author: COOGLER, District Judge:

text:
    FN HERSTAL SA, Plaintiff-Counter Defendant-Appellee, v. CLYDE ARMORY INC., Defendant-Counter Claimant-Appellant.
    No. 15-14040
    United States Court of Appeals, Eleventh Circuit.
    (September 27, 2016)

      Charles H. Hooker, III, Jennifer Fair-bairn Deal, Kilpatrick Townsend & Stockton, LLP, William Scott Creasman, Jeffrey R. Kuester, Taylor English Duma, LLP, Atlanta, GA, Burton S. Ehrlich, John P. Luther, Boris Umansky, Ladas & Parry, Chicago, IL, for Plaintiff-Counter Defendant-Appellee.
    Glenn Dean Bellamy, Paul J. Linden, Wood Herron & Evans, LLP, Cincinnati, OH, Michael C. Daniel, Prior Daniel & Wiltshire, LLC, Athens, GA, for Defendant-Counter Claimant-Appellant.
    Before MARTIN and JORDAN, Circuit Judges, and COOGLER, District Judge.

       The Honorable L. Scott Coogler, United States District Judge for the Northern District of Alabama, sitting by designation.

   COOGLER, District Judge:

This trademark infringement action arises out of the parties’ use of the marks “SCAR” and “SCAR-Stock” in the firearms industry. Appellant Clyde Armory Inc. (“Clyde Armory”) appeals the district court’s partial grant of summary judgment in favor of Appellee FN Herstal SA (“FN”), its grant of FN’s motion to strike Clyde Armory’s jury demand, its denial of Clyde Armory’s motion to amend the proposed pretrial order, and its entry of judgment against Clyde Armory following a bench trial. After careful review of the record and briefs of the parties, and having the benefit of oral argument, we affirm the district court on all issues raised on appeal.

I. BACKGROUND

A. Facts

1. FN’s SCAR Mark

In January 2004, the United States Special Operations Command (“USSOCOM”) issued a solicitation requesting bids from firearms manufacturers to design and manufacture a new fully automatic assault-rifle system for various units of the United States military, including Navy SEALs, Army Rangers, and Green Berets. The solicitation and other documents referred to the rifle as the “Special Operations Forces Combat Assault Rifle,” abbreviated with the acronym SCAR. However, the U.S. military did not use SCAR as a trademark or otherwise claim any rights in the name SCAR. The solicitation generated significant publicity and media coverage in the firearms community, as it was the first open competition for a new military rifle since the M16 trials held in the 1960s.

FN is a firearms and weapons manufacturer headquartered in Belgium. In 2004, FN and other firearm manufacturers, including Colt Defense LLC and Cobb Manufacturing, Inc., submitted prototypes in response to USSOCOM’s solicitation. While not required to do so, FN chose to label its submission with the SCAR mark, placing the mark above the firearm’s trigger. FN branded its rifles as such to draw on the double entendre from the military’s use of the term and the everyday meaning of “scar” as a mark left by the healing of injured tissue. For instance, FN’s brochures and other promotional materials drew on the ordinary meaning of “scar” through slogans like “BATTLE SCARS.”

On November 5, 2004, FN won the competition, and USSOCOM awarded it a ten-year contract, placing a large initial order for SCAR firearms totaling over $634,000. From that point forward, FN regularly shipped SCAR-branded rifles to the U.S. military for use by special forces. By November 2007, FN ha(i sold over $11 million in SCAR rifles and accessories to the military pursuant to the USSOCOM contract.

The media, law enforcement, and civilian firearms consumers closely followed the USSOCOM competition and FN’s development of the SCAR rifle. In the years 2004 to 2006, journalists regularly sought to examine FN’s SCAR rifles, and at least one article per month covered FN’s development and distribution of the SCAR rifle in publications such as Small Arms Review, National Defense, Army Times, and Guns and Ammo. -As the district court found, an expectation exists in the firearms market that guns developed for the military will subsequently be offered to law enforcement and civilians. As a result, FN received many inquiries concerning when FN’s SCAR rifles would be available for general consumption.

On February 22, 2005, FN began promoting its SCAR rifle to law enforcement and civilians, though it did not yet have a semi-automatic version of the weapon available for purchase by civilian consumers. Indeed, FN dedicated one-fourth of its advertising budget to promote the SCAR rifle to the firearms market. Throughout 2005 and,2006, FN showcased its military SCAR rifle at hundreds of trade shows, including one of the largest firearms shows in the world, the Shooting, Hunting, and Outdoor Trade Show (“SHOT Show”), as well as National Rifle Association shows, the National Defense Industrial Association Small Arms, forum, the Association of the United States Army show, International Chiefs of Police shows, the National Sheriff Show, the Mock Prison Riot, the SWAT Round Up, the Police and Security Expo, and others. At these shows, FN routinely told attendees that it intended to introduce a semi-automatic version within two years. FN also distributed hats, T-shirts, key chains, brochures, flyers, and other promotional materials with the SCAR mark. Public interest in the rifle was high; for example, at the February 2006 SHOT Show held in Las Vegas, Nevada, hundreds of people lined up at FN’s ■booth to see FN’s SCAR rifle, and FN had to dedicate three employees to answering attendees’ nonstop questions about its weapon. According to Bucky Mills, the Senior Director of Law Enforcement Sales and Training at FN, FN’s SCAR rifle was “big news” and was “the number one talked about firearm at the whole SHOT Show in 2006.” The fact that ninety percent of SHOT Show attendees are not affiliated with the U.S. military but are instead comprised of law enforcement personnel, distributors and retailers of firearms, and civilian consumers, speaks to the excitement among civilians about the prospect that FN would be introducing a semi-automatic SCAR rifle. In March 2006, FN issued a press release entitled, “The Making of the 21st Century Assault Rifle: SCAR SOF Combat Assault Rifle,” which detailed the ongoing development of its SCAR rifle for USSOCOM. The press release also announced that the semi-automatic version of the SCAR “[would] potentially be available in the next two years.”

FN was not able to release the civilian version of the SCAR rifle until November 2008 because, according to the testimony of Frank Spaniel (“Spaniel”), the Assistant Vice President of Research and Development at FN, it took several years to test the prototypes in various environments, make modifications that would prevent a civilian from converting it into a fully automatic weapon, and ensure that its factories could produce increasing quantities of the weapons while maintaining quality. FN also had to seek government approval from the Bureau of Alcohol, Tobacco, Firearms and Explosives (the “ATF”) to sell the semi-automatic ■ SCAR to the wider commercial market, which took months. Finally, FN was contractually obligated to fill military orders before satisfying civilian demand for the weapon. However, the pent-up demand from 2004 to 2008 resulted in FN selling over $100 million worth of SCAR firearms after receiving ATF approval.

To enforce its rights in the SCAR mark, FN filed three trademark applications with the United States Patent and Trademark Office (“USPTO”). The first was for the use of SCAR on firearms and related items, which at the point- of the district court proceedings was still pending before the USPTO. The second was for SCAR (and Design) for use in connection with firearms and related items, which indicated a date of first use of November 1, 2008. The USPTO registered the SCAR and Design mark in June 2010. The third was for SCAR for use in connection with games, toy replicas of weapons, and other related items, which was registered by the USP-TO in February 2012.

2. Clyde Armory’s SCAR-Stock Mark

Clyde Armory is a firearms retailer located in Georgia owned,by Andrew Clyde (“Clyde”). Clyde has been in the firearms business since 1991. He has long been familiar with FN, having sold FN products since 2002. He was also an FN distributor from approximately 2006 to 2011.

In 2005, Clyde contacted Sage International, Ltd. (“Sage”) President John Klein (“Klein”) about manufacturing a replacement stock for certain rifles made by Sturm Ruger & Co., including the Mini-14, Mini-30, and AC-556. At the February 2006 SHOT Show, the same show in which long lines of attendees waited to see FN’s SCAR rifle, the two met and planned the specific configuration for this replacement stock.

In April 2006, Clyde Armory selected the name SCAR-Stock or SCAR-CQB-Stock in connection with -its replacement stocks. Clyde Armory claims that its use of the term SCAR is an acronym for “Sage Clyde Armory Rifle” stock. However, Klein had no recollection of this. At the time Clyde Armory adopted the SCAR-Stock mark, Clyde knew about the USSO-COM solicitation to create a combat rifle system. Clyde further knew that the rifle was abbreviated as the SCAR, and that USSOCOM had awarded FN the development contract to produce it, as he had seen an article in Small Arms Review announcing that FN won the bid to create the SCAR for USSOCOM.

Joshua Smith (“Smith”), Clyde Armory’s former Chief Operations Officer, testified that FN’s SCAR rifle was well known in the firearms world. He stated that when Clyde disclosed his plan to use SCAR-Stock in association with its stocks, Smith expressed concern that the SCAR “name was already taken ...' [b]y FN.” Smith testified that Clyde Armory’s intent' was to “take advantage of marketing of the SCAR being a popular name already” and to “take advantage of the SCAR product name being on the market.” Although Clyde testified that such a discussion never occurred, and although Smith left Clyde Armory in 2009 under bad circumstances, the district court found Smith’s testimony credible in light of Clyde’s admitted knowledge about FN’s SCAR rifles.

Throughout the spring and summer of 2006, Clyde Armory worked with Sage to finalize its replacement stock system, and it shipped its first SCAR-Stock product to a consumer on September 18, 2006. The stocks were engraved with the mark SCAR-CQB-Stock in the same font, color, and size as the SCAR mark on FN’s rifles, using a laser just as FN used. Clyde Armory began promoting SCAR-Stock stocks through its website www. clydearmory.com, online advertising, print ads, and trade show displays. In early 2007, it began using the domain name ■www.scarstock.com, which channels Internet traffic to www.clydearmory.com. Through April 2015, Clyde Armory had sold 913 SCAR-Stock units, for a total gross revenue of approximately $450,000.

B. Procedural History

FN sent Clydé Armory a letter in February 2009, asserting senior rights in the SCAR mark and demanding that Clyde Armory cease and desist all use of its SCAR-Stock mark. Clyde' Armory responded that it had no knowledge of FN’s rights in the mark and requested documentation to support that claim. The following day Clyde Armory filed a trademark application for the SCAR mark with the USPTO for use on “gun stocks” and claiming a first date in commerce on September 14, 2006. Clyde Armory received a reply from FN stating that “the acronym SCAR in U.S. Government jargon does refer to the USSOCOM Program.” The letter went on to state, “[h]owever, in Commercial firearms use of the term SCAR has been registered by [FN] as a Trademark.” Clyde Armory then filed a Petition for Cancellation with the USPTO of FN’s trademark registration of SCAR (and Design) and an Opposition to FN’s trademark application for SCAR. The USPTO suspended those proceedings pending the outcome of this case.

In March 2012, FN filed an eight-count complaint against Clyde Armory for trademark infringement, unfair competition, and dilution in violation of the Lanham Act, 15 U.S.C. § 1051, et seq., as well as state law claims for unfair competition, deceptive trade practices, ■ and unjust -enrichment. FN demanded damages and Clyde Armory’s profits under § 1117(a) of the Lan-ham Act, as well as punitive damages and litigation . expenses including Attorney’s fees. FN also soughkto enjoin Clyde Armory from any further'use of the SCAR-Stock mark and sought an order requiring Clyde Armory to abandon its pending trademark application for the SCAR-Stock mark and dismiss its opposition and cancellation petitions with regard to FN’s trademark registrations and applications. Clyde Armory asserted affirmative defenses based on priority of its use of the SCAR-Stock mark and FN’s unlawful use of the SCAR mark. Clyde Armory also asserted' counterclaims for federal trademark infringement and requested declaratory relief in the form of cancellation of FN’s trademark registrations. Clyde Armory sought similar damages and injunc-tive relief. Both parties demanded a trial by jury.

Both parties submitted motions for summary judgment, in which they agreed that the success of all claims and counterclaims depended on the viability of each party’s federal trademark infringement claims. Both parties asserted that their mark is distinctive and that they were the first to usé it in commerce. The district court denied both motions, finding that genuine disputes of material fact existed regarding which party held priority of rights in its respective mark. However, with respect to Clyde Armory’s unlawful-use defense, the district court ruled that Clyde Armory could not proceed with it at trial, as the Eleventh Circuit had not adopted the defense, the undisputed facts showed that FN did not- engage in a per se violation of the regulations at issue, and even if a violation occurred, it was immaterial.

In preparing for trial, the parties jointly submitted a proposed' pretrial order. Although the proposed pretrial order referenced a jury trial, it also stated: “Neither party is seeking damages and the parties further agree that whichever party establishes its priority of rights will request to be entitled to the trademark registration(s) it has sought ... and seek a permanent injunction against the other party.” During the pretrial conference, Clyde Armory represented to the district court that it sought only injunctive relief, confirming that it was not pursuing damages, and agreed with the Court that a jury need not decide the case. One week after that pretrial conference, FN filed a motion to strike the parties’ jury demands, contending that all remaining claims were equitable and thus no right to a trial by jury existed. Clyde Armory opposed that motion and argued that FN had consented to a jury trial by both explicitly referencing the use of a jury in the proposed pretrial order and by failing to object to a trial by jury during the pretrial conference. The district court granted FN’s motion to strike, noting that when no right to a jury trial exists, a party may unilaterally withdraw its consent to a jury trial. The court further noted that Clyde Armory would suffer no prejudice because the parties still had ten days before the trial was scheduled to begin, and a bench trial would likely require less preparation than a jury trial.

After the district court issued its order striking the jury demands, Clyde Armory filed a motion to amend the proposed pretrial order so that it could reinstate its demand for FN’s profits under § 1117(a) of the Lanham Act, which it argued constituted legal relief entitling it to a jury trial. The district court denied the motion, ruling that Clyde Armory waived its right to seek profits through its repeated representations to the court that it would not seek them. In denying that motion, the district court also found that FN would be prejudiced if Clyde Armory reinstated its claim for profits a week before trial because FN had been given no opportunity to conduct discovery on that claim. The district court also noted that it was unsure if Clyde Armory’s proposed amendment would even revive Clyde Armory’s right to a jury trial, noting a split of authority on the issue. •

The litigation thus proceeded to a three-day bench trial, in which six witnesses testified, including three FN employees, a Clyde Armory employee, Clyde Armory’s former Chief Operating Officer Smith, and its owner, Clyde. The district court issued an order on August 20, 2015, in which it found that FN developed protectable trademark rights in the SCAR mark before Clyde Armory began using the SCAR-Stock mark in September1 2006; Clyde Armory intentionally copied FN’s SCAR mark in bad faith; and FN thus prevailed on its federal trademark infringement and' unfair competition claims and related state law claims. The court ordered Clyde Armory to cease using the SCAR-Stock mark, abandon its trademark applications, assign domain names including the word SCAR to FN, dismiss its petition to cancel FN’s federal trademark registrations for SCAR, and destroy materials featuring the SCAR-Stock mark.

Clyde Armory timely appealed the district court’s partial summary judgment order, the order granting FN’s motion to strike the jury demand, the order denying Clyde Armory’s motion to amend the proposed pretrial order, and the order granting judgment as to all claims in favor of FN. We have jurisdiction pursuant to 28 U.S.C. § 1291.

II. DISCUSSION

A. Standards of Review

“After a bench trial, we review the district court’s conclusions of law de novo and the district court’s factual findings for clear error,” Proudfoot Consulting Co, v. Gordon, 576 F,3d 1223, 1230 (11th Cir. 2009). In an action tried without a jury, “[findings of fact, whether based on oral or other evidence, must not be set aside unless clearly erroneous, and the reviewing court must give due regard to the trial court’s opportunity to judge the witnesses’ credibility.” Fed. R. Civ. P. 52(a)(6). The district court’s summary judgment ruling on Clyde Armory’s unlawful-use defense is subject to de novo review. Planetary Motion, Inc, v. Techsplosion, Inc„ 261 F.3d 1183, 1193 (11th Cir. 2001). The district court’s grant of a motion to strike a jury demand is reviewed in “plenary fashion,” or de novo. Stewart v. KHD Deutz of Am, Corp., 75 F,3d 1522, 1525 (11th Cir. 1996). The district court’s decision on a motion to amend the pretrial order is reviewed for an abuse of discretion. Morro v. City of Birmingham, 117 F.3d 508, 513, 515-16 (11th. Cir. 1997). Reversal under this standard is proper only when the court “so clearly abused its discretion that its action could be deemed arbitrary.” Id. at 513 (quoting Hodges v. United States, 597 F.2d 1014, 1018 (5th Cir. 1979)).

B. The District Court’s Judgment in Favor of FN Following Trial

Clyde Armory contends that the district court committed three errors in its post-trial order: (1) finding that FN used SCAR as a mark in commerce before Clyde Armory began using SCAR-Stock; (2) finding that FN’s SCAR mark acquired distinctiveness through secondary meaning before Clyde Armory began using SCAR-Stock; and (3) finding that Clyde Armory used the SCAR-Stock mark in bad faith to take advantage of the popularity of FN’s SCAR mark, thus divesting it of any rights in the mark that it otherwise might have obtained.

A trademark is “any word, name, symbol, or device, or any combination thereof [used] to identify and distinguish [a producer’s] goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” 15 U.S.C. § 1127. To prevail on a trademark infringement claim under the Lanham Act, a party must prove that (1) it owns a valid and protectable mark, and (2) the opposing party’s use of an identical or similar mark is likely to cause confusion. Gift of Learning Found., Inc. v. TGC, Inc., No. 01-08069-CV-DTKH, 2001 WL 34718642, 2001 U.S. Dist. LEXIS 25301 (S.D. Fla. 2001), aff'd, 329 F.3d 792, 797 (11th Cir. 2003) (per curiam). The parties agreed before trial that simultaneous use of their marks would likely confuse the purchasing public. Therefore, the only issue before the district court was whether either party owned a protectable mark. In general, “[a]ctual substantive rights to a trademark arise based on its use in commerce and its distinctiveness.” Knights Armament Co. v. Optical Sys, Tech., Inc., 654 F.3d 1179, 1188 (11th Cir. 2011).

1. The District Court’s Finding that FN Used the SCAR Mark in Commerce before Clyde Armory Used the SCAR-Stock Mark

A trademark on goods is used in commerce when “it is placed in any manner on the goods or their containers or the displays associated therewith [and] the goods are sold or transported in commerce,” 15 U.S.C. § 1127. “Rights in a trademark are determined by the date of the mark’s first use in commerce. The party who first uses a mark in commerce is said to have priority over other users.” Hana Fin., Inc. v. Hana Bank, — U.S. -, 135 S.Ct. 907, 909, 190 L.Ed.2d 800 (2015). We review the district court’s factual findings underlying its priority determination for clear error. See Sheila’s Shine Prods., Inc. v. Sheila Shine, Inc., 486 F.2d 114, 122 (5th Cir. 1973) (reviewing for clear error the district court’s factual determination that the plaintiffs business selling metal and wood polish was sufficiently established so as to create the first use in commerce of the mark associated with it, “Sheila’s Shine”); see also Martahus v. Video Duplication Servs., Inc., 3 F.3d 417, 421 (Fed. Cir. 1993) (“We review any factual findings underlying a priority determination for clear error.”).

This Court uses a two-part test to determine whether a party has demonstrated prior use of a mark in commerce:

[E]vidence showing, first, adoption, and, second, use in a way sufficiently public to identify or distinguish the marked goods ip an appropriate segment of the public mind as those of the adopter of the mark, is competent to establish ownership, even without evidence of actual sales.

Planetary Motion, 261 F.3d at 1195 (quoting New Eng. Duplicating Co. v. Mendes, 190 F.2d 415, 418 (1st Cir. 1951)) (footnotes omitted). The typical evidence of use in commerce is the sale of goods bearing the mark. See id. at 1194-95; 15 U.S.C. § 1127. However, in the absence of actual sales, advertising, publicity, and solicitation can sufficiently meet the public identification prong of the test. See Planetary Motion, 261 F.3d at 1195-96. The district court and the parties use the term “analogous use” to describe these promotional efforts, which is derived from other courts’ analysis of this issue. See, e.g., Am. Express Co. v. Goetz, 515 F.3d 156, 161 (2d Cir. 2008) (“[T]he analogous use doctrine, where it applies, eases the technical requirements for trademarks and services marks in favor of a competing claimant who asserts priority on the basis of earlier analogous use of the mark.”); T.A.B. Sys. v. Pactel Teletrac, 77 F.3d 1372,1375 (Fed. Cir. 1996) (analogous use refers to pre-sale promotional efforts such as “advertising brochures, catalogs, newspaper ads, and articles in newspapers and trade publications”). However, “activities claimed to constitute analogous use must have substantial impact on the purchasing public.” T.A.B. Sys., 77 F.3d at 1376. “At the very least analogous use must be use that is open and notorious [or] of such a nature and extent that the mark has become popularized in the public mind so that the relevant segment of the public identifies the marked goods with the mark’s adopter.” Goetz, 515 F.3d at 161-62 (internal quotation marks and citations omitted). The promotional activities must also occur within a commercially reasonable period of time prior to actual use of the mark to be considered analogous use of the mark. See id. at 162.

Considerable evidence supports the district court’s factual finding that FN used the SCAR mark in commerce prior to Clyde Armory’s first sale of a replacement stock bearing the SCAR-Stock mark September 2006. On November 5, 2004, US-SOCOM entered into a ten-year contract with FN and ordered SCAR brand rifles in an amount totaling over $634,000. Thereafter, FN continuously sold and transported firearms bearing its SCAR mark from Belgium to USSOCOM in the United States for use by military special forces. By November 5, 2007, FN had sold over $11 million worth of SCAR firearms and accessories to the military pursuant to the US-SOCOM contract. All the while, FN received extensive media attention, which credited FN with winning the USSOCOM bid and tracked the development of FN’s SCAR weapon system for the military. Clyde Armory asserts that FN’s sales solely to one governmental entity should not constitute “use in commerce,” but these facts support the district court’s conclusion that FN’s sales to the military were nonetheless “sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind as those of [FN,] the adopter of the mark.” Planetary Motion, 261 F.3d at 1195.

Nor does the fact that FN did not have a semi-automatic SCAR weapon available for law enforcement and civilian purchase until late 2008 change our analysis because,' in addition to military sales, FN established prior use through analogous use: that is, extensive pre-sale advertising and promotional activities for its semi-automatic SCAR rifle dating back to 2005. Almost immediately after it began shipping and selling to USSOCOM, FN started marketing SCAR brand rifles to law enforcement and civilians, dedicating one-fourth of its advertising budget to showcase its SCAR rifles at hundreds of trade shows and events in 2005 and 2006, including the February 2006 SHOT Show where its SCAR rifle was “the number one talked about firearm,” further promoting the SCAR rifles with accompanying hats, T-shirts, keychains, brochures, and other promotional materials all bearing the SCAR mark, and issuing a press release in March 2006 detailing its intent to develop the semi-automatic version within two years. Although actual sales were not made until late 2008, these “open and notorious” promotional activities in 2005 and 2006 sufficiently created an association in the relevant portion of the public’s mind so that they identified the SCAR rifles with FN. See Goetz, 515 F.3d at 161-62; Planetary Motion, 261 F.3d at 1195-96.

We also note that although Clyde Armory states that it is relevant that FN listed a first use date of November 1, 2008, on one of its trademark applications, its USPTO applications and registrations are not relevant to the foregoing analysis. Neither federal nor Georgia law requires that a party assert a trademark registration before bringing Lanham Act or state law claims. See 15 U.S.C. § 1125(a); Ga. Code Ann. §§ 23-2-55, 10-1-373; Bauer Lamp Co. v. Shaffer, 941 F.2d 1165, 1171 (11th Cir. 1991) (“Trademark protection accrues with use, while copyright protection begins with registration.”). FN thus appropriately relied on its common law rights in the SCAR mark derived through actual use dating back to 2004. Nor is Clyde Armory’s suggestion well-taken that because USSOCOM invented the term SCAR, FN could not develop trademark rights. A leading treatise on trademarks states, “Unlike patent law, rights in trademarks are not gained through discovery or invention of the mark, but only through actual usage.” J. Thomas McCarthy, 2 McCarthy on Trademarks & Unfair Competition § 16:11 (4th ed. 2015) (hereinafter, “McCarthy”); see Blue Bell, Inc. v. Farah Mfg. Co., 508 F.2d 1260, 1265 (5th Cir. 1975) (“conception of the mark” does not establish trademark rights at' common law).

In sum, FN’s sales of SCAR rifles to USSOCOM alone are sufficient to establish FN’s priority of use as early as 2004. In addition to this use, FN’s marketing efforts establish priority in 2005 and 2006 because they constitute “use analogous to trademark use” and were followed by sales to law enforcement and civilians within a commercially reasonable period of time.

The foregoing determination is not the end of the inquiry, however, because

a business does not automatically obtain rights in a mark by using it. A business will obtain rights in a mark upon first use only if the mark is “inherently distinctive.” If the mark is not inherently distinctive, a business may obtain rights in the mark when it attains a secondary meaning.

Investacorp, Inc. v. Arabian Inv. Banking Corp. (Investcorp) E.C., 931 F.2d 1519, 1522 (11th Cir. 1991) (footnotes omitted); see also Knights Armament, 654 F.3d at 1189 (“The party seeking trademark protection must demonstrate that its mark acquired secondary meaning before the alleged infringer first- began using the mark.” (emphasis in original)). The district court found not only that FN’s mark acquired distinctiveness through secondary meaning but that it did so at some point prior to Clyde Armory’s first sale of SCAR-Stock stocks in September 2006. While Clyde Armory takes issue with the district court’s failure to pinpoint an exact date upon which FN’s mark attained distinctiveness, all that matters is that it attained such status before Clyde Armory began using SCAR-Stock. For the reasons stated in the next section, we find that the district court did not clearly err in determining that FN’s SCAR mark is distinctive and that it acquired that quality prior to September 2006.

2. The District Court’s Finding that FN’s SCAR Mark is Distinctive (and that it Acquired that Status Prior to Clyde Armory’s First Use of the SCAR-Stock Mark)

A mark is distinctive when it “serve[s] the purpose of identifying the source of the goods or services.” Knights Armament, 654 F.3d at 1188. A mark can be distinctive in two ways: “if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769, 112 S.Ct. 2753, 2758, 120 L.Ed.2d 615 (1992) (emphasis deleted). This Court has identified four categories of distinctiveness, listed in descending order of strength: (1) fanciful or arbitrary; (2) suggestive; (3) descriptive; and (4) generic. Knights Armament, 654 F.3d at 1188. While arbitrary, fanciful, and suggestive marks are considered inherently distinctive and, therefore, are protectable without a showing of secondary meaning, see Coach House Rest, Inc. v. Coach & Six Restaurants, Inc., 934 F.2d 1551, 1560 (11th Cir. 1991), a descriptive mark is not inherently distinctive, and “receives protection only if it acquires secondary meaning,” Knights Armament, 654 F.3d at 1188; see also Welding Seros., Inc. v. For-man, 509 F.3d 1351, 1357 (11th Cir. 2007) (“Some marks are inherently distinctive; some marks, though not inherently distinctive, acquire distinctiveness by becoming associated in the minds of the public with the products or services offered by the proprietor of the mark_”). A descriptive mark has acquired distinctiveness through secondary meaning “when the primary significance of the [mark] in the minds of the [consuming] public is not the product but the producer.” Welding Seros., 509 F.3d at 1358 (internal quotation marks omitted). Four factors determine whether a mark has acquired secondary meaning:

(1). the length and manner of its use; (2) the nature and extent of advertising and promotion; (3) the efforts made by the plaintiff to promote a conscious connection in the public’s mind between the name and the plaintiffs product or business; and (4) the extent to which the public actually identifies the name with the plaintiffs product or venture.

Conagra, Inc. v. Singleton, 743 F.2d 1508, 1513 (11th Cir. 1984).

Clyde Armory contends that the district court misapplied all four of these factors in concluding that FN’s SCAR mark was descriptive, but had nonetheless acquired secondary meaning. Distinctiveness and “[t]he existence of secondary meaning” are “question[s] of fact,” and we thus review the district court’s findings on these issues for clear error. Knights Armament, 654 F.3d at 1187-88.

i. the length and manner of use

Clyde Armory contends that, contrary to the finding of the district court, the nearly two-year period in which FN used the SCAR mark in commerce before Clyde Armory introduced the SCAR-Stock mark in September 2006 was not a sufficient amount of time for FN’s mark to acquire distinctiveness through secondary meaning. Relying on § 1052(f) of the Lanham Act, Clyde Armory suggests that a mark cannot acquire distinctiveness in fewer than five years. However, that provision merely affords a presumption of secondary meaning to a party seeking registration of a descriptive term when it can show “substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made.” See 15 U.S.C. -§ 1052(f). Meanwhile, McCarthy describes the five-year duration of use expressed in § 1052(f) as a “purely arbitrary measure” and states that “[t]here is no fixed rule as to the length of time a symbol must be in use before it can achieve secondary meaning.” 2 McCarthy § 15:54. Additionally, the Second Circuit has noted that the time necessary to acquire secondary meaning “may be quite short,” Noma Lites, Inc. v. Lawn Spray, Inc., 222 F.2d 716, 717 (2d Cir. 1955), and has affirmed a finding of secondary meaning based on only an eleven-month period of use, Maternally Yours v. Your Maternity Shop, 234 F,2d 538, 544 (2d Cir. 1956).

Considerable evidence supports the district court’s finding that the SCAR mark acquired secondary meaning at some point during the nearly two-year period before Clyde Armory began using SCAR-Stock in September 2006. During that time, FN sold millions of dollars of SCAR rifles to the U.S. military through the US-SOCOM contract, and because the USSO-COM solicitation garnered wide interest, FN received extensive media attention as the winner of the bid. See Maternally Yours, 234 F.2d at 544 (noting that the fact that the plaintiffs “marked success ... produced widespread and unusual recognition of its name and operation in the national press by the time defendant entered the field” supported the existence of secondary meaning in a short period of time). FN also spent a substantial amount independently promoting its SCAR rifles at hundreds of trade shows, such as the February 2006 SHOT Show where civilian consumers flocked to FN’s booth to see the rifle. The evidence supports the district court’s conclusion that the public associated the SCAR brand with FN at some point during those two years.

Clyde Armory also argues that FN’s use of the SCAR mark prior to September 2006 was not “substantially exclusive” as required under § 1052(f) because the designation SCAR originated with and was simultaneously used by USSOCOM, and because other manufacturers produced prototype weapons bearing the SCAR mark during the USSOCOM competition. However, as noted by the district court, after FN won the competition, it was the only manufacturer actively producing and selling a USSOCOM combat assault rifle described as a SCAR. No other manufacturer’s rifles were ever produced or sold, and neither the U.S. military nor any other third party attempted to use SCAR as a trademark in order to sell firearms products. See Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535, 1545 n.27 (11th Cir. 1985) (noting that unauthorized third-party uses are only relevant where there is evidence they “significantly diminish the public’s perception that the mark identifies items connected with the owner of the mark”).

Finally, Clyde Armory contends that the district court reduced the “length and manner of use” to length alone by failing to find that FN used SCAR merely as a description of the model of firearm it sold instead of as an identifier of the FN SCAR rifle brand. However, the district court’s findings of fact previously described show that FN created an association in consumers’ minds between the word SCAR and its specific brand of rifle, and thus FN used SCAR as a mark. The district court did not clearly err in finding that FN satisfied the first factor of the test for distinctiveness through secondary meaning.

ii. the nature and extent of advertising and promotion

Clyde Armory contends that, while FN’s advertising efforts may have been extensive, they failed to actually connect the SCAR mark with FN’s rifles. This Court’s predecessor has stated that “the question is not the extent of the promotional efforts, but their effectiveness in altering the meaning of [the word] to the consuming public.” Aloe Creme Labs., Inc. v. Milsan, Inc., 423 F.2d 845, 850 (5th Cir. 1970), cert, denied, 398 U.S. 928, 90 S.Ct. 1818, 26 L.Ed.2d 90 (1970). However, the same evidence described above belies the contention that FN did not create a connection between SCAR and its company and products through its advertising. The attention FN received after winning the USSOCOM contract increased public awareness of FN’s SCAR rifle. Then, FN began spending a substantial amount in 2005 and 2006 advertising its SCAR rifles and distributing SCAR brochures, flyers, T-shirts, hats, and other promotional items bearing the SCAR mark. The district court properly addressed the nature of FN’s advertising and publicity.

Hi. efforts made by the plaintiff to promote a conscious connection between the name and the plaintiffs product or business and the extent to which the public actually identifies the name with the plaintiffs product or venture

Clyde Armory’s arguments with respect to these factors are largely similar to its previous ones and fare no better. Clyde Armory contends that FN did not use SCAR as a trademark but rather as an abbreviation for “Special Operations Forces Combat Assault Rifle.” We note that if Clyde Armory is contending that acronyms are not protectable as trademarks, it is incorrect. See, e.g., Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., .937 F.2d 1572, 1577 (Fed. Cir. 1991) (rejecting contention that “American Cinema Editors” did not have trademark rights in the acronym “ACE”). Moreover, FN used the SCAR mark on the rifles themselves and in other instances without the accompanying phrase “Special Operations Forces Combat Assault Rifle.” Next, Clyde Armory contends that the district court clearly erred in finding consumers actually identified SCAR with FN’s products. Smith, Clyde Armory’s own former Chief Operating Officer, testified that by 2006, SCAR was well-known and uniquely associated with FN; and that in discussing FN’s plans to’ use SCAR-Stock, he expressed concern that the SCAR “name was already taken .[b]y FN.” As such, the final two factors also support the existence of secondary meaning for the SCAR mark prior to September 2006, as does the district court’s finding that Clyde Armory intentionally copied the SCAR mark. 'See, e.g., Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 716 F.2d 854, 860 (11th Cir. 1983) (while proof of intentional copying is not dispositive, it is probative evidence of secondary meaning); 2 McCarthy § 15:38 (same). Considerable evidence in the record supports the finding that Clyde Armory adopted the mark to take advantage of the popularity of FN’s mark on the market. Clyde admitted that he was familiar with FN’s products and knew about the SCAR rifle and FN’s winning the bid when he adopted the SCAR-Stock mark for use in the same industry. Clyde Armory’s former Chief Operating Officer testified that Clyde adopted the SCAR-Stock mark in part to profit from the popularity of FN’s mark. The district court found his testimony credible considering Clyde’s own admission of knowledge of FN’s SCAR. Clyde Armory even laser-engraved its stocks with the mark SCAR-CQB-Stoek in the same font, color, and size as the SCAR mark on FN’s rifles. The district court did not clearly err in finding that FN’s SCAR mark acquired secondary meaning. As a result, we need not review the district court’s finding that Clyde Armory acted in bad faith, as that finding was merely an alternative reason that Clyde Armory did not prevail.

C. The District Court’s Partial Grant of Summary Judgment in Favor of FN on Clyde Armory’s “Unlawful Use” Defense

Clyde Armory argued at the summary judgment stage that FN cannot rely on its pre-September 2006 advertisements and promotional activities to show use of the SCAR mark because these activities violated federal regulations and thus cannot provide the basis for a protectable trademark interest in SCAR. The district court recognized the existence of what is known as the “unlawful-use doctrine” briefed by the parties but found Clyde Armory’s arguments based on the doctrine to be without merit. Clyde Armory now contends that the district court wrongly applied the- unlawful use doctrine and thus erred in barring Clyde Armory from pursuing it as a defense at trial.

The “unlawful use doctrine” appears almost exclusively in the administrative setting, originating in United States Trademark Trial and Appeal Board (“TTAB”) proceedings to oppose trademark applications or cancel registrations. See, e.g., In re Garden of Eatin’ Inc., 216 U.S.P.Q. 355, 357 (T.T.A.B. 1982), 1982 WL 52032, at *2. Since the TTAB interprets the “use in commerce” requirement to mean “lawful use,” see Clorox Co. v. Armour-Dial, Inc., 214 U.S.P.Q. 850, 851 (T.T.A.B. 1982), 1982 WL 50434, at *1, it has stated that “the sale or shipment of [a] product under [a] mark ha[s] to comply with all applicable laws and regulations” before a party may claim trademark protection for that mark, In re Pepcom Indus., Inc., 192 U.S.P.Q. 400, 401 (T.T.A.B. 1976), 1976 WL 21138, at *1. A use is unlawful if “the issue of compliance has previously been determined (with a finding of non-compliance) by a court or government agency having competent jurisdiction under the statute involved, or where there has been a per se violation of a statute regulating the sale of a party’s goods.” Kellogg Co. v. New Generation Foods, Inc., 6 U.S.P.Q.2d 2045, 2047 (T.T.A.B. 1988), 1988 WL 252503, at *3 (citing Sati-nine Societa in Nome Collettivo di S.A. e. M. Usellini v. P.A.B. Produits et Appar-eils de Beaute, 209 U.S.P.Q. 958 (T.T.A.B. 1981), 1981 WL 48126). The party asserting the defense must establish that it applies by clear and convincing evidence. Sa-tinine Societa, 209 U.S.P.Q. at 965, 1981 WL 48126, at *7. Not every violation, however, will be sufficient to justify denial of trademark protection based on unlawful use. There must be a nexus between the use of the mark and the violation, and the violation must be material. Gen. Mills Inc. v. Health Valley Foods, 24 U.S.P.Q.2d 1270, 1274 (T.T.A.B. 1992), 1992 WL 296518, at *4 (citing Satinine Societa, 209 U.S.P.Q. at 967 (Kera, M., concurring) 1981 WL 48126, at *10). To be material, the violation must be of “such gravity and significance that the usage must-be considered unlawful—so tainted that, as a matter of law, it could create no trademark rights.” Id., 1992 WL 296518, at *3.

This Court has not adopted the unlawful use doctrine and need not do so today because even if we were to adopt it, Clyde Armory has not submitted evidence sufficient to raise an issue of fact in this respect. Clyde Armory contends that FN’s use was unlawful because it violated a regulation called the United States Special Operations Command Federal Acquisition Regulation Supplement (“SOFAES”), which, among other things, prohibits contractors from disclosing unclassified information pertaining to contracts with' USSOCOM without prior authorization, see SOFAES § 5652.204-9003(a), and provides that the contractor acknowledges that 18 U.S.C. § 701 prohibits the use of the USSO-COM emblem or logo without authorization by USSOCOM, see SOFAES 5652.204-9003(e). Clyde Armory contends that FN violated SOFAES by associating itself with USSOCOM in its early promotional materials and advertisements for its SCAR rifle. However, the original contract between FN and USSOCOM did not even contain the language of SO-FAES, nor has Clyde Armory established that the regulation was in effect in 2006. Indeed, on May 14, 2010, USSOCOM notified FN that SOFARS § 5652.204-9003 provides that release of unclassified information related to USSOCOM contracts requires prior written authorization. However, USSOCOM further explained that “this guidance was not made clear in the contract, as the applicable contract clause that identifies this guidance had not yet been established at the time of the contract award. Therefore, a unilateral modification to the contract incorporating SOFARS clause 5652,204-9003 will be issued.” Because USSOCOM acknowledged that the guidance regarding the applicability of this regulation to FN’s contract was unclear, the Court cannot find that FN’s advertisements in , 2006 constituted a per se violation of federal regulations. Clyde Armory’s other unlawful use argument rests upon 18 U.S.C. §. 701, a criminal statute that prohibits the unauthorized private use of any governmental insignia. Clyde Armory points to two instances where FN allegedly violated that statute by using a USSOCOM emblem on SCAR brochures. The district court found that Clyde, Armory failed to show that FN’s alleged violation of this statute was material to FN’s development of trademark rights in SCAR. We agree. Use of an emblem on two of a multitude of promotional materials is at best de minimus and not “of such gravity and significance that the usage must be considered unlawful—so tainted that, as a matter of law, it could create no trademark rights.” Gen. Mills, 24 U.S,P.Q.2d at 1274, 1992 WL 296518, at *3. The district court’s rejection of Clyde Armory’s unlawful use defense is due to be affirmed.

D. The District Court’s Decision to Hold a Bench Trial

Clyde Armory argues it was entitled to a jury trial as of right under Fed. R, Civ. P. 38. However, Rule 38 provides for a jury trial only where the right is “declared by the Seventh Amendment to the Constitution” or “provided by a federal statute.” Fed. R. Civ. P. 38(a). Rule 39(a) clarifies that, when a jury trial is demanded, the action must be tried by a jury on all issues so demanded “unless ... the court,’on motion or on its own, finds that on some or all of those issues there is no federal right to a jury trial.” Fed. R. Civ. P. 39(a)(2). Determining whether a right to a' jury trial exists turns on whether the claims were historically cognizable at law or considered equitable. Phillips v. Ka~ plus, 764 F.2d 807, 813 (11th Cir. 1985), “For those claims which traditionally were cognizable at law, the right to a jury is generally preserved; for those claims which historically were considered equitable, no jury trial is mandated.” Id. In particular, a right to a jury trial does not exist for suits seeking only injunctive relief, which is purely equitable in nature. City of Monterey v. Del Monte Dunes at Monterey, Ltd., 526 U.S. 687, 719, 119 S.Ct. 1624, 1643, 143 L.Ed.2d 882 (1999); CBS Broad., Inc. v. EchoStar Commc’ns Corp., 450 F.3d 505, 517 n.25 (11th Cir. 2006).

Although both FN and Clyde Armory originally sought legal relief in the form of damages and the other party’s profits, they both expressly waived all legal claims in their joint proposed pretrial order and orally at the pretrial conference, choosing instead to seek only vindication of their trademark rights and pursue injunc-tive relief, thus extinguishing any right to a jury trial. As the Fifth Circuit determined, and we agree, “[t]he right to trial by jury is determined by the issues, not by the pleadings.” Armco, Inc. v. Annco Burglar Alarm Co., 693 F.2d 1155, 1158 (5th Cir. 1982). Nothing more formal in the way of withdrawal or waiver of the jury trial right was required. See Morro, 117 F.3d at 515 (an issue is waived “by failing to ensure that the issue is clearly preserved in the pretrial order”). Thus, “a pretrial order supersedes the pleadings,” thereby “eliminating” any claims not preserved in the pretrial order. State Treasurer of Mich. v. Barry, 168 F.3d 8, 9-10 (11th Cir. 1999). Because Clyde Armory was simply not entitled to a jury trial under Rule 38, the district court correctly granted FN’s motion to strike the jury demands and did not abuse its discretion in denying Clyde Armory’s motion to amend the proposed pretrial order, as discussed below.

1. The District Court’s Grant of FN’s Motion to Strike the Jury Demands

Rule 39 provides, “In an action not triable of right by a jury, the court, on motion or on its own: (1) may try any issue with an advisory jury; or (2) may, with the parties’ consent, try any issue by a jury whose verdict has the same effect as if a jury trial had been a matter of right....” Fed. R. Civ. P. 39(c). Thus, to have a trial by a non-advisory jury in a purely equitable proceeding, both parties must consent. See Wilson v. City of Aliceville, 779 F.2d 631, 635 n.3 (11th Cir. 1986) (citing Fed. R. Civ. P. 39(c)). Here, although the parties originally requested a jury trial, FN later withdrew its consent by moving to strike the jury demands. Because this Court has not addressed the propriety of withdrawing consent to a jury trial when the matters to be tried are purely equitable, the district court looked to a Seventh Circuit decision holding that a district court’s grant of a motion to strike a jury demand after initial consent was proper where the party seeking a jury trial provided no reason why she would be prejudiced by a bench trial. See Kramer v. Banc of Am. Sec., LLC, 355 F.3d 961, 968 (7th Cir. 2004).

In Kramer, the defendant successfully moved shortly before trial to exclude the plaintiffs compensatory and punitive damages claims, thus eliminating any legal claims, and simultaneously moved to strike the jury demand. Id. at 967. Because no legal issues remained, the Seventh Circuit held that the demand for a jury, even if established on consent, did not preclude the defendant from withdrawing that consent on the eve of trial. Id. at 967-68. Instead, the court noted that Rule 38(d) precludes withdrawing a jury demand only where there is the right to a jury trial, id. at 968; see also Fed. R. Civ. P. 38(d), and it also reasoned that nothing in Rule 39 restrains a party from withdrawing its consent to a jury trial that is not as of right, id.; see also Fed. R. Civ. P. 39.

We agree with Kramer’s reasoning and holding. When no right to a jury trial exists and where no prejudice will result, a party may unilaterally withdraw its consent to a jury trial. We are also persuaded by the Fifth Circuit’s discussion in Armco, in which the defendant demanded a jury trial based on the plaintiffs claims for legal relief—trademark infringement damages. 693 F.2d at 1158. The plaintiff moved to strike the defendant’s jury demand “[o]n the eve of trial” because the plaintiff no longer sought legal relief. Id. The district court proceeded with an advisory jury pursuant to Rule 39(a)(2), and later entered judgment contrary to the jury’s findings. Id. On appeal, the defendant complained it was deprived of its right to a jury trial, but the Fifth Circuit disagreed, noting that the issues, not the pleadings, determine whether a right to a jury trial exists. Id.

Clyde Armory argues that it was prejudiced by the striking of the jury demands because the test for trademark distinctiveness involves a number of considerations for which a jury would seem better suited than a judge. While perhaps the nature of the issues is one relevant consideration, there is no authority stating that a jury is required to determine acquired distinctiveness, and this Court cannot say that the district court erred in finding that, under the facts and issues to be decided at trial, Clyde Armory would not be prejudiced by a bench trial. Nor did the timing of FN’s request cause Clyde Armory prejudice. Rule 39(a)(2) contains no time limit for the filing of an objection to the demand for a jury trial. This Court has affirmed a district court’s striking a jury demand “days before trial” without any consideration of prejudice because no right to a jury existed where only equitable relief was sought. See CBS Broad., Inc., 450 F.3d at 517 n.25. The district court correctly granted FN’s motion to strike the jury demands.

2. The District Court’s Denial of Clyde Armory’s Motion to Amend the Proposed Pretrial Order to Reinstate its Demand for FN’s Profits

After the district court struck the jury demand, Clyde Armory moved to amend the proposed pretrial order to reinstate its demand for profits, believing that such a demand for profits would implicate a right to a trial by jury. The district court denied this motion. This Court has “not hesitated to back up district courts when they put steel behind the terms of pretrial orders and hold parties to them.” Morro, 117 F.3d at 515. As such, we will “not disturb the trial court’s ruling unless it is demonstrated that the trial court has so clearly abused its discretion that its action could be deemed arbitrary.” Id. at 516; see also Hodges, 597 F.2d at 1018 (“[F]or pretrial procedures to continue as viable mechanisms of court efficiency, appellate courts must exercise minimal interference with trial court discretion in matters such as the modification of its orders.”); Del Rio Distrib., Inc. v. Adolph Coors Co., 589 F.2d 176, 178 (5th Cir. 1979) (“This court has previously recognized that the trial judge is vested with broad discretion in determining whether or not a pre-trial order should be modified or amended.”).

Under the particular facts of this case we cannot say that the district court’s actions were arbitrary, and consequently, we deny Clyde Armory’s claim of error in this regard. Clyde Armory waived its claim for profits by faffing to preserve it in the pretrial order. See Morro, 117 F.3d at 515-16. We also note that any prejudice Clyde Armory asserts from the court’s denial of its motion is a “direct result of [its] own failure to properly present its case.” Mor-ro, 117 F.3d at 516 (citing Hodges, 597 F.2d at 1018); see also Del Rio Distrib., 589 F.2d at 178-79 (same).

III. CONCLUSION

For the foregoing reasons, we affirm the district court on all issues raised on appeal.

AFFIRMED.

      . These are the facts presented at trial and those upon which the district court made specific findings.

      . The following exchange occurred:
      THE COURT: Obviously the request here is for injunctive relief. ... I mean, I see this as a matter of law as opposed to something the jury needs to do.
      MR. BELLAMY: That is the Defendant's position.

      . Clyde Armory describes each of these as errors of law entitling them to be reviewed de. novo, but for the reasons discussed herein, we ■ find that Clyde Armory is actually challenging the district court’s factual determinations underlying these legal conclusions.

      .. Clyde Armory does not challenge the “commercially reasonable aspect of the district court’s ruling.

      . Fanciful or arbitrary marks "bear no relationship to the product or service,” suggestive marks “suggest characteristics of the product or service and require an effort of the imagination by the consumer in order to be understood as descriptive,” descriptive marks "identify the characteristic or quality of a product or service,” and generic marks "suggest the basic nature of the product or service.” Gift of Learning Found.., No. 01-08069-CV-DTKH, 2001 WL 34718642, 2001 U.S. Dist. LEXIS 25301 (S.D. Fla. 2001), aff’d, 329 F.3d at 797-98.

      . Clyde Armory asserts that neither party moved for summary judgment on the issue of whether Clyde Armory should be permitted to assert the unlawful use defense and that the district court ruled on the issue sua sponte. Clyde Armory does not argue that this constitutes reversible error, and in any event, Clyde Armory is incorrect. The parties fully briefed the issue at the summary judgment stage, and the district court further considered the issue during the parties’ motions in limine and at the pretrial conference. The parties thus had ample opportunity to be heard on this issue.

      . A district court in this Circuit has applied the defense in the context of a trademark cancellation, not infringement. See Davidoff Extension ,S.A. v. Davidoff Int'l, Inc., 612 F.Supp. 4, 7-8 (S.D. Fla. 1984). The district court found the clear and convincing requirement not met. See id.

      . Clyde Armory provides no citation for this regulation, but FN has included the text of the regulation in its Supplemental Appendix filed with this Court. Although Clyde Armory represented to the district court that the regulation is part of the Federal Acquisition Regulation System and was codified at Title 48 of the United States Code of Federal Regulations, Chapter 56, the Court is unable to find the cited provisions. Nonetheless, the Court relies on the text of the regulation as set forth in the Supplemental Index.

      . Clyde Armory does not argue that the standard for allowing amendment is different because the district court had not entered the proposed pretrial order at the time Clyde Armory moved to amend it.

      . Because we so hold, we need not reach the issue of whether recovery of profits under § 1117(a) of the Lanham Act is an equitable remedy for which there is no right to a jury trial.


source: Caselaw Access Project

author: ROSENBAUM, Circuit Judge: JORDAN, Circuit Judge, SILER, Circuit Judge,

license: Public Domain

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Eddy Wilmer VAIL-BAILON, Defendant-Appellant.
    No. 15-10351
    United States Court of Appeals, Eleventh Circuit.
    (September 28, 2016)
    Rehearing En Banc Granted, Opinion Vacated November 21, 2016.

      Wifredo A. Ferrer, Laura Thomas Rive-ro, Kathleen Mary Salyer, John C. Shipley, Emily M. Smachetti, U.S. Attorney’s Office, Miami, FL, Brandy Brentari Galler, U.S. Attorney’s Office, West Palm Beach, FL, for Plaintiff-Appellee.
    Robert E. Adler, Federal Public Defender’s Office, West Palm Beach, FL, Brenda Greenberg Bryn, Federal Public Defender’s Office, Fort Lauderdale, FL, Michael Caruso, Federal Public Defender’s Office, Miami, FL, for Defendant-Appellant.
    Before JORDAN, ROSENBAUM and SILER, Circuit Judges.

      The Honorable Eugene E. Siler, Jr., United States 'Court of Appeals for the Sixth Circuit sitting by designation..

   ROSENBAUM, Circuit Judge:

When I was growing up, my parents told me not to judge a book by its cover. The Supreme Court has expressed an analogous concern about concluding that a crime qualifies as a violent crime under the Armed Career Criminal Act (“ACCA’’), based solely on the name of the crime. See Johnson v. United States, — U.S. -, 135 S.Ct. 2551, 2560, 192 L.Ed.2d 569 (2015) (discussing whether Connecticut’s offense of “rioting at a correctional institution,” a crime that the Supreme Court characterized as “certainly soundpng] like a violent felony,” qualifies as a violent felony under the residual clause of the ACCA).

This case raises the question of whether the Florida crime of felony battery—a crime that, from its name, may sound like a crime of violence—actually satisfies the definition of “crime of violence” under § 2L1.2 of the Sentencing Guidelines when it is committed by mere touching. Heeding the Supreme Court’s warning, we have carefully compared the elements of felony battery under Florida law to the “elements clause” of § 2L1.2’s definition of “crime of violence.” Based on our review, we now hold that felony battery under Fla. Stat. § 784.041 does not qualify as a “crime of violence” under § 2L1.2 when it is committed by mere touching. For this reason, we vacate Vail-Bailon’s sentence and remand for resentencing.

II.

Vail-Bailon pled guilty to illegally reentering the United States after previously being deported, in violation of 8 U.S.C. §§ 1326(a) and (b)(1). Section 1326(b)(1) increases the penalty for simple illegal reentry (§ 1326(a)) when the defendant illegally reenters the United States after deportation following conviction of, among other things, a felony (though not an “aggravated felony”). In Vail-Bailon’s case, Vail-Bailon reentered after deportation following his conviction for felony battery under Fla. Stat. § 784.041.

In the presentence investigation report (“PSI”), the Probation Office recommended increasing Vail-Bailon’s base offense level by 16, pursuant to U.S.S.G. § 2L1.2(b)(l)(A), because, the Probation Office concluded, Vail-Bailon’s prior conviction for felony battery qualified as a “crime of violence” under that guideline. Vail-Bailon objected to the PSI’s proposed 16-level enhancement, contending that felony battery under Florida law does not categorically constitute a “crime of violence.” The government took the opposite position.

At the sentencing hearing, the district court overruled Vail-Bailon’s objection to the PSI and concluded that felony battery under Florida law categorically satisfies the definition of “crime of violence” under U.S.S.G. § 2L1.2(b)(l)(A). As a result, Vail-Bailon’s offense level increased by 16, based on the prior conviction for felony battery. The district court sentenced Vail-Bailon to 37 months’ imprisonment. Vail-Bailon now appeals.

III.

We review de novo the issue of whether a prior conviction qualifies as a “crime of violence” under the Sentencing Guidelines. United States v. Estrella, 758 F.3d 1239, 1244 (11th Cir. 2014). Proper interpretation of the Sentencing Guidelines requires us to account for both the individual guidelines and the commentary. United States v. Fulford, 662 F.3d 1174, 1177 (11th Cir. 2011) (citation omitted). In doing so, we give the language of the Sentencing Guidelines, “like the language of a statute, ... its plain and ordinary meaning, ... because as with Congress, we presume that the Sentencing Commission said what it meant and meant what it said.” Id. (citations, internal quotation marks, and modification omitted). And we follow the Guidelines commentary “unless it violates the Constitution or a federal statute, or is inconsistent with, or a plainly erroneous reading of, that guideline.” United States v. Jordi, 418 F.3d 1212, 1216 (11th Cir. 2005) (quoting Stinson v. United States, 508 U.S. 36, 38, 113 S.Ct. 1913, 1915, 123 L.Ed.2d 598 (1993)).

IV.

Section 2L1.2, the guideline at issue here, imposes a 16-level enhancement on a defendant who previously was deported after “a conviction for a felony that is ... (ii) a crime of violence.” U.S.S.G. § 2L1.2(b)(l)(A). The Application Notes to §2L1.2 explain that the term “crime, of violence” includes, among other qualifying crimes, any offense under state law “that has as an element the use, attempted use, or threatened use of physical force against the person of another.” U.S.S.G. § 2L1.2(b.)(l)(A) cmt. n.l(B)(iii). We refer to this clause as the “elements clause” of § 2L1.2’s definition of “crime of violence.” See United States v. Romo-Villalobos, 674 F.3d 1246, 1248 (11th Cir. 2012) (per cu-riam). Because it is the same as the elements clauses of the ACCA and the career-offender guideline, cases construing the “elements clauses” of any of these three provisions are instructive here. Id.

With this framework in mind, we consider whether Fla. Stat. § 784.041 qualifies as a “crime of violence” under § 2L1.2. Under § 784.041, a person commits felony batteiy if he “(a) [actually and intentionally touches or strikes another, person against the will of the other; and (b) [c]auses great bodily harm, permanent disability, or permanent disfigurement.” Fla. Stat. § 784.041(1).

In determining whether a crime qualifies as a “crime of violence,” we generally employ a categorical approach. Welch v. United States, — U.S. -, 136 S.Ct. 1257, 1262, 194 L.Ed.2d 387 (2016). Under the categorical approach, “a court assesses whether a crime qualifies as a violent felony in terms of how the law defines the offense and not in terms of how an individual offender might have committed it on a particular occasion.” Id. (citations and internal quotation marks omitted). That requires us to evaluate the least of the ways in which a given crime may be committed to determine whether it constitutes a “crime of violence.”

■ Besides the categorical approach, however, the Supreme Court has also approved a modified categorical approach when a statute is divisible—meaning that it sets forth alternative elements of the same crime—to allow courts to evaluate whether the particular alternative version of the crime under which the defendant was convicted satisfies the definition of “crime of violence.” See Mathis v. United States, — U.S. -, 136 S.Ct. 2243, 2249, 195 L.Ed.2d 604 (2016). If a statute is divisible, courts look to see whether documents approved under Shepard v. United States, 544 U.S. 13, 125 S.Ct. 1254, 161 L.Ed.2d 205 (2005), appear in the record and can answer under which alternative version of the statutory elements a defendant was convicted. See Mathis, 136 S.Ct. at 2250. If so, the court evaluates the alternative version of the statute under which the defendant was convicted to determine whether his crime meets the definition of “crime of violence.”

Section 784.041 is divisible. See Johnson v. United States, 559 U.S. 133, 136-37, 130 S.Ct. 1265, 1269, 176 L.Ed.2d 1 (2010) (“Curtis Johnson”) (citing State v. Hearns, 961 So.2d 211, 218 (Fla. 2007), for the proposition that, as relevant here, two of the three ways that the prosecution can prove a violation of Fla. Stat. § 784.03(l)(a)(l), which includes the same language as Fla. Stat. § 784.041(l)(a), include by showing that a defendant “intentionally str[uck]” the victim or that he merely “[actually and intentionally touche[d]” the victim). But since the parties agree that no Shepard-approved documents establish under which alternative element Vail-Bailon was convicted, we must assume that Vail-Bailon violated the statute by “[actually and intentionally touchfing]” another when we determine whether Vail-Bailoris conviction qualifies as a “crime of violence.” See Curtis Johnson, 559 U.S. at 137, 130 S.Ct. at 1269.

A. Mere touching does not involve “the use, attempted use, or threatened use of physical force against the person of another. ”

As relevant here, the first element of Florida’s felony-battery law requires that the offender have “[actually and intentionally touche[d] ... another person against the will of the other.” Fla. Stat. § 784.041(l)(a), It is exactly the same as one of the three alternative ways that a person can commit the complete crime of simple battery in Florida under Fla. Stat. § 784.03(l)(a)(l).

Significantly, the Supreme Court has already held that Florida battery, when committed by actually and intentionally touching another against his or her will, does not satisfy the “elements clause.” See Curtis Johnson, 559 U.S. 133, 130 S.Ct. 1265, 176 L.Ed.2d 1. As the Supreme Court explained, “[t]he Florida Supreme Court has held that the element of ‘actually and intentionally touching’ under Florida’s battery law is satisfied by any intentional physical contact, ‘no matter how slight.’ ” Id. at 138, 130 S.Ct. at 1269-70 (quoting Hearns, 961 So.2d at 218). Even “[t]he most ‘nominal contact,’ such as a ‘ta[p] ... on the shoulder without consent,’ ... establishes a violation.” Id. (quoting Hearns, 961 So.2d at 219).

But the phrase “physical force” that appears in the “elements clause” necessarily refers to “violent force—that is, force capable of causing physical pain or injury to another person.” Id. at 140, 130 S.Ct. at 1271 (citing Flores v. Ashcroft, 350 F.3d 666, 672 (7th Cir. 2003)). Indeed, the joining of the words “violent” and “felony,” ,or, in the case of §2L1.2, “crime” and “of violence,” renders the “connotation of strong physical force” required to satisfy the “elements clause” “even clearer.” See id. For these reasons, the Supreme Court has concluded that mere touching does not involve the “use, attempted use, or threatened, use of physical force against the person of another” under the “elements clause,” See id. at 143-44, 130 S.Ct. at 1272.

B. The element of “[c]aus[ing] great bodily harm, permanent disability, or permanent disfigurement" does not make felony battery under Fla. Stat. § 7&IM1 a “crime of violence” under the “elements clause”

As we have noted, the second element of felony battery under Fla. Stat. §784.041 requires that the intentional touching from the first element have “eause[d] great bodily harm, permanent disability, or permanent disfigurement.” Significantly, however, § 784.041 contains no reqüirement that the offender intentionally or knowingly cause bodily harm of any type. T.S. v. State, 965 So.2d 1288, 1290 (Fla. 2007). So, as Vail-Bailon asserted at oral argument and the government expressly conceded, a person can be guilty of felony battery in Florida under § 784.041 if the offender taps another person on the shoulder while that person stands near the top of stairs, and the person whose shoulder was tapped is either startled or otherwise reacts in such a way that he falls down the stairs and suffers grievous bodily harm. Similarly, Vail-Bailon argued at oral argument— and the government did not challenge his interpretation—that a person can be guilty of felony battery in Florida if he tickles another and that person jerks back and, for example, stumbles through an open window.

A crime that occurs in these ways does not qualify under the “elements clause” as a “crime of violence” under Supreme Court precedent. First, it does not involve “physical force” as the Supreme Court expressed its understanding of that phrase in Curtis Johnson, In Curtis Johnson, the Supreme Court explained that “the phrase ‘physical force’ means violent force—that is, force capable of causing physical pain or injury to another person.” 559 U.S. at 140, 130 S.Ct. at 1271. But significantly, the Supreme Court then directed readers to see Flores, 350 F.3d at 672. At that pincite, Flores expláined that “violent” force is “the sort that is intended to cause bodily injury, or at a minimum likely to do so.” Flores, 350 F.3d at 672 (emphasis added).

The Flores definition necessarily excludes Florida felony battery committed by mere touching. As we have established, a person may violate §784.041 with no intent to cause bodily injury, so the first part of Flores’s definition of “physical force” relied on by the Supreme Court in Curtis Johnson does not apply.

And. since the Supreme Court held in Curtis Johnson that mere intentional and actual touching does not qualify as “violent in nature,” it necessarily concluded that Florida battery by mere touching is not conduct that is likely to cause bodily injury. As a result, Florida battery by mere touching does not satisfy the second part of Flores’ s definition of “physical force” that the Supreme Court relied on in Curtis Johnson.

Nor can it be that, in a given case, the fact that a mere touching actually does result in great bodily harm somehow changes the character of the mere touching from an action that is not likely to result in bodily harm to one that is likely to result in bodily harm. In other words, the results of a specific incident of mere touching do not alter the fact that the nature of mere touching, in and of itself, as the Supreme Court concluded in Curtis Johnson, is not likely to result in bodily harm. So Florida felony battery by mere touching cannot qualify as a “crime of violence,” no matter what the injury resulting from the mere touching might' turn out to be.

Also, notice considerations dictate that the inquiry into whether a crime qualifies as a “crime of violence” under the “elements clause” should be forward-looking, from the perspective of the wrongdoer, not backward-looking in hindsight. That way, when a person is held responsible for committing a “crime of violence,” that person either intended to commit a “crime of violence” or should have known before committing the act that resulted in the conviction that it was at least likely that his act would cause bodily harm. But since the Supreme Court has already concluded that mere touching is not likely to result in bodily injury, we cannot expect a person who engages in mere touching to believe that his actions will cause bodily injury.

Second, Leocal v. Ashcroft, 543 U.S. 1, 125 S.Ct. 377, 160 L.Ed.2d 271 (2004), also supports our conclusion that felony battery committed by mere touching does not constitute a “crime of violence” under the “elements clause” just because the results of the mere touching were great bodily injury. In Leocal, the Supreme Court considered whether the Florida crime of driving under the influence of alcohol (“DUI”) and causing serious bodily injury, in violation of Fla. Stat. § 316.193(3)(c)(2) satisfied the definition of “crime of-violence” under, among other things, 18 U.S.C. § 16’s “elements clause.” Because § 16’s “elements clause” is materially indistinguishable from § 2L1.2’s “elements clause,” Leocal’s analysis is pertinent here.

The Supreme Court characterized the issue in Leocal as involving “whether state DUI offenses similar to the one in Florida, which either do not have a mens rea component or require only a showing of negligence in the operation of a vehicle, qualify as a crime of violence.” Id. at 6, 125 S.Ct. at 380. As the Court saw it, the key consideration of the “elements clause” concerns the requirement that a crime of violence be one involving the “use ... of physical force against the person or property of another.” Id. at 9, 125 S.Ct. at 382 (emphasis in original). And, significantly, the Supreme Court expounded on that phrase as “most naturally suggesting] a higher degree of intent than negligent or merely accidental conduct.” Id. Indeed, the Supreme Court emphasized that the phrase “crime of violence,” when considered in conjunction with § 16’s reliance on the use of physical force against another person, “suggests a category of violent, active crimes — ” Id. at 11, 125 S.Ct. at 383. As a result, DUI—even DUI involving negligence—does not satisfy the “elements clause.” Mat 9-10, 125 S.Ct. at 382.

Section 784.041 fares no better under the “elements clause” than the DUI statutes at issue in Leocal. A person who commits felony battery by mere touching intends to engage in mere touching, and that mere touching negligently or accidentally results in great bodily harm under §784.041, just as a person who commits DUI that causes serious bodily injury under the statutes under review in Leocal intends to engage in driving while under the influence, and that driving accidentally or negligently results in serious bodily injury to another. Though both offenders intend their actions—mere touching and driving—neither intends the accidental or negligent consequences—great bodily harm under § 784.041 and serious bodily injury under § 316.193(3)(c)(2). And we do not rely on the consequences of the driving or the mere touching to determine whether, categorically, the crime involves the use, attempted use, or threatened use of force looking forward from the offender’s perspective. Instead, under Leocal, when we discuss an action that normally does not cause bodily injury—in Leocal, driving, and here, mere touching—that element of a crime can qualify the crime as’ a “crime of violence” under the “elements clause” only if the offender engages in it with some type of intent to harm another.

The dissent suggests that we look at the phrase “force capable of causing physical pain or injury to another person” from Curtis Johnson in isolation, without the context provided by the Supreme Court’s immediate citation to Flores. We respectfully disagree for three reasons.

First, this argument reads the Supreme Court’s statement unmoored from its context. Citations to circuit-court opinions such as Flores do not find their way into Supreme Court opinions by accident. The Supreme Court’s reliance on Flores must mean something. The dissent’s argument does not account at all for the Supreme Court’s reliance on Flores, which very clearly puts into context what the Supreme Court had in mind when it used the phrase on which the government relies. Ignoring the citation to Flores would deprive the Supreme Court’s discussion of the meaning of “physical,” and thus, “violent,” force of its intended connotation—force that is “intended to cause bodily injury, or at a minimum likely to do so.” See Curtis Johnson, 559 U.S. at 140, 130 S.Ct. at 1271 (citing Flores, 350 F.3d at 672).

Second, the dissent’s proposed interpretation of “physical force” would require us to disregard the lessons of Leocal. Leocal reinforces our conclusion that intent to engage in force that is, at a minimum, likely to cause bodily injury, matters. If we determined whether a crime involved “force capable of causing physical pain or injury to another person” by whether, in fact, the crime actually caused physical pain or injury to another person, the DUI offenses that resulted in serious bodily injury in Leocal would necessarily qualify as “crimes of violence” under the “elements clause” since they all caused serious bodily injury. But we know that these offenses do not qualify as “crimes of violence” under the “elements clause.” And that’s because the phrase on which the dissent relies cannot be read in isolation, untethered from its context and Supreme Court precedent.

Third, holding someone responsible for committing a “crime of violence” when the person engaged in, for example, nothing more than tapping another on the shoulder or tickling another, is inconsistent with the Supreme Court’s expressed understanding of the term “crime of violence.” As we have noted, the Supreme Court has opined that the term “crime of violence” “suggests a category of violent, active crimes ... Curtis Johnson, 559 U.S. at 140, 130 S.Ct. at 1271 (quoting Leocal, 543 U.S. at 11, 125 S.Ct. at 383) (internal quotation marks omitted)—a category that clearly does not include mere touching, shoulder-tapping, or tickling. In short, Florida felony battery, when committed by mere touching, does not satisfy the “elements clause” of the definition of “crime of violence” contained in § 2L1.2 of the Guidelines.

y.

Though we can understand the temptation to conclude, based on its name, that a crime called “felony battery” categorically constitutes a “crime of violence,” engaging in actual analysis of the elements of “felony battery” leads to the opposite conclusion when the crime is committed by mere touching. But nothing we have said here today precludes a court from finding that a defendant engaged in a “crime of violence” if Shepard documents reflect that a defendant was convicted of felony battery for stinking another, as opposed to by mere touching of another. Because the record in this case does not satisfy that showing, we VACATE Vail-Bailon’s sentence and REMAND for resentencing.

VACATED AND REMANDED.

JORDAN, Circuit Judge,

concurring:

I join Judge Rosenbaum’s opinion for the court in full and add the following comments.

In three unpublished cases, we have previously held that the crime of felony battery in Florida, as set forth in Fla. Stat. § 784.041, has as an element “the use, attempted use, or threatened use of physical force against the person of another.” See United States v. Eady, 591 Fed.Appx. 711, 719 (11th Cir. 2014); United States v. Eugene, 423 Fed.Appx. 908, 911 (11th Cir. 2011); United States v. Crawford, 568 Fed.Appx. 725, 728 (11th Cir. 2014). Although these decisions are not binding, see 11th Cir. R. 36-2, I write separately to explain why they are flawed and do not constitute persuasive authority.

In Eady (a case where I served on the panel), we held that felony battery under §784.041 qualified as a “violent felony” under the elements clause of the ACCA. See 591 Fed.Appx. at 719. Our elements clause analysis in Eady, however, started from the incorrect premise that Florida’s felony battery statute “has a single, indivisible set of elements,” and that “hitting” was the least culpable conduct under the statute. See id. at 719-20 (“It is incorrect to say that a person can ‘actually and intentionally’ hit another person and cause ‘great bodily harm, permanent disability, or permanent disfigurement’ without using ‘force capable of causing physical pain or injury.’ ”) (emphasis in the original). Eady is wrong because the Supreme Court has explained that the first element for Florida simple battery (which is the same for Florida felony battery) is divisible and can be accomplished by any intentional touching, “no matter how slight.” See Johnson v. United States, 559 U.S. 133, 138, 130 S.Ct. 1265, 176 L.Ed.2d 1 (2010) (citing State v. Hearns, 961 So.2d 211, 218 (Fla. 2007)). Eady therefore is not persuasive here.

In Eugene, we recognized that felony battery under § 784.041 can be committed by any intentional touching yet held that it categorically qualified as a “crime of violence” under U.S.S.G § 4B1.2(a)(l), the career offender guideline. See 423 Fed.Appx. at 911. But we did not perform an elements clause analysis in Eugene. Nor did we explore the possibility that a touch as insignificant as a tap on the shoulder can satisfy the first element of the offense. Instead, we concluded that “each touching that violates the felony battery statute is not only capable of causing physical pain or injury to another person ... it must also actually cause great or permanent physical harm or injury to another person.” See id. (internal quotation marks omitted). As we now explain in more detail, § 784.041’s second element—“[c]aus[ing] great bodily harm, permanent disability, or permanent disfigurement”—on its own does not change the nature of the first element that we know encompasses even the “slightest unwanted physical touch.” See Johnson, 559 U.S. at 137, 130 S.Ct. 1265.

And finally, in Crawford we summarily concluded, without any analysis, that Florida felony battery satisfied the definition of “violent felony” under the ACCA. See 568 Fed.Appx. at 728 (citing the elements clause under 18 U.S.C. § 924(e)(2)(B)(i) without explanation). It goes without saying that Crawford, which is bereft of analysis, does not help us to resolve the issue here.

In sum, our three unpublished opinions in Eady, Eugene, and Crawford fall short of persuasively explaining how a Florida felony battery by any intentional touching-including a tap or even a tickle—can categorically satisfy the definition of “crime of violence” under the elements clause of §2L1.2. I therefore agree that Florida felony battery under § 784.041 does not categorically have as an element “the use, attempted use, or threatened use of physical force against the person of another” when it is committed by a mere touching. Because §784.041 is divisible, our decision leaves open the possibility that a district court may use the modified categorical approach in a case where Shep-urd-approved documents confirm that the defendant’s felony battery conviction was based on the striking of another. That approach was not available here due to the absence of such documents.

SILER, Circuit Judge,

dissenting.

I respectfully dissent from the majority opinion that Vail-Bailon’s prior conviction for felony battery in violation of Fla. Stat. §784.041 fails to qualify as a crime of violence under USSG §2L1.2. I do not quarrel with the procedure outlined in the majority opinion as to how we approach the analysis. Moreover, I agree with Part III. A. that mere touching does not meet the definition of “violent force.” As the majority states, that constitutes the'misdemeanor crime of simple battery under Fla. Stat. § 784.03(l)(a). See Johnson v. United States, 559 U.S. 133, 140, 130 S.Ct. 1265, 1270-71, 176 L.Ed.2d 1 (2010) (Curtis Johnson).

Nevertheless, 1 disagree with the conclusions made in Part II. B. that the crime described in Fla. Stat. § 784.041 is not a “crime of violence” under the “elements clause.” The • Supreme Court defined “physical force” under the Armed Career Criminal Act (ACCA) as a “violent force— that is, force capable of causing physical pain or injury to another person.” Id. (citing Flores v. Ashcroft, 360 F.3d 666, 672 (7th Cir. 2003)). Although Johnson involved the definition of “physical force” under the ACCA, .we have previously observed that the “elements clause” for “violent felony” under the ACCA and “crime of violence” under USSG § 2L1.2(b)(l)(B) “is the same.” See United States v. Romo-Villalobos, 674 F.3d 1246, 1248 (11th Cir. 2012). Instead of focusing on the language in Johnson, the majority pivots to Johnson’s citation to Flores, in which the Seventh Circuit defined “physical force” as “the sort that is intended to cause bodily injury,' or at a minimum .likely to do so.” Flores, 360 F.3d at 672. However, we should not rely on Flores, but we should follow the definition of “physical force” offered in Johnson, “force capable of causing physical pain or injury to another person.” 659 U.S. at 140, 130 S.Ct. at 1271. Why do we need to speculate about the definition of “physical force” when the Supreme Court provided one in Johnson? The Supreme Court was aware of the mens rea language used in Flores and chose not to use it. Instead, the operative word is “capability”—that is, the crime must be capable of causing physical injury. See id.

To be found guilty of violating § 784.041, the defendant must be more than capable of causing bodily injury since he must in fact cause “great bodily harm.” The majority states that “[n]or can it be that, in a given case, the fact that a mere touching actually does result in great bodily harm somehow change[] the character of the mere touching from an action that is not likely to result in bodily harm to one that is likely to result in bodily harm.” However, the issue from Johnson is whether the defendant’s action is capable of causing bodily injury, not whether it is likely to cause injury. If something necessarily results from the touching, then the logic is that it had to have been capable of that result from the beginning.

The majority also attempts to analogize § 784.041 to the statute at issue in Leocal v. Ashcroft, 543 U.S. 1, 125 S.Ct. 377, 160 L.Ed.2d 271 (2004). That case involved a violation of Fla. Stat. § 316.193(c)(2) for driving under the influence of alcohol (DUI) and causing serious bodily injury. The Court held that a violation of § 316.193(e)(2) did not constitute a “crime of violence” under 18 U.S.C. § 16. The majority suggests that the DUI statute at issue in Leocal contains an element with a similar mens rea as § 784.041—intentional-ly driving a vehicle. But that is not .the proper element to analogize the “touching” element in this case. Rather, the Supreme Court was concerned in Leocal that a person could be found guilty under § 316.193(c)(2) without any intentional use of force, that is, someone could be convicted by negligently or accidentally hitting a person with , a vehicle. It is this missing hitting element in § 316.193(c)(2) that, distinguishes Leocal from the present case. Unlike in the statute in Leocal, even in the least culpable formulation of § 784.041, a defendant must engage in intentional force by intending to touch someone.

In conclusion, I would find that the crime of felony battery under Florida law satisfies the “elements clause” of the definition of “crime of violence” contained in § 2L1.2 of the Guidelines. Therefore, I would affirm the sentence in the district court.

      . The. Supreme Court’s comments arose in the context of considering the residual clause of the ACCA’s definition of "violent felony." But the principle that we cannot determine whether a crime sounds like it should be a violent felony simply by considering the name of the crime remains the same, whether we are discussing the residual clause or the elements clause of the ACCA’s definition of "violent felony,” or, as here, the elements clause of U.S.S.G. §2L1.2’s definition of "crime of violence.”

      . Under Fla. Stat. §784.03(l)(a), a person commits the crime of simple battery in Florida when that person
      1. Actually and intentionally touches or strikes another person against the will of the other; or
      2. Intentionally causes bodily harm to another person.
      Section 784.03(l)(a)(l) sets forth two alternative ways of violating the statute, with § 784.03(l)(a)(2) listing a third.

      . Section 16’s “elements clause” defines a "crime of violence,” in pertinent part, as "(a) an offense that has as an element the use, attempted use, or threatened use of physical force against the person or property of another,"