, rather they merely found that the claim was unlikely to succeedand did not warrant a preliminary injunction.
9. It is important to keep in mind that with respect to most of thediscussion of functionality that it is geared towards whether or notDefendants have properly supported their Motion and if so whetherPlaintiffs produce enough evidence to survive summary judgment on thatpoint. The Ruling is thus narrowly tailored to the adequacy ofPlaintiffs' response to Defendants' arguments. This should not detractfrom or bear on Plaintiffs' ultimate burden to affirmatively provenonfunctionality at trial, which is distinct from their burden at summaryjudgment.
10. The left side of the Model P revolver includes three patentdates corresponding to U.S. Patent No. 119, 048 (issued 9/19/1871), U.S.Patent No. 128, 644 (issued 7/2/1872), and U.S. Patent No. 158, 957(issued 1/19/1875). Def. Br. Supp. Summ. J. at 44. Defendants argue thatbecause features of the alleged trade dress are pictured in the drawingspertaining to the 1873 and 1875 patents, those features have beendedicated to the public and are not protectable. Id. at 44-47.It is generally true that "the claim of a specific device or combination,and an omission to claim other devices or combinations apparent on theface of the patent, are, in law, a dedication to the public of that whichis not claimed." Miller v. Brass Co., 104 U.S. 350, 352 (1881);see also General Radio Co. v. Kepco, Inc.,435 F.2d 135, 136-37 (2d Cir. 1970) ("The fact that the [device] was notspecifically claimed . . . is not determinative, for the device wasdisclosed in the specification and is thus public property"). This ruleis distinct from the principle discussed above in TrafFix 532U.S. at 29 (stating that the existence of a utility patent is strongevidence of functionality), largely ignored by Defendants, and it is notclear that it applies to trademark protection. See J. ThomasMcCarthy, 1 McCarthy on Trademarks and Unfair Competition § 7:89.2,7-259 (4th Ed. 2003) (Stating author's view that "this rule is confinedto patent law"). Indeed, such a rule would exclude trade dress protectionfor any shape or design visible in a patent specification regardless ofthe functionality of that feature and would seem to cut against, if notrender obsolete, the Supreme Court's statement about the significance ofutility patents for determining functionality. A utility patent would notbe strong evidence of functionality, but conclusive evidence of theunavailability of trade dress protection. Accordingly, it is most in linewith trademark law to apply a functionality analysis, which addresses theconcerns surrounding the perpetual nature of trade dress protectionapplied to a utilitarian design, rather than fashion a potentiallyoverbroad rule and exclude designs otherwise protectable under theprinciples of trade dress law.
11. Defendants argue that Plaintiffs' witness has concededfunctionality. Def. Br. Supp. Summ. J. at 33, citing Def. Exh.14 at 98-101. Plaintiffs witness does make this concession butconsistently asserts the purely cosmetic nature of this feature.
12. Plaintiffs also submit anecdotal evidence from one consumerclaiming that he bought Defendants' product believing it to bePlaintiffs'. Pl. Br. Opp. Summ. J. at 43-44. While such evidence is intheory admissible, it is also within a court's discretion to exclude it.Nora Beverages, 269 F.3d at 124. No such ruling is necessaryhere. One consumer testimonial does not raise a question of fact onsummary judgment. Without Plaintiffs' survey there is no question of factas to actual confusion. However, with Plaintiffs' survey evidence, thereclearly is a question of fact on actual confusion. The consumertestimonial is therefore peripheral to this discussion and there is noneed to rule on its admissibility here. As a consequence, Defendants'Motion to Strike [Doc. No. 193] is denied without prejudice torenew at trial if Plaintiffs intend to introduce the testimonial asevidence.
13. Defendants do not argue that the test formulated by Toys"R" Us in the hearsay context is equally applicable to aRule 403 objections. Accordingly, this analysis will proceed under thestatutory framework under which the test cited was formulated.
14. It is not necessary to limit the survey to those who currentlyidentify themselves as shooters or collectors in order to reach thedemographic at issue. The survey could have been limited to those whohave an interest in shooting or collecting historically accurate guns.Thus, Plaintiffs' arguments that to so limit the survey universe wouldexclude relevant potential consumers, Pl. Br. Opp. Summ J. at 50, isunavailing.
15. Assuming arguendo that the analysis could proceed past thequestion of actual confusion, Plaintiffs' briefing on the issue ofentitlement to profits is incomplete. There are three "categoricallydistinct" bases for awarding Defendants' profits to Plaintiffs, namely,"if the defendant is unjustly enriched, if the plaintiff sustaineddamages from the infringement, or if the accounting is necessary to detera willful infringer from doing so again." George Basch Co., 968F.2d at 1537 (citation omitted). However, with respect to all threebases, "a plaintiff must prove that an infringer acted with willfuldeception before the infringer's profits are recoverable by way of anaccounting." Id. at 1540. In opposing Defendants' Motion,Plaintiffs focus entirely on whether Defendants' conduct wasintentionally deceptive. Pl. Br. Opp. Summ. J. at 84-85. Whileestablishing that Defendants' conduct was intentionally deceptive wouldestablish it as willful, Plaintiffs do not take their arguments anyfarther and as willfulness is an element common to all bases for seekingprofits, it is not possible to discern the specific base(s) forPlaintiffs alleged entitlement to Defendants' profits.
16. Assuming arguendo that Defendants had standing, it is unlikelythat they could show that the Cowboy revolver was not made in the UnitedStates. The Federal Trade Commission (FTC) has enunciated an "all orvirtually all" standard to evaluate made in the U.S.A. claims or origin.See Enforcement Policy on U.S. Origin Claims,available athttp://www.ftc.gov/os/1997/12/epsmadeusa.htm (last accessed onMarch 29, 2004). Under the FTC standard, there is no bright line rule andconsideration should be given to 1) the location of final assembly; 2)the portion of total manufacturing costs assigned to the United States;and 3) the degree of removal of the foreign input from the finishedproduct. Defendants argue that because the frame, trigger guard, hammer,frontstrap, backstrap, ejector rod, and ejector rod housing are all castin Canada the revolver is not of domestic origin. Def. Br. Supp. Summ. J.at 99. It is, however, undisputed that the Cowboy revolver is assembledin the United States. Plaintiffs also contend that approximately 12-15%of manufacturing costs can be assigned to foreign sources, thus leavingat least 85% to the United States. P1 Br. Opp. Summ. J. at 92. Defendantsdo not provide any evidence to the call into question this statistic.Finally, the revolver is machined, polished, finished, assembled, andpackaged in the United States. Id. at 93. Thus, the only partof revolver's manufacturing that is attributable to non-US sources is theinitial casting of some of the components of the revolver and the finalproduct is greatly removed from the foreign input. These facts wouldlikely be sufficient to sustain a finding that the revolver is made inthe United States.
17. As the saying goes, "Guns don't kill people, people killpeople . . ."