Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

Allison Transmission, Inc. v. Fleetpride, Inc.

United States District Court, S.D. Indiana, Indianapolis Division

April 5, 2017

ALLISON TRANSMISSION, INC., Plaintiff,
v.
FLEETPRIDE, INC., Defendant.

          Caitlin R. Brandon BARNES & THORNBURG LLP (Indianapolis)

          David A. W. Wong BARNES & THORNBURG LLP (Indianapolis)

          Deborah Pollack-Milgate BARNES & THORNBURG LLP (Indianapolis)

          Stacey Cho Hernandez CARTER SCHOLER PLLC

          Joshua J. Bennett LAW OFFICES OF CARTER SCHOLER ARNOTT & MOCKLER, PLLC

          Crystal Spivey Wildeman WOODEN & MCLAUGHLIN LLP (Evansville)

          ORDER ON MOTION TO DISMISS

          LARRY J. McKINNEY, JUDGE

         This 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, [1] 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.[2] 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.

         I. BACKGROUND

         Allison 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.

         In 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.

         In May 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.

         Allison initiated this action on September 14, 2016.[3] 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.

         II. ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.