Famous kids’ toy manufacturer Lego sent a cease and desist letter to gun company Culper Precision regarding its sale and marketing of Glock handguns. Culper Precision offered a Glock handgun with an aftermarket kit to transform the outside of the firearm with Lego bricks (a little tidbit, the plural of Lego is not Legos). Aside from what famous gun manufacturer Glock might have to say about its brand being used by Culper as a not so playful “Block19”, it was not a wise decision for Culper to adorn the outside of a Glock handgun with Lego bricks. The use of the Lego bricks makes the handgun look like a child’s toy and associates a kids toy company with firearms.
The term Lego derives from the Danish words that mean “play well”. Lego is a Danish company. I do not think Culper was playing well with others with this ill-conceived Lego kit. The term Lego is a famous brand for Lego bricks commonly found in homes across the world, particularly when you are walking barefoot in your home.
Lego likely has a claim of dilution by tarnishing under the Federal Trademark Dilution Act (FTDA) and/or the more commonly known Lanham Act. Dilution of a brand occurs when someone uses a famous mark (brand) that blurs or tarnishes the mark. Dilution differs from a typical trademark infringement claim as dilution does not hinge upon whether consumers would be confused. Traditional trademark law was designed to protect consumers from confusion. While dilution is designed to protect the famous brand from being diminished by properly identifying and distinguishing its good or services.
The FTDA in 2006 clarified that a mark is “famous” if it is widely recognized by the general consuming public as a designation of the source of the goods or services of the mark’s owner, and it allows the court to consider all relevant factors when determining whether a mark is famous, including: (1) the duration, extent, and geographic reach of advertising and publicity of the mark; (2) the amount, volume, and geographic extent of sales of goods or services offered under the mark; (3) the extent of actual recognition of the mark; and (4) whether the mark was registered on the principal register.
Here, Lego is clearly a famous mark. The false association of its Lego bricks on firearms would tarnish its brand and reputation for kid’s toys (including theme parks). Culper would be best served looking at the age difficulty on the Lego box before it tries to connect Legos with firearms.
For more information about dilution or other Intellectual Property issues, please contact Greg M. Popowitz, Esq.
213 East Sheridan Street, Suite 3
Dania Beach, Florida 33004