United States District Court, S.D. Indiana, Indianapolis Division
ORDER ON MOTION TO DISMISS COUNTERCLAIMS
J. McKINNEY, JUDGE United States District Court Southern
District of Indiana
matter comes before the Court on Plaintiff Allison
Transmission, Inc.'s (“Allison's”),
Motion to Dismiss Counterclaims (the “Motion”).
Dkt. No. 52. Allison argues that Defendant Fleetpride, Inc.
(“Fleetpride”), lacks standing to support its
counterclaims to invalidate a certification mark owned by
Allison. Id. at ¶¶ 1-2. Allison also seeks
to dismiss Fleetpride's counterclaim seeking declaratory
judgment for non-infringement because it is duplicative of
Allison's infringement claim in its Second Amended
Complaint. Id. at ¶ 3. For the foregoing
reasons, the Court GRANTS in part and DENIES in part
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. 43, ¶ 8. 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. Allison also registered five design marks for
use in relation to its automatic transmission products, all
of which incorporated at least one of the Allison Standard
Character 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 for a standard
character, certification mark in “TES 295” (the
“TES 295 Standard Character Mark”) and two design
marks, both of which include the TES 295 Standard Character
Mark and at least one of the Allison Standard Character Marks
(collectively with the TES 295 Standard Character Mark, the
“TES 295 Marks”). Id. at ¶ 12.
Before obtaining a license to use the TES 295 Marks, Allison
requires each licensee to first demonstrate that its
transmission fluid meets Allison's strict requirements
for obtaining TES 295 certification. Id. at ¶
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. As an example, Allison attached Exhibit C to its
Second Amended Complaint, which depicts a Fleetpride
transmission fluid container label (the “Primatech
Label”) that states the product is “suitable for
use in Allison Transmissions for extended drain” and
lists its product number as “PTATF-TES295-G.”
Id. at Ex. C. Although Allison requested that
Fleetpride cease and desist its use of Allison's marks,
Fleetpride refused, believing that its use of Allison's
marks was a non- infringing, fair use. Id. at
¶¶ 21, 24. Fleetpride continues to employ
Allison's marks in relation to its transmission fluid
products. Id. at ¶ 27.
alleges that “Fleetpride's adoption and continued
use” of the Allison Standard Character Marks and the
TES 295 Standard Character Mark infringes on all of
Allison's trademark rights because Fleetpride's use
of its marks falsely suggests that Fleetpride's
transmission fluid is certified or sponsored by Allison, or
is otherwise affiliated with Allison. Id. at
¶¶ 28-38. As such, Allison claims that
Fleetpride's use of its marks constitutes trademark
infringement, unfair competition, and a false description of
goods in violation of the Lanham Act and common law.
Id. at ¶¶ 39-66.
April 26, 2017, in response to Allison's Second Amended
Complaint, Fleetpride filed its Answer and Counterclaim, in
which it asserts three counterclaims against Allison (the
“Counterclaims”). Dkt. No. 47. In Counterclaims I
and II, Fleetpride seeks to invalidate Allison's TES 295
Marks, in accordance with 15 U.S.C. § 1064. Id.
at ¶¶ 95-137. Fleetpride similarly alleges as
affirmative defenses that the TES 295 Marks are invalid.
Id. at ¶¶ 74-76. Fleetpride asserts that
invalidation of the TES 295 Marks is appropriate because
Allison improperly produced and marketed an automatic
transmission fluid using the TES 295 Marks and because
Allison discriminately refused to certify products meeting
the TES 295 certification standards. Id. at
¶¶ 74-76, 95-137.
in Counterclaim III, Fleetpride requests declaratory judgment
that it has not infringed upon any of Allison's marks.
Id. at ¶¶ 138-142. In support of this
counterclaim, Fleetpride attached the label it currently uses
for its private label automatic transmission fluids, now
branded as “OTR” (the “OTR Label”).
Id. at ¶ 138; Ex. 8. The front of the OTR Label
states that OTR is “suitable for use in Allison
Transmissions for extended drain.” Id. at Ex.
8. The back of the OTR Label further indicates that OTR is
“suitable for use in applications where the OEM
specifies a fluid providing performance capability comparable
to Allison TES 295® specification” but notes that
OTR “is not certified by Allison Transmission
under the TES 295® specification.” Id.
Unlike the Primatech Label, the product number on the OTR
Label, “PTATF-SSP-G, ” does not include any
reference to “TES 295.” Id.
seeks to dismiss the Counterclaims, pursuant to Federal Rules
of Civil Procedure (the “Rules”) 12(b)(1) and
12(b)(6). Dkt. No. 52. Specifically, Allison asserts that
Fleetpride lacks sufficient standing to seek invalidation of
the TES 295 Marks in Counterclaims I and II because
Fleetpride never sought TES 295 certification. Dkt. No. 53 at
2-6. Furthermore, Allison argues that Counterclaim III should
be dismissed under Rule 12(b)(6) because Fleetpride's
claim of non-infringement serves “no useful
purpose” in light of Allison's initial claim of
infringement. Id. at 6-7.
COUNTERCLAIMS I AND II: INVALIDATION UNDER 15 U.S.C.
§§ 1064(3) & (5)
respect to Counterclaims I and II, Allison argues that
Fleetpride lacks standing under 15 U.S.C. §§
1064(3) and 1064(5)(B) & (D). Dkt. No. 53 at 2-6. In
response, Fleetpride asserts that it has sufficient standing
to invalidate the TES 295 Marks because Allison first
asserted its claims against Fleetpride for infringement of
those marks. Dkt. No. 56 at 7-8.
motion to dismiss for lack of standing constitutes a
challenge to the Court's subject matter jurisdiction
under Rule 12(b)(1). See Scanlan v. Eisenberg, 669
F.3d 838, 841 (7th Cir. 2012). When ruling on a motion to
dismiss under Rule 12(b)(1), the Court must accept “as
true all facts alleged in the well-pleaded complaint and
[draw] all reasonable inferences in favor of the
plaintiff.” Id. The party invoking the
Court's jurisdiction bears the burden of establishing
that the Court has proper jurisdiction of the case. See
Lujan v. Defs. of Wildlife, 504 U.S. 555, 561 (1992).
The Court may view any evidence submitted beyond the
jurisdictional allegations within a complaint to determine
whether the Court has subject matter jurisdiction over a
claim. See Apex Digital, Inc. v. Sears, Roebuck &
Co., 572 F.3d 440, 444 (7th Cir. 2009).
motion to dismiss challenges a plaintiff's standing, the
plaintiff bears the burden of demonstrating it has:
“(1) suffered an injury in fact, (2) that is fairly
traceable to the challenged conduct of the defendant, and (3)
that is likely to be redressed by a favorable judicial
decision.” Spokeo, Inc. v. Robins, 136 S.Ct.
1540, 1547 (2016). “To establish injury in fact, a
plaintiff must show that he or she suffered ‘an
invasion of a legally protected interest' that is
‘concrete and ...