Your business trademark (also sometimes referred to as your “brand”) is at the core of your distinctive corporate identity. It’s the name or symbol that allows consumers to distinguish your goods and services from those of your competitors.
Registering your trademark is what gives you the statutory right to protect it – and also protects from the challenges of those who might accuse you of infringing upon their trademark. Ideally, our Boston business lawyers would advise registering the trademark at the time you begin the business formation process.
The recent case of Hornady Manufacturing Co. v. Doubletap, decided by the U .S. District Court of Appeals for the Tenth Circuit, illustrates the elements of proving trademark infringement.
Involved here were two firms – the first manufactures and sells firearm ammunition and related products, and the second is described as a “niche” ammunition manufacturer.
The first firm, Hornady, was founded in 1949, and since 1997 had sold various products under the name “TAP,” which was short for “Tactical Application Police.” The nonstylized word for this sub-brand was trademarked in 1999.
The second company, DoubleTap, was founded in 2002. This company specializes in selling calibers of ammunition that most other manufacturers don’t produce. Initially, the company name was two words, but eventually morphed into one.
The two brand symbols used by both companies were distinctly different.
In 2010, Hornady sent a cease-and-desist letter to DoubleTap, demanding that the newer company remove the word “Tap” from its name, products and website. The two were not able to resolve the dispute, and the case went to court.
Both parties moved for a summary judgment. DoubleTap’s motion was granted, while Hornady’s was denied. Hornady appealed.
The court indicated that the central issue in the case was whether the junior user’s mark would likely cause confusion with the senior user’s mark. In order to determine the level of confusion, the courts weigh the following factors:
- The degree of similarity between the two marks;
- The intent of the company accused of infringement;
- Evidence of actual confusion;
- The similarity of the parties’ products and the manner in which the parties market them;
- The degree of care that consumers are likely to exercise in purchasing either product;
- The strength of the contesting mark.
These factors are not always equal, and the importance of any one factor over another depends on the specifics of the case being decided. The core issue is whether the consumer is likely to be either confused or deceived by the similarity.
The court determined the marks were not inherently the same. There were different lettering styles, logos and coloring schemes. Hornady argued the word “tap” in DoubleTap’s name infers that it is part of Hornady’s sub-brand “TAP” products. However, the court found this wasn’t the case.
Further, the court pointed out that the sub-brand “TAP” products did not use the word at the end of each product name, as was the case with DoubleTap. Instead, its products went by names like “TAP Precision” or “Tap Barrier.” There were only two instances where the word “TAP” was used as a suffix rather than a prefix.
With regard to the DoubleTap owner’s intent, the court found that just because the owner of the junior firm was aware of Hornady and its TAP products does not prove intent to infringe.
Hornady then argued that there was evidence of actual confusion, based on messages left on its Facebook page, as well as a survey it commissioned by a research firm. There were also half a dozen calls in 2009 and 2010 where consumers phoned Hornady regarding DoubleTap products. There was also a letter from a sheriff’s office, thanking Hornady for the DoubleTap ammunition.
The court ruled that just because there was evidence of confusion doesn’t mean that confusion is likely. A handful of instances over the course of a decade in which the two operated side-by-side did not indicate a likelihood.
With regard to consumer care, the court found that customers were likely to use care when purchasing self-defense ammunition. That degree of care favored DoubleTap’s position.
The one factor that skewed in Hornady’s favor was the similarity of the two companies. Both companies made similar products and marketed those products in similar ways. Also, the strength of the “TAP” brand within the market was high, which was also in Hornady’s favor.
However, these factors alone were not enough to establish infringement, and the circuit court’s granting of summary judgment to DoubleTap was affirmed.
The Brown Law Firm, LLC, has offices in Belmont and Boston. For a free and confidential consultation, call 617-489-0817 or contact us online.
Hornady Manufacturing Co. v. Doubletap, March 19, 2014, U.S. Court of Appeals for the 10th Circuit
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Boston Corporate Governance Attorney Can Help Prevent Host of Issues, March 4, 2014, Boston Trademark Lawyer Blog