TrueNorth Companies, L.C. v. TruNorth Warranty Plans, LLC,
No. C17-31, 2018 WL 794700 (N.D. Iowa Feb. 8, 2018)
TrueNorth sued TruNorth for trademark infringement and
dilution based on their respective marks; here the court dismisses the dilution
claim for failure to plausibly plead fame.
TrueNorth alleged that it consistently used the word
“TrueNorth” and two specific logo designs in commerce in connection with its
business since 2000. Since 2001, TrueNorth invested well over $30 million in
marketing efforts to strengthen the TrueNorth brand. It alleged that its brand was “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.” It also had three registered marks.
TrueNorth argued that it had done enough to plausibly plead
fame under Twiqbal, and cited cases
allowing minimal pleading, including a case accepting that BoatU.S. and
TowBoatU.S. were plausibly pled to be famous marks. Nope.
Dilution fame requires fame beyond a niche market. “While the pleading
standard itself is not rigorous and this type of claim is not subject to a
heightened pleading standard (such as claims that fall under Rule 9(b)), the
nature of a dilution claim itself makes it difficult to ‘state a claim to
relief that is plausible on its face.’”
Even accepting TrueNorth’s allegations, they fell well short
of plausible fame, a rigorous standard.
Allegations of $30 million in marketing efforts since 2001, with no
further details regarding the extent or geographic reach of its advertising and
publicity, were too vague. TrueNorth
alleged that it has offices in six states, provides financial and insurance
services to a wide variety of client types across the United States, and
services clients around the country, but that wasn’t enough detail in terms of
“amount, volume, and geographic extent of sales of goods or services offered under
[its] mark.”
Conclusory allegations that the brand was well-known and
recognized in the transportation industry, as evidenced by its partnerships,
were insufficient because a mark’s fame must go beyond a niche market, such as
the transportation industry. And registration alone was insufficient to
establish plausibility of dilution fame: “[o]ne cannot logically infer fame
from the fact that a mark is one of the millions on the Federal Register.” Dilution claim dismissed.
[Comment: given the similarity of the parties’ marks, is
dilution likely to be an important issue?]
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