Forest River, Inc. v. Intech Trailers, Inc.
| Docket Number | 3:21-CV-645 DRL |
| Decision Date | 15 September 2023 |
| Parties | FOREST RIVER, INC., Plaintiff, v. INTECH TRAILERS, INC., Defendant. |
| Court | U.S. District Court — Northern District of Indiana |
Forest River, Inc. sells a travel trailer under the brand name “Della Terra.” Its mark includes the name and a mountain profile design. inTech Trailers, Inc. sells a travel trailer under the brand name “Terra” that shares a mountain profile design on its trailer. Forest River sues inTech for federal and state trademark infringement and unfair competition. The company today requests summary judgment on certain claims[1] and one inTech defense. The court grants the motion only in part.
Lisa Rees formed East-to-West & North-to-South, Inc. (E2W) in 2017 [ECF 69-1 ¶ 4]. E2W began internally using the name “Della Terra” for a prototype trailer at ¶ 2W in late 2017 [ECF 69-2 at 44-45]. Ms. Rees began showing prospective customers prototypes of the trailer at that time [id. 39]. This prototype displayed the E2W brand with a mountain design [id. 44]. Though Ms. Rees says that she didn't offer to sell products at that time and only sought “feedback on how [she] was doing and if it matched the market,” dealers began placing orders for the Della Terra during this same time [id. 42 49].
inTech featured a poster at an Open House RV trade show in Elkhart Indiana in September 2017 [see 81-15 at 111, 13 (Ex 10)]. This poster said, “We're growing!!” and featured three silhouettes of travel trailers [id. 13 (Tuttle Ex. 10)]. One silhouette overlaid the word “Luna,” whereas the second featured “Sol,” and the third used “Terra” [id.]. One dealer testified that he saw the poster at the show [ECF 8112 at 39], and another said he believed he saw it at a trade show in Louisville, though he could not recall when [ECF 81-14 at 40].
According to Ms. Rees, E2W began selling Della Terra trailers with a mountain design, at latest by March 30, 2018 [ECF 69-1 ¶ 6; see also id. 8-30 (FR0515-FR0371)]. That spring, E2W began promoting the Della Terra trailer on social media and other platforms, though the posts did not feature the name “Della Terra” on the trailer [see ECF 69-3 at 10 (FR0171), 13 (FR0174)]. E2W used Sharpline Converting, Inc. to create a stylized font for the name “Della Terra” and the mountain design [ECF 69-1 ¶ 7].
On July 1, 2018, Forest River purchased substantially all of E2W's assets, “whether personal, tangible, intangible, or mixed” [ECF 71-2 at Art. 1 § 1.1 (FR0519)]. This included trademarks [id. Sch. 1.1(f)(1) (FR0528)].[2] E2W became a division of Forest River, and Ms. Rees served as the division's general manager [ECF 69-1 ¶ 8]. Forest River continued to use the Della Terra script and mountain design on trailers manufactured in Elkhart, Indiana [id.]. For instance, a YouTube video on August 2, 2018 promoted the Della Terra trailer, with only the mountain design and E2W logo on the front of the trailer, though the Della Terra script appeared in a graphic at the bottom of the video. See ForestRiverInc, 2019 East To West RV Della Terra Travel Trailer, YouTube (Aug. 2, 2018).[3] Forest River sold “dozens” of Della Terra trailers by the end of 2018 [ECF 69-1 ¶ 10].
Forest River continued to promote the Della Terra trailer through brochures, online advertising, social media, and magazines [ECF 69-1 ¶ 12]. At some point, Forest River placed the Della Terra mark, the mountain design, and the E2W logo all on the front of the trailer [id. 50 (FR0194) (showing these marks on the trailer on October 14, 2020)]. The Della Terra product line became the bestselling product line in the E2W division [ECF 69-6 at 164]. Today registered owners of Della Terra trailers reside in nearly every state in the United States and nearly every territory in Canada [ECF 69-8 at 6-7].
inTech announced to the retail public its Terra trailer on November 19, 2020 [ECF 69-15 at 33 (Ex. 13)]. The Terra trailer also features a mountain design in conjunction with the Terra mark [ECF 693 at 67 (Ex. J)]. The name and mountain design appears on the side of the Terra trailer, with inTech's name on a front plate [id. 67, 80]. No Terra mark or mountain design appeared on any physical prototypes until the 2020 launch [ECF 71 at 136]. The same company-indeed the same Sharpline representative- that designed Forest River's marks also designed inTech's marks, though he says he did not work on inTech's marks until 2020 [ECF 69-5 at 15].
On December 4, 2020, Forest River sent inTech a letter recalling its ownership of the Della Terra trademark [ECF 69-15 at 17 (Ex. 4)]. This letter responded to inTech's announced product line of Terra trailers [id.]. The letter demanded the immediate removal of the Terra name from inTech's products [id. 18]. Despite the demand, inTech shipped its first Terra trailer to a dealer on December 18, 2020 [ECF 81-16 at 49].
Forest River registered the Della Terra mark with the State of Indiana on August 18, 2021 [ECF 25-1]. Its registration identified the date of first use as March 30, 2018. On August 24, Forest River registered the mountain design with the State of Indiana, identifying a date of first use as April 23, 2018 [ECF 25-2]. Forest River applied for registration of the Della Terra mark with the United States Patent and Trademark office on August 13, 2021 [ECF 69-3 at 97 (Ex. N)]. inTech opposed this registration on July 28, 2022 [ECF 69-3 at 106 (Ex. O)]. Forest River registered the mountain design with the United States Patent and Trademark Office on October 5, 2021 [ECF 25-3]. With both parties standing their ground on their use of their respective marks, this suit followed.
Summary judgment is warranted when “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). The non-moving party must present the court with evidence on which a reasonable jury could rely to find in his favor. Weaver v. Speedway, LLC, 28 F.4th 816, 820 (7th Cir. 2022). The court must construe all facts in the light most favorable to the non-moving party, viewing all reasonable inferences in that party's favor, Bigger v. Facebook, Inc., 947 F.3d 1043, 1051 (7th Cir. 2020), and avoid “the temptation to decide which party's version of the facts is more likely true,” Payne v. Pauley, 337 F.3d 767, 770 (7th Cir. 2003); see also Joll v. Valparaiso Cmty. Schs., 953 F.3d 923, 924-25 (7th Cir. 2020).
In performing its review, the court “is not to sift through the evidence, pondering the nuances and inconsistencies, and decide whom to believe.” Waldridge v. Am. Hoechst Corp., 24 F.3d 918, 920 (7th Cir. 1994). Instead, the “court has one task and one task only: to decide, based on the evidence of record, whether there is any material dispute of fact that requires a trial.” Id. The court must grant a summary judgment motion when no such genuine factual issue-a triable issue-exists under the law. Luster v. Ill. Dep't of Corr., 652 F.3d 726, 731 (7th Cir. 2011). A triable issue precludes summary judgment. See id.
“Congress passed the Lanham Act in 1946 to ‘federalize' existing common law protection of trademarks used in interstate commerce.” CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660, 672 (7th Cir. 2001). The Lanham Act “established a federal right of action for trademark infringement to protect both consumer confidence in the quality and source of goods and businesses' goodwill in their products.” Phoenix Ent., LLC v Rumsey, 829 F.3d 817, 822 (7th Cir. 2016).
The Lanham Act prohibits, without the consent of the mark's registrant, the “use in commerce [of] any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). “The term ‘trademark' includes any word, name, symbol, or device, or any combination thereof-(1) used by a person, or (2) which a person has intention to use in commerce and applies to register on the principal register established by” the Lanham Act. 15 U.S.C. § 1127.
The Indiana Trademark Act likewise prohibits the unconsented use of a “reproduction, counterfeit, copy, or colorable imitation of a [registrant's] mark.” Ind. Code § 24-2-1-13(1). This prohibits use “in connection with the sale, offering for sale, distribution, or advertising of goods or services” or “on or in connection with which the use is likely to cause confusion or mistake, or result in deception regarding the source of origin of the goods or services.” Ind. Code §§ 24-2-1-13(1)(A), (1)(B).
“The Indiana Trademark Act is similar, and in some respects identical, to the Lanham Act.” Serenity Springs v. LaPorte Cnty. Convention & Visitors Bureau, 986 N.E.2d 314, 323 (Ind.Ct.App. 2013). Though state trademark law might be called “relatively undeveloped,” see id., the Indiana Trademark Act is meant “to provide a system of state trademark registration and protection that is consistent with the federal system of trademark registration and protection under the Trademark Act of 1946.” Ind. Code § 24-2-1-0.5. The Lanham Act and Indiana Trademark Act function consistently unless “the language of the state legislation departs significantly from its federal counterpart.” Serenity Springs, 986 N.E.2d at 325. Thus, a “judicial or an administrative interpretation of a provision of the [Lanham Act] may be considered as persuasive authority in construing a provision of” the Indiana Trademark Act. Id. at 323.
In addition to outlawing trademark infringement, the ...
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