November 13, 2019
The U.S. District Court, Southern District of New York, has denied the motion by Command Arms Accessories, LLC and CAA Industries, Ltd., dba CAA Israel, for an injunction against ME Technology Inc. for trademark and patent infringement (case 1:19-cv-06981-LLS). ME Technology, dba CAA USA, had been the exclusive U.S. importer and distributor of CAA Industries’ firearms accessories products from 2004 to 2018.
In the opinion dated October 31, 2019, by Justice Louis L. Stanton, the court determined that CAA Industries/CAA Israel “lacks the support sufficient to raise a litigable issue” regarding the trademark infringement. The registration of the trademark in dispute had been cancelled in 2014, and both parties admit that it is an abandoned mark. The two companies had been working together to sell micro conversion kits in the U.S. market and had jointly developed the logo, trademark and website, WWW.CAAGEARUP.COM, all of which were used primarily by CAA USA.
Although CAA Israel claimed common-law trademark rights, the judge found that the actions of CAA USA (ME Technology) – namely its successful marketing efforts – did more than just move the goods in trade, but gave them the benefit of the distributor’s reputation, name or business style, a determining factor in preempting a manufacturer’s claim to common-law ownership of trademarks. The fact that CAA USA was reinstated as the exclusive seller of a third party’s stabilizing arm brace (SB Tactical), while CAA Israel’s license to sell that brace was revoked, further substantiated the claim that CAA USA’s reputation benefitted the products.
Both of these factors led to the court’s finding, “CAA Israel unlikely to succeed on the merits of its claims to ownership of the trademarks and trade dress.”
After reviewing the CAA Israel patent claims regarding construction of the slide pull device and comparing them to photographs of the MCK conversion kit from CAA USA, the court determined that CAA Israel had not sufficiently established a right to a preliminary injunction on its claim that CAA USA’s MCK Conversion Kit was an infringement on the patent on its own Micro RONI.
According to Mikey Hartman, CEO of CAA USA, the split between the parties occurred when one of CAA Israel’s minority shareholders began infringing on a patent held by SB Tactical, as well as violating MAP prices on its Micro RONI, which was being sold through a third party. “Given these unlawful actions, we chose to break from exclusively distributing CAA Israel’s RONI conversion kits and design and manufacture our own conversion kit, the MCK,” says Hartman. “The MCK, which is manufactured 100% in the United States, is the next-generation Micro Conversion Kit that is easy to assemble and compatible with the most popular handguns in America. We are so proud and grateful for the way the MCK has been embraced by the U.S. and international markets, it’s by far surpassed the older Micro Roni version.”
“The CAA USA MCK, while filling the same purpose of stabilizing the pistol for one-handed firing and increased shooting performance, is a vast improvement from previous generations of the Micro RONI Stabilizer,” says Hartman. “Its innovative forward grip, which is patent-pending, allows for incredible stability with one-of-a-kind ergonomics.” The company reports other differences as well, such as an optional spare magazine holder on the MCK and the availability of units for additional pistol models, including the Glock 20/21 and the S&W M&P Gen 1, Gen 2, Sig Sauer P320, and now the XD models from Springfield Armory.
In the court order, Judge Stanton asserted that, “On the whole, the frailty of Plaintiff’s claims of ownership of the rights involved and patent infringement does not support a finding of likelihood of their success on the merits sufficient to justify the entry of a preliminary injunction in their favor.”
In a related matter, the judge also granted ME Technology/ CAA USA’s motion to transfer the case to Florida, where it maintains all operations.
“CAA USA is glad to have the decision in our favor and appreciates the ongoing support of our vendors and distributors, now that this frivolous attempt by a minority shareholder of CAA Israel has been put to rest. We are very pleased that the truth was seen by the court,” says Hartman. “We are especially thankful for the vote of confidence from SB Tactical, who has signed an exclusive licensing agreement with CAA USA for use of its patented stabilizing brace exclusively on our products. Our companies’ shared commitment to providing the utmost in quality and service to our end customers make this agreement a natural fit.”
Alex Bosco, owner of SB Tactical, supports Hartman’s statement, adding that, “We would like to inform our U.S. distributors and dealers that CAA USA is the only manufacturer of MCK, Micro Roni and Roni Stabilizers authorized to produce handgun conversion kits with the SB Tactical patented Stabilizing Brace technology.” Bosco further requested that any counterfeit or unauthorized use of Stabilizing Braces in handgun conversion kits manufactured, sold or marketed by companies other than CAA USA be reported to SB Tactical.
“We look forward to continuing to work with our dealer partners on the MCK and our other accessory product lines,” declares Hartman.
CAA USA is a designer, developer, and distributor of modern tactical accessories, optics, and handgun conversion kits for the U.S. and international law enforcement and firearms enthusiasts. CAA USA’s advanced conversion kit, the MCK/Micro Conversion Kit is available in models for GLOCK, SIG Sauer, and Smith & Wesson, and soon will be available for Springfield, H&K and CZ pistols as well. More information on the company and its products is available at www.caagearup.com.