New Colt Holding Corp. v. Rjg Holdings of Florida, Inc.

• Citation: 312 F.Supp.2d 195
• Decision Date: 29 March 2004
• Docket Number: No. 3:02CV173 (PCD).,3:02CV173 (PCD).
• Parties: NEW COLT HOLDING CORP., et al Plaintiffs v. RJG HOLDINGS OF FLORIDA, INC., et al Defendants
• Court: U.S. District Court — District of Connecticut

312 F.Supp.2d 195

NEW COLT HOLDING CORP., et al Plaintiffs v. RJG HOLDINGS OF FLORIDA, INC., et al Defendants

No. 3:02CV173 (PCD).

United States District Court, D. Connecticut.

March 29, 2004.

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H. David Starr, Slavit & Gill, Washington, DC, Joseph Dieso, Colt's Mfg. Co., Inc., Hartford, CT, Kristie G. Haynes, Slavit & Gill, Robert C. Gill, II, Slavit & Gill, Washington, DC, for New Colt Holding Corporation, Colt's Mfg. Co. Inc., Plaintiffs.

Brooks Bruneau, Mathews, Collins, Shepherd & McKay, Princeton, NJ, Charles Phillip Reed, Loughlin, FitzGerald, Kamp, Henrici Molloy, Rizzo & Reed, John F. Conway, Loughlin, FitzGerald, Kamp, Henrici Molloy, Rizzo & Reed, Wallingford, CT, Kristine Butler-Holston, Mathews, Collins, Shepherd & McKay, Philip B. Abramowitz, Mathews, Collins, Shepherd & McKay, Todd A. Denys, Mathews, Collins, Shepherd & McKay, Princeton, NJ, Brian D. Rich, Halloran & Sage, Hartford, CT, Christopher M. Parent, Shughart Thomson & Kilroy, Denver CO, Joseph G. Fortner, Jr., Halloran & Sage LLP, Hartford, CT, for RJG Holdings of FL Inc., fka American Western Arms Inc., AWA Int'l Inc., ta American Western Arms, Defendants.

RULING ON CROSS-MOTIONS FOR SUMMARY JUDGMENT

DORSEY, District Judge.

Pursuant to Fed.R.Civ.P. 56, Plaintiffs and Defendants have filed cross-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] is granted in part, denied in part. Additionally, Defendants' Motions to Strike [Doc. Nos. 186 and 193] are denied.

I. BACKGROUND:

Plaintiffs New Colt Holding Corporation and Colt's Manufacturing Company, Inc. brought this action against RJG Holdings of Florida, Inc f/k/a American Western Arms and AWA International, Inc. t/a American Western Arms alleging violations of the Lanham Act. 15 U.S.C. § 1051, et seq. (LEXIS 2004) and the Connecticut Unfair Trade Practices Act ("CUTPA"), Conn. Gen.Stat. § 42-110b(a) (LEXIS 2004). Pursuant to Sections 32, 43(a), and (c) of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), and (c), Plaintiffs allege infringement of the trade dress of their Peacemaker revolver (Count One), dilution of the trade dress of the Peacemaker revolver (Count Two), infringement of their registered trademarks "Peacekeeper" (Count Three) and "Rampant Colt (Count Four), infringement of Plaintiffs' unregistered marks "Peacekeeper" (Count Five) and "Armsmear Crest" (Count Six), federal unfair competition (Count Seven), and unfair competition under state law pursuant to the CUTPA, Conn. Genn. Stat. § 42-110b(a) (Count Eight).

Defendant AWA asserts five counterclaims against Plaintiffs. Pursuant to the Lanham Act, 15 U.S.C. § 1125(a)(1), Defendant AWA alleges false designation of origin claims as to whether Plaintiffs' Cowboy revolver is manufactured in the USA and false advertising concerning historical significance (First Counterclaim). Defendant AWA also alleges false designation of origin in as much as Plaintiffs mark their revolvers as manufactured in Hartford, Connecticut (Second Counterclaim). A violation of the CUTPA, Conn. Gen.Stat. § 42-110a et seq, is asserted when Plaintiffs filed a letter of protest with respect to Defendant's attempt at registration of the mark "Peacekeeper" (Third Counterclaim). Finally, it is alleged that the name "Single Action Army" and Plaintiffs' alleged trade dress have either been abandoned or become generic (Fourth and Fifth Counterclaims).

The majority of the relevant facts will be discussed as necessary in the substance of this Ruling, however, some background is necessary.¹ Plaintiff New Colt Holding Corp. is a corporation organized and existing under the laws of Delaware with its principal place of business in New York, NY. New Colt is the parent company of Plaintiff Colt's Manufacturing Company, Inc., which is a corporation organized and existing under the laws of the Delaware with a corporate address in Hartford, CT. Defendant RJG Holdings of Florida, Inc. is a corporation organized and existing under the laws of Florida. Defendant AWA International, Inc. is a corporation organized and existing under the laws of Florida with its principal place of business in Delray Beach, FL. In October 2000, Defendant AWA assumed the operations of Defendant 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. The introduction of the revolver was successful and by the end of the year, the United States Army adopted it as its standard issue. It is the appearance of this revolver, which Plaintiffs argue remains basically unchanged in its present day instantiation, that Plaintiffs claim as their trade dress.

The revolver was continuously manufactured until 1941 when production of the revolver was halted. Plaintiffs claim this was necessary in order to dedicate their production facilities to manufacturing arms for World War II. Defendants contend production stopped because the revolvers were no longer selling well. Nonetheless, after approximately 14 years of non-production, manufacture of the Peacemaker resumed in late 1955. The revolvers produced after 1955 are typically referred to as Second Generation Peacemakers.

Production was again continuous until 1976 when the revolver was retooled once more. Revolvers produced after this retooling are referred to as Third Generation Peacemakers, which are produced to this day. Plaintiffs contend that the differences between the three generations of revolvers are negligible and that the overall appearance and trade dress remain virtually unchanged. Defendants allege there have been significant changes and that the trade dress is not the same. It is agreed, however, that since 1873 virtually all of Plaintiffs' revolvers have had the name address, either in full or abbreviated, — "Colt's Patent Firearms Manufacturing Company, Hartford Connecticut USA" — stamped as a rollmark on the barrel of the revolver. Moreover, since 1956 Plaintiffs have been competing with various manufacturers of replicas of the Peacemaker revolver.

Defendant RJG formerly known as American Western Arms was incorporated for the purpose of manufacturing replica Peacemaker revolvers. Its president, Robert Gangi, sought to manufacture the most accurate replicas of First Generation Peacemakers on the market. Mr. Gangi decided to offer two models for sale which were based on the Armi San Marco revolver — another replica. One of the revolvers offered was the Peacekeeper revolver which is an extremely accurate replica of the First Generation Model P. The other revolver is closer to the Armi San Marco revolver and known as the Longhorn. Defendants allege that Mr. Gangi made numerous attempts to obtain a licensing agreement from Plaintiffs. After those efforts failed, the first sales of Mr. Gangi's replicas were made in June of 2000. Shortly thereafter, the assets of his company were sold to AWA International. 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 1985 through 1988. It was not a western style revolver and marketed towards law enforcement and home defense. Plaintiffs contend that they still provide repair services for the revolver.

"The Rampant Colt" is a registered trademark of Plaintiffs'. It is a picture of a horse rearing up with a spear between its forelegs and another in its mouth. It often appears on the grips of Plaintiffs' revolvers inside an oval. Plaintiffs contend that they have been using some form of the Rampant Colt logo since 1836 and that it has appeared on the grips of Plaintiffs' revolvers since approximately 1897. The Rampant Colt also appears in connection with Plaintiffs' other firearms and related accessories.

Plaintiffs' Armsmear Crest is the family crest of Colt's founder Samuel Colt. It pictures a horse similar in appearance to the horse visible in the Rampant Colt mark.

Defendants place a logo of a horse on their revolver grips. This logo involves a running horse, as opposed to rearing up, and does not picture any spears, but is inside an oval and appears in a similar location on Defendants' revolvers. Defendants contend that the logo was designed without reference to Plaintiffs'.

II. STANDARD OF REVIEW:

A party moving for summary judgment must establish that there are no genuine issues of material fact in dispute and that it is entitled to judgment 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 summary judgment bears the burden of going beyond the pleadings, and `designating specific 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 summary judgment against a party who will bear the ultimate burden of proof at trial, the movant's burden of establishing that there is no genuine issue of material fact in dispute will be satisfied if he or she can point to an absence of evidence to support an essential element of the nonmoving party's claim." Legg v. DellaVolpe, 228 F.Supp.2d 51, 56 (D.Conn.2002), citing Celotex, 477 U.S. at 322, 106 S.Ct. 2548. In determining whether a genuine issue has been raised, all ambiguities are resolved and all reasonable inferences are drawn against 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.19...