10th Cir. Affirms Summary Judgment Award in Trademark Dispute Over 'Tap'

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By Anandashankar Mazumdar

March 19 --A federal district court did not err in finding that an ammunition maker's “DoubleTap” trademark did not create a likelihood of confusion with a competitor's various “Tap” trademarks, the U.S. Court of Appeals for the Tenth Circuit ruled March 19 (Hornady Mfg. Co. v. DoubleTap, Inc., 10th Cir., No. 13-4085, 3/19/14).

Affirming an award of summary judgment of noninfringement, the court rejected the plaintiff's argument that because it held rights in a series of brand names including the word “Tap” that it should benefit from an inference that consumers would presume that any ammunition brand including that word was related.

Ammunition Marketed Under 'Tap' Names
Since 1949, Hornady Manufacturing Co. of Grand Island, Neb., has made and marketed firearm ammunition and related products. Since 1997, Hornady has used the term “Tap,” originally an abbreviation for “tactical application police,” in a range of brand names such as “Tap,” “Tap FPD,” “Tap Urban,” “Tap Precision,” “Tap CQ,” “Tap Barrier,” BTHP Tap,” and “GMX Tap.”

In 1999, Hornady registered the term “Tap” with the Patent and Trademark Office and holds registrations for some of its other “Tap” trademarks.

DoubleTap Inc. of Cedar City, Utah, has made ammunition since 2002, specializing in hand-loaded rounds. Prior to 2010, the company used the term “Double Tap” as separate words, but since has joined them together as “DoubleTap.” The company's logo uses the term “McNett's DoubleTap,” after the name of founder Michael McNett.

Hornady sued DoubleTap, alleging that its use of “Tap” infringed its trademark interests. Hornady also brought claims of deceptive trade practices and unjust enrichment

Judge Brian Theadore Stewart of the U.S. District Court for the District of Utah granted summary judgment of noninfringement in favor of DoubleTap. Hornady appealed.

No Likelihood of Confusion
Affirming the lower court's ruling, Judge Paul J. Kelly Jr. applied a six-part balancing test for likelihood of confusion as set forth by Water Pik, Inc. v. Med-Systems, Inc., 726 F.3d 1136, 2013 BL 208298, 107 U.S.P.Q.2d 2095 (10th Cir. 2013) (157 PTD, 8/14/13).

Addressing the first factor--similarity of the trademarks in question--the court rejected Hornady's argument that the analysis should be limited to the word “tap” by itself--the point of similarity between the relevant marks.

“First, the court is not free to give dispositive weight to any one component of the marks, such as a shared syllable,” the courts said. “In this case, the fact that both marks contain the syllable 'tap' does not control the similarity inquiry.”

Furthermore, the court said, similarity is not limited to the similarity between the names. The visual similarity of the trademarks as used in commerce was also relevant.

The court also rejected the argument that “because of its various TAP sub-brands from a 'family of marks,' it is entitled to an inference that a consumer would presume DoubleTap to be one of its TAP marks.”

This would violate the same principle, that trademarks be considered as they would appear to consumers in commerce and run afoul of the principle that the court had already stated. Instead, each of the sub-brands must be compared separately with DoubleTap's trademark.

Taking these standards into consideration, the court agreed with the district court that the issue of similarity weighed in DoubleTap's favor.

Turning to the question of actual confusion, the court characterized a “half a dozen or so” mistakes by consumers regarding DoubleTap as de minimis. And a survey entered into evidence was of limited value, because the survey itself was constructed in such a way as to create “confusion between DoubleTap and TAP when none would have arisen otherwise.”

Also weighing in DoubleTap's favor were factors addressing DoubleTap's intent in selecting its trademark and likelihood of customer care. Weighing in Hornady's favor were factors addressing the strength of its trademarks-which the court found to be both conceptually and commercially strong--and the similarity between the parties' products and marketing.

However, taking all the factors together, the court agreed with the district court that there was no genuine outstanding question of material fact regarding whether DoubleTap's use of its trademark was likely to create confusion with Hornady's trademarks.

The court's opinion was joined by Judges William J. Holloway Jr. and Gregory A. Phillips.

Hornady was represented by Mark Miller of Holland & Hart LLP, Salt Lake City. DoubleTap was represented by Justin Starr of Kirton McConkie P.C., Salt Lake City.


To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

Text is available at http://www.bloomberglaw.com/public/document/Hornady_Manufacturing_Co_v_Doubletap_Docket_No_1304085_10th_Cir_M.

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