United States District Court, S.D. Indiana, Indianapolis Division
Caitlin R. Brandon BARNES & THORNBURG LLP (Indianapolis)
A. W. Wong BARNES & THORNBURG LLP (Indianapolis)
Deborah Pollack-Milgate BARNES & THORNBURG LLP
Cho Hernandez CARTER SCHOLER PLLC
J. Bennett LAW OFFICES OF CARTER SCHOLER ARNOTT &
Crystal Spivey Wildeman WOODEN & MCLAUGHLIN LLP
ORDER ON MOTION TO DISMISS
J. McKINNEY, JUDGE
matter is before the Court on Defendant Fleetpride,
Inc.'s (“Fleetpride's”), Motion to
Dismiss, or Alternatively, Motion for More Definite Statement
(the “Motion to Dismiss”). Dkt. No. 21. In the
Motion to Dismiss, Fleetpride seeks to dismiss the trademark
infringement, unfair competition, and false description of
goods claims asserted against it by Plaintiff Allison
Transmission, Inc. (“Allison”), in its First
Amended Complaint,  claiming that its uses of Allison's
trademarks were non-infringing uses. Id. at 1.
Fleetpride alternatively requests that the Court require
Allison to provide a more definite statement that more
clearly specifies which of Allison's trademarks it
alleges Fleetpride infringed. Id. In response,
Allison asserts that its allegations sufficiently state
claims for trademark infringement, unfair competition, and
false description of goods because such claims revolve around
whether a defendant's use of a trademark creates a
likelihood of consumer confusion. Dkt. No. 31 at 3-4. Allison
further argues that there is no need for it to provide a more
definite statement as to which of its trademarks Fleetpride
infringed because Fleetpride infringed the dominant portion
of each of Allison's trademarks. Id. at 5-7. For the
reasons stated herein, the Court DENIES Fleetpride's
Motion to Dismiss; however Fleetpride's alternative
Motion for a More Definite Statement is GRANTED.
began manufacturing automatic transmissions for commercial
vehicles approximately seventy years ago and has since
developed a reputation for building high quality, reliable
automatic transmissions. Dkt. No. 13, ¶ 4. In order to
protect the rights to its name, Allison obtained federal
registration for standard character trademarks in
“ALLISON” and “ALLISON TRANSMISSIONS”
(the “Allison Standard Character Marks”).
Id. at ¶ 8. Allison also registered seven
design trademarks for use in relation to its automatic
transmission products, all of which incorporated at least one
of the Allison Standard Character Marks (the “Allison
Design Marks”). Id.
1999, Allison developed a new transmission fluid
certification standard, TES 295, which it used to indicate
which transmission fluids worked best with its transmissions.
Id. at ¶¶ 11-12. In connection with this
new certification standard, Allison registered a standard
character trademark in “TES 295” (the “TES
295 Standard Character Mark”) and two design
trademarks, both of which include the TES 295 Standard
Character Mark and at least one of the Allison Standard
Character Marks (the “TES 295 Design Marks”).
Id. at ¶ 12. Before obtaining a license to use
the TES 295 Standard Character Mark or the TES 295 Design
Marks, Allison requires each licensee to first demonstrate
that its transmission fluid meets Allison's strict
requirements for obtaining TES 295 certification.
Id. at ¶ 15.
2015, Allison learned that Fleetpride was marketing and
selling transmission fluid known as “Primatech TES295,
” and that Fleetpride's packaging of Primatech
TES295 incorporated the TES 295 Standard Character Mark, as
well as the Allison Standard Character Marks. Id. at
¶ 20. For example, Exhibit C to the First Amended
Complaint shows a Fleetpride transmission fluid container
label that states that the product is “Suitable for use
in Allison Transmissions for extended drain” and listed
its product number as “PTATF-TES295-G.”
Id. at Ex. C. Although Allison requested that
Fleetpride cease and desist its use of Allison's
trademarks, Fleetpride refused, believing that its use of
Allison's trademarks was a non-infringing, fair use.
Id. at ¶¶ 24, 29. Fleetpride continues to
employ Allison's trademarks in relation to its
transmission fluid products. Id. at ¶ 32.
initiated this action on September 14, 2016. Dkt. No. 1.
Allison alleges that “Fleetpride's adoption and
continued use of one or more” of its trademarks
infringes on its trademark rights because Fleetpride's
use of its trademarks falsely suggests that Fleetpride's
transmission fluid is certified or sponsored by Allison, or
is otherwise affiliated with Allison. Dkt. No. 13,
¶¶ 33-39. As such, Allison alleges that
Fleetpride's use of its trademarks constitutes trademark
infringement, unfair competition, and a false description of
goods in violation of the Lanham Act and common law.
Id. at ¶¶ 43-68.