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TrueNorth Companies, L.C. v. Trunorth Warranty Plans of North America, LLC

United States District Court, N.D. Iowa, Cedar Rapids Division

February 8, 2018

TRUENORTH COMPANIES, L.C.; TRUENORTH PRINCIPALS, L.C., Plaintiffs,
v.
TRUNORTH WARRANTY PLANS OF NORTH AMERICA, LLC, Defendant.

          MEMORANDUM OPINION AND ORDER

          Leonard T. Strand, Chief Judge

         I. INTRODUCTION

         This case is before me on a motion (Doc. No. 50) for judgment on the pleadings on Count III (Mark Dilution) by defendant TruNorth Warranty Plans of North America, LLC (TN Warranty). Plaintiffs TrueNorth Companies, L.C., and TrueNorth Principals, L.C. (collectively TrueNorth), have filed a resistance (Doc. No. 51) and TN Warranty has filed a reply (Doc. No. 54). I find that oral argument is not necessary. See Local Rule 7(c).

         II. FACTUAL AND PROCEDURAL BACKGROUND

         TrueNorth filed its original complaint (Doc. No. 2) on March 28, 2017, alleging two counts of trademark infringement, one count of mark dilution, one count of false designation of origin and one count of mark infringement under Iowa law based on the parties' respective design logos:

         Plaintiffs': (Image Omitted)

         Defendant's: (Image Omitted)

         On June 8, 2017, defendants (at that time consisting of TN Warranty and its sole member, William Eskridge) filed a motion to dismiss for lack of personal jurisdiction. See Doc. No. 20. I granted the motion as to defendant Eskridge and denied it as to TN Warranty. See Doc. No. 40.

         On November 3, 2017, TrueNorth filed a motion (Doc. No. 42) to amend its complaint. Chief United States Magistrate Judge C.J. Williams granted the motion on November 27, 2017, and the amended complaint was filed that same day. See Doc. Nos. 43 and 44. The amended complaint alleges two new counts: Count VI for false advertising under the Lanham Act and Count VII for unfair competition under the Lanham Act and common law. The parties then submitted a joint motion (Doc. No. 47) for revised deadlines, which Judge Williams granted. See Doc. Nos. 47, 48. TN Warranty filed its answer (Doc. No. 49) to the amended complaint and the instant motion (Doc. No. 50) on December 21, 2017.

         The following allegations from TrueNorth's amended complaint (Doc. No. 44) are relevant to Count III and TN Warranty's motion:

13. TrueNorth has consistently used the word “TrueNorth” and two specific logo designs in commerce in connection with its business since its inception in 2000. Specifically, TrueNorth's first use in commerce of the trade word “TrueNorth” and its logo with the “TrueNorth” name and compass design was on September 1, 2000. TrueNorth's first use in commerce of an “N” with a compass design was on November 1, 2000.
14. TrueNorth has spent con3siderable resources developing and utilizing its TrueNorth mark and the two logo designs. Since establishing the brand in 2001, TrueNorth has invested well over $30 million in marketing efforts to strengthen the TrueNorth brand, both locally and nationally.
15. The TrueNorth national brand is well-known and recognized in the transportation industry as a leader in insurance and financial strategies, as evidenced by TrueNorth's partnerships with some of the nation's leading motor carriers, as well as TrueNorth's work with transportation associations such as the American Trucking Association (ATA) & Truckload Carriers Association (TCA).
16. By virtue of extensive advertising and sales of its services thereunder, TrueNorth's marks have become well and favorably known to the public and have become valuable symbols of TrueNorth's business and goodwill.
17. The services provided under TrueNorth's Trademarks include, among others, the offering of insurance coverages and other specialized products and services to commercial transportation companies as well as individual drivers, most of which are related to risk reduction. Certain coverages provide protection against damage to property.

Doc. No. 44 at 3-4. TrueNorth also alleges it has three marks registered with the United States Patent and Trademark Office (USPTO). Id. at 4-5.

         III. TRUENORTH'S PROCEDURAL OBJECTIONS

         The parties disagree about whether the motion may be decided under either Rule 12(b)(6) or Rule 12(c), or whether it is procedurally barred by Rule 12(g)(2). The motion is titled as a motion “for judgment on the pleadings on Count III.” Doc. No. 50. A motion for judgment on the pleadings is governed by Rule 12(c). See Fed. R. Civ. P. 12(c). However, TN Warranty's motion and brief both invoke Rule 12(b)(6), which addresses a motion to dismiss for failure to state a claim upon which relief may be granted. See Fed. R. Civ. P. 12(b)(6). In its reply, TN Warranty argues that I can grant its motion under either Rule 12(b)(6) or Rule 12(c).

         TrueNorth argues that the motion is procedurally improper for several reasons. First, because TN Warranty previously moved for dismissal under Rule 12(b)(2), TrueNorth argues that the present motion is precluded under Rule 12(g)(2). That rule requires parties to bring all Rule 12(b) motions together to avoid piecemeal pre-answer motions. See Fed. R. Civ. P. 12(g)(2) (“Except as provided in Rule 12(h)(2) or (3), a party that makes a motion under this rule must not make another motion under this rule raising a defense or objection that was available to the party but omitted from its earlier motion.”). Second, TrueNorth argues that I cannot enter judgment on the pleadings because the pleadings are not closed. It points out that TN Warranty did not answer the allegations pertaining to Count III but instead stated as follows:

TNWarranty is moving to dismiss Count III for failure to state a claim pursuant to Rule 12(b)(6) such that no answer is required at this time. To the extent any of the allegations in Paragraphs 88 to 103 contain allegations of fact relevant to other counts, TNWarranty denies the allegations.

Doc. No. 49 at 21. Finally, TrueNorth argues that TN Warranty's motion is untimely because the amended complaint did not reset the time for ...


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