United States District Court, D. Nebraska
MEMORANDUM AND ORDER
SMITH CAMP SENIOR UNITED STATES DISTRICT JUDGE.
matter is before the Court on the Motion to Dismiss, ECF No.
33, filed by Defendant Hornady Manufacturing Co.
(“Hornady”) and the Amended Motion for Leave to
Amend Complaint, ECF No. 38, filed by Plaintiff DoubleTap
Defense, LLC (“DTD”). For the reasons stated
below, Hornady's Motion to Dismiss will be denied and DTD
will be granted leave to file its Second Amended Complaint.
as otherwise noted, the following facts are those alleged in
DTD's proposed Second Amended Complaint for Breach of
Contract attached to DTD's Amended Motion for Leave to
Amend Complaint. ECF No. 38-1.
is a manufacturer of bullets and ammunition for sportsmen,
law enforcement personnel, and military professionals. Second
Am. Compl., ECF No. 38-1, Page ID 110. Since 1997, Hornady
has marketed and sold various products, including ammunition,
bearing its registered TAP® trademark. Id.
December 22, 2010, Central Holding Corporation
(“CHC”) filed a trademark application seeking
registration of the trademark “DOUBLETAP” in
connection with firearms. Id. at 109. On June 11,
2012, CHC assigned the registration application to Heizer
Technologies, LLC, which later changed its name to Double Tap
Defense, LLC, and then to DoubleTap Defense, LLC.
Id. At the 2012 SHOT Show, a national firearms
tradeshow, DTD used the DOUBLETAP trademark to promote the
forthcoming DoubleTap Tactical Pistol it intended to
manufacture and sell. Id. The pistol has the
DOUBLETAP mark etched into the pistol's barrel and frame.
Tap Ammunition, Inc. (DTA) is a manufacturer of ammunition
specializing in hand-loaded rounds and uncommon calibers.
Id. at 110. Since at least 2006, DTA's packaging
has displayed the unregistered marks DOUBLETAP or DOUBLE TAP.
January 5, 2011, Hornady brought suit against DTA alleging
DTA's use of the unregistered mark infringed on
Hornady's registered TAP® mark in violation of the
Lanham Act. Id. On June 11, 2012, Hornady brought a
suit against DTD alleging violations of the Lanham Act for
DTD's use of the DOUBLETAP mark claiming it also
infringed on Hornady's TAP mark. Id. at 111.
March 6, 2013, DTD and Hornady entered into a Trademark
Assignment and Licensing Agreement (“Licensing
Agreement”) to resolve the dispute between them.
Id. at 112. DTD agreed to assign all right, title,
and interest in the DOUBLETAP Mark to Hornady; to abandon the
registration application; and to pay Hornady a $25, 000
license fee. Id. at 111. In exchange, Hornady agreed
to license the DOUBLETAP Mark back to DTD and to indemnify
and hold DTD harmless “FROM AND AGAINST ALL CLAIMS,
DEMANDS, LAWSUITS, DAMAGES, LIABILITIES, JUDGMENTS, COSTS,
AND EXPENSES (INCLUDING REASONABLE ATTORNEYS' FEES)
ARISING FROM OR RELATING TO . . . LIABILITY RELATED TO
TRADEMARK INFRINGEMENT CLAIMS FOR [DTD's] USE OF THE
MARKS AS CONTEMPLATED BY THIS AGREEMENT.” Id.
execution of the Licensing Agreement, DTD alerted Hornady to
the existence of at least three other businesses using the
DOUBLETAP Mark and requested that Hornady, as licensor, honor
its obligation to address possible third-party infringement
by others who might claim an interest in the DOUBLETAP Mark.
Id. at 112. On March 7, 2013, Hornady transmitted at
least three cease-and-desist letters to companies using the
DOUBLETAP Mark. Id. at 113-14. Hornady never
demanded or requested that DTD cause DTA or any other entity
or individual to assign to Hornady all interest claimed in
the DOUBLETAP Mark. Id. at 116.
March 26, 2013, DTD abandoned its registration application
for the DOUBLETAP Mark by filing its “Notice of Express
Abandonment” with the Patent and Trademark Office.
Id. at 114.
April 24, 2013, the United States District Court for the
District of Utah ruled that DTA's unregistered mark did
not infringe on Hornady's TAP mark. Id. at 115.
Hornady appealed and on March 19, 2014, the Tenth Circuit
9, 2014, DTA sent a cease-and-desist letter to DTD alleging
DTD's use of the DOUBLETAP Mark, licensed from Hornady,
infringed on DTA's unregistered marks and were likely to
cause consumer confusion. Id. DTA demanded DTD cease
all use of the DOUBLETAP Mark and/or association of the
DOUBLETAP Mark in connection with promotional advertising
materials, including websites, for firearms and ammunition.
Id. at 115-16. DTD ceased sales of the DoubleTap
Tactical Pistol and transmitted a copy of the
cease-and-desist letter to Hornady, demanding it “honor
the indemnify and hold harmless provision” of the
Licensing Agreement. Id. at 116. Hornady refused to
indemnify, defend, protect, and hold DTD harmless.
7, 2018, DTD filed a Complaint alleging Hornady breached the
Licensing Agreement. ECF No. 1. DTD's First Amended
Complaint was filed on June 8, 2018. ECF No. 2. After
transfer to the District of Nebraska, Hornady filed a Motion
to Dismiss pursuant to Fed.R.Civ.P. 12(b)(6). ECF No. 33. DTD
seeks leave to file its proposed Second Amended Complaint.
Amended Mot. Amend, ECF No. 38. ...