• The Elephant in the Dark

    by  • July 31, 2009 • trademark

    Knight’s Armament Company and Optical Systems Technology, Inc. (OSTI) collaborated on the production of “clip-on in-line night vision devices” (CNVD), night scopes for use in low light conditions to be placed on a rifle immediately in front of the regular scope. Knight’s Armament contracted to provide the scopes, which were manufactured by OSTI. The contracts referred to the scopes by different names, including KNIGHTSCOPE, UNIVERSAL NIGHT SIGHT and the initialism for the phrase, UNS.

    There wouldn’t be a lawsuit if there hadn’t been a falling out. It started in 2003 when the parties disagreed over who owned the underlying technology and ended up in the instant lawsuit in 2007. By then, Knight’s Armament had filed trademark applications for the the marks KNIGHTSCOPE, UNIVERSAL NIGHT SIGHT, UNIVERSAL NIGHT SCOPE (not mentioned in the case) and UNS, successfully registering KNIGHTSCOPE and UNS and abandoning the application for UNIVERSAL NIGHT SIGHT. OSTI eventually tumbled to the registration of UNS and filed a petition to cancel it; it also filed its own applications for not only UNIVERSAL NIGHT SIGHT and UNS, but also for UNIVERSAL NIGHT SCOPE, MAGNUM UNIVERSAL NIGHT SIGHT and its initialism MUNS, and DUALBAND UNIVERSAL NIGHT SIGHT and its initialism DUNS. Knight’s Armament also had an attorney re-file a new application for UNIVERSAL NIGHT SIGHT.

    Knight’s Armament ultimately sued OSTI for trademark infringement, claiming that OSTI’s use of UNS, UNIVERSAL NIGHT SIGHT, MUNS, MAGNUM UNIVERSAL NIGHT SIGHT, DUNS, DUALBAND UNIVERSAL NIGHT SIGHT and UNIVERSAL NIGHT SCOPE was infringing.*

    The central issue was therefore who owned UNIVERSAL NIGHT SIGHT and UNS. The court used the Planetary Motion v. Techsplosion analysis to decide. Under Planetary Motion, the first question is whether a party can show it adopted a mark and the second is whether it demonstrated that the mark was used “in a way sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of the adopter of the mark” under the totality of the circumstances.

    While this test may be appropriate for deciding whether a mark has been sufficiently public to have enforceable rights, I’m skeptical that this is the correct analysis for the situation where two entities claim to own the same mark. In this case, both parties used the same evidence to support their respective claims to ownership. The first use was in 2000, after Knight’s Armament and OSTI together pitched the Department of Defense Special Operations Command. OSTI subsequently wrote the spec for the night scopes using the terms “UNS” and “Universal Night Sight,” which were then used by the Special Ops Command in the Statement of Work it sent to Knight’s Armament. Knight’s Armament relied on the SOW as evidence that the Special Ops Command had adopted Knight’s Armament’s marks; the court instead found this evidence of OSTI’s ownership, since it was because of OSTI’s earlier use in the spec.

    Correctly analyzed or not, at the end of the day the court decided that UNS and UNIVERSAL NIGHT SCOPE were owned by OSTI. Therefore, any infringement claims based on Knight’s Armament’s ownership of those marks failed.

    As I see it, the elephant in the room, for UNIVERAL NIGHT SCOPE at least, is genericism. Since both parties claimed to own the phrase, neither was motivated to challenge the distinctiveness of it. Thus the court never analyzed whether that or UNS were marks at all, despite some remarkable statements in the opinion showing that both parties didn’t treat them that way.

    For example, there was evidence that Knight’s Armament would submit documents to the government using “Knightscope” and the government would return them saying “UNS” and “Universal Night Scope.” The opinion said this: “Knight speculated that [the government contact] called it the Universal Night Sight because [Knight’s Armament] was ‘calling it Knightscope and [Special Ops Command] wanted it to be something generic'”; likewise “Knight testified that [Knight’s Armament] persisted in calling the CNVD the KNIGHTSCOPE despite what he believed was the government’s attempt to affix the ‘generic’ Universal Night Sight and UNS labels.” Knight’s Armament had this in a response to a Request For Quote: “Knights Armament Company can supply the (4) Universal Night Sights with the modifications described in Section C of your request . . . .” This was on documents written by OSTI: “The Universal Night Sight (UNS) has been developed entirely by [OSTI] funds and OSTI maintains all right, title, and interest in and to the UNS. Nothing in this proposal . . . shall convey, transfer, assign any right or interest, whatsoever, in the UNS . . . “, and “[Knight’s Armament] is pleased to propose the Universal Night Sight . . . . The Universal Night Sight (Knightscope Model 007) . . . .” The court also blithely attributed statements about “Universal Night Sights” (including quotation marks) as evidence of use as a mark by OSTI.

    But Knight’s Armament’s second application successfully traversed a descriptiveness refusal by disclaiming NIGHT SIGHT and explaining the night sights aren’t “universal”:

    (click to enlarge)

    The mark was subsequently published for the Principal Register without a Section 2(f) claim, now opposed.

    Knight’s Armament Co. v. Optical Sys. Tech., Inc., NO. 6:07-cv-1323-Or1-2DAB, 2009 WL 2137163 (M.D. Fla. July 7, 2009).

    * There were also allegations of infringement by OSTI’s use of KNIGHTSCOPE, UNIVERSAL KNIGHTSCOPE and UKS, but the ownership of KNIGHTSCOPE was not disputed.

    © 2009 Pamela Chestek