Hornady Manufacturing Co. v. Doubletap, Inc.
746 F.3d 995
| 10th Cir. | 2014Background
- Hornady founded 1949; TAP mark used since 1997 with multiple TAP sub-brands and registrations, including the nonstylized TAP mark; TAP was statutorily incontestable in 2004.
- DoubleTap founded in 2002; markets niche, hand-loaded rounds; its mark evolved from two words in a blue oval to a single DOUBLETAP in a blue oval with “McNett’s.”
- In 2010 Hornady sent a cease-and-desist demanding DoubleTap stop using TAP; litigation followed alleging Lanham Act infringement, state deceptive practices, and unjust enrichment.
- District court granted summary judgment for DoubleTap; Hornady appealed; standard of review is de novo for summary judgment.
- Court applies six-factor likelihood-of-confusion test, evaluates marks as a whole, considers marketplace presentation and packaging, and weighs consumer care; ultimately affirms district court’s grant of summary judgment to DoubleTap.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Likelihood of confusion under Lanham Act factors | Hornady argues strong similarity and actual confusion evidence. | DoubleTap argues marks are dissimilar overall; packaging differences lessen confusion. | No likelihood of confusion; overall factors favor DoubleTap; district court affirmed. |
| Similarity of marks analysis | Mark similarity centered on shared syllable 'tap' should drive analysis. | Marks must be analyzed as a whole with packaging and presentation; not just shared syllables. | Whole-mark analysis controls; TAP’s presence is not dispositive; packaging and presentation reduce similarity. |
| Actual confusion evidence | Direct-confusion instances and survey show confusion. | Instances are de minimis; survey methodology flawed; not probative. | Limited weight given lack of significant evidence of actual confusion. |
| Strength of Hornady TAP mark | TAP is strong both conceptually and commercially; incontestable registration supports strength. | Strength is contested; packaging and use weaken associative strength. | TAP is both conceptually and commercially strong; favorable to Hornady but not enough to overcome other factors. |
Key Cases Cited
- Water Pik, Inc. v. Med-Systems, Inc., 726 F.3d 1136 (10th Cir. 2013) (six-factor framework and overall confusion inquiry; marks treated as a whole; packaging matters)
- King of the Mountain Sports, Inc. v. Chrysler Corp., 185 F.3d 1084 (10th Cir. 1999) (similarity factor weighting; strength of mark considerations)
- Heartsprings, Inc. v. Heartspring, Inc., 143 F.3d 550 (10th Cir. 1998) (no single factor dispositive; factors interrelated)
- Universal Money Centers, Inc. v. AT&T Co., 22 F.3d 1527 (10th Cir. 1994) (consideration of packaging and overall market impression; avoid overemphasis on one element)
- Sally Beauty Co. v. Kay, 304 F.3d 972 (10th Cir. 2002) (survey methodology and consumer care considerations in confusion analysis)
- Nora Beverages, Inc. v. Perrier Group of Am., Inc., 269 F.3d 114 (2d Cir. 2001) (illustrates dissimilarity can negate likelihood of confusion)