Hornady Manufacturing Co. v. Doubletap, Inc.
2014 WL 1045138, 110 U.S.P.Q. 2d (BNA) 1140, 746 F.3d 995 (2014)
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Rule of Law:
Under the Lanham Act, trademark infringement claims require a showing that the junior user’s mark is likely to cause confusion with the senior user’s mark, evaluated by considering six non-exhaustive factors where no single factor is dispositive.
Facts:
- Hornady Manufacturing Company, Inc. (Hornady) was founded in 1949 and has since manufactured and sold firearm ammunition and related products.
- Since 1997, Hornady has sold various products under the name 'TAP,' an acronym for 'Tactical Application Police,' obtaining trademark registration for 'TAP' in 1999, which became statutorily incontestable in 2004.
- Hornady's product packaging conspicuously features the TAP mark, sometimes incorporated within a shield resembling a police officer’s badge.
- DoubleTap, Inc. (DoubleTap) was founded in 2002 by Michael McNett as a niche ammunition manufacturer specializing in hand-loaded rounds, and McNett registered www.doubletapammo.com in 2003 to sell products online.
- DoubleTap’s product packaging initially displayed its mark as 'Double Tap' within a blue oval flanked by two bullet holes, later morphing to a single word 'DOUBLETAP' in a blue oval crowned with 'McNett’s.'
- In January 2010, Hornady sent DoubleTap a cease-and-desist letter demanding that DoubleTap discontinue using 'Tap' in its products and on its website.
Procedural Posture:
- Hornady Manufacturing Company, Inc. filed a complaint against DoubleTap, Inc. in the United States District Court for the District of Utah, alleging trademark infringement under Sections 32 and 43(a) of the Lanham Act, common law trademark infringement, deceptive trade practices under Utah law, and unjust enrichment.
- Both Hornady and DoubleTap subsequently moved for summary judgment, each arguing they were entitled to judgment as a matter of law on the issue of trademark infringement.
- The United States District Court for the District of Utah denied Hornady's motion for summary judgment and granted DoubleTap's motion for summary judgment.
- Hornady, as the appellant, appealed the district court’s order granting summary judgment to DoubleTap to the United States Court of Appeals for the Tenth Circuit, with DoubleTap as the appellee.
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Issue:
Did the district court err in granting summary judgment to DoubleTap, Inc. by concluding that Hornady Manufacturing Company, Inc. failed to raise a genuine issue of material fact regarding the likelihood of consumer confusion between the 'TAP' and 'DoubleTap' ammunition marks?
Opinions:
Majority - Kelly, Circuit Judge
No, the district court did not err in granting summary judgment to DoubleTap, Inc. because Hornady failed to establish a genuine issue of material fact regarding the likelihood of consumer confusion between the 'TAP' and 'DoubleTap' marks. The court applied the six-factor likelihood of confusion test, finding that four factors favored DoubleTap, while only two (strength of Hornady's mark, and similarity of products and marketing) favored Hornady. The court reasoned that the marks, when considered as a whole, including their distinct marketplace presentations, were dissimilar in sight, sound, and meaning. Hornady's 'TAP' referred to 'Tactical Application Police' or 'to strike lightly,' while DoubleTap's 'Double Tap' referred to a specific gunmanship technique of firing two shots in quick succession. DoubleTap did not adopt its mark with intent to copy Hornady's mark, as awareness of Hornady's products is not evidence of intent to copy a specific mark. Evidence of actual confusion, consisting of a few calls, a letter, and a social media post over ten years, was de minimis and unreliable given the marks' dissimilarity. A survey attempting to show confusion was also found to have methodological flaws, particularly leading questions, thus given little weight. Finally, consumers are likely to exercise a high degree of care when purchasing ammunition, reducing the likelihood of confusion. The substantial dissimilarity of the marks and the high degree of consumer care, combined with a lack of compelling evidence of intent to copy or actual confusion, led the court to conclude that consumers were unlikely to be confused.
Analysis:
This case is significant for trademark litigation as it clarifies the application of the likelihood of confusion test at the summary judgment stage. It reinforces that courts must consider the entirety of the marks, including their marketplace presentation and packaging, rather than solely focusing on shared components. The ruling emphasizes that even for a strong senior mark, evidence of de minimis actual confusion and methodologically flawed surveys may not be sufficient to overcome substantial dissimilarity between marks and a high degree of consumer care. This makes it more challenging for plaintiffs to survive summary judgment on circumstantial evidence alone, particularly when a defendant can demonstrate clear differences in the overall impression of the marks and a lack of predatory intent.
