United States District Court, N.D. Iowa, Cedar Rapids Division
TRUENORTH COMPANIES, L.C.; TRUENORTH PRINCIPALS, L.C., Plaintiffs,
TRUNORTH WARRANTY PLANS OF NORTH AMERICA, LLC, Defendant.
MEMORANDUM OPINION AND ORDER
Leonard T. Strand, Chief Judge
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).
FACTUAL AND PROCEDURAL BACKGROUND
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:
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.
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.
following allegations from TrueNorth's amended complaint
(Doc. No. 44) are relevant to Count III and TN Warranty's
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,
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.
TRUENORTH'S PROCEDURAL OBJECTIONS
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).
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
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
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 ...