USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 1 of 19

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF INDIANA
SOUTH BEND DIVISION

FOREST RIVER, INC., ) Civil Action No.: 3:21-cv-00645-DRL-

) MGG
Plaintiff, )
v. ) Judge Damon R. Leichty
)
INTECH TRAILERS, INC., ) PLAINTIFF’S RESPONSE TO
) DEFENDANT’S ADDITIONAL
Defendant. ) STATEMENT OF MATERIAL FACTS

Pursuant to Local Rule 56-1(c)(2) of the United States District Court for the Northern

District of Indiana, Plaintiff Forest River, Inc. (“Forest River”) submits this response to Defendant

inTech Trailers, Inc.’s (“InTech”) Additional Statement of Material Facts (the “ASOMF”) (DE

80).

inTech’s Additional “Material” Facts

101. Fleetwood Enterprises, Inc. began use of the trademark TERRA on motor home RVs over

20 years ago, and obtained a U.S. Trademark Registration for that mark on April 6, 2004. Exhibit

B; Exhibit A, ¶2.

RESPONSE 101: Forest River does not dispute that inTech has attached a registration for TERRA

in connection with motor home recreational vehicles (RVs), Registration No. 2828834 (the “‘834

Registration”), or that the registrant is Fleetwood Enterprises, Inc. Forest River does not dispute

that the ‘834 Registration states a first use in commerce date of December 2000. To the extent

inTech seeks to use the ‘834 Registration, alone, to prove any actual “use” by Fleetwood

Enterprises, Inc. in connection with the sale of motor home RVs, Forest River disputes that the

‘834 Registration demonstrates “use.”

102. The Fleetwood trademark registration for TERRA is still in force and had not been cancelled
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 2 of 19

by the United States Patent and Trademark Office. Exhibit C; Exhibit A, ¶3.

RESPONSE 102: Forest River does not dispute that the ‘834 Registration is noted as “active,”

but denies that inTech’s evidentiary citation reflects the current owner of the trademark as

“Fleetwood.” Forest River further states that Fleetwood’s current website appears to reflect that

its RVs are now sold under a new corporate name, REV Group, Inc. and does not reflect any use

of TERRA on any of its motor home RVs or otherwise. (See Second Declaration of J. Gebolys

(Exhibit 1 attached hereto) at Ex. A (screen captures of Fleetwood’s website as of May 17, 2023).

103. Both the East to West business of Forest River and inTech only sell their RV trailers to RV

Dealers. Exhibit H, page 51, lines 7- 17; DE 69-6, page 18, lines 16-22; DE 69-15 at 5, subpage

13, lines 5 - 8.

RESPONSE 103: Forest River does not dispute that both East to West and inTech’s direct sales,

as manufacturers, are to RV dealers.

104. Dealers control the sale to end users of RVs and decide how the RVs they buy from Forest

River and inTech will be sold and to whom. E.g., Exhibit N, page 22, line 10 – page 25, line 11

and page 29, line 11 – page 30, line 9.

RESPONSE 104: Forest River disputes inTech’s characterization that “dealers control” sales to

end-users as unsupported by the cited testimony. The cited testimony instead shows that end-users

control what and how they buy RVs. Forest River further disputes that this evidence reflects what

“dealers” as a collective group do or do not do. The cited testimony from Mr. Hofert (President of

D&H RV Center) reflected only Mr. Hofert’s personal experiences, given that he is not an expert

in this case but rather a lay witness. (See DE 69-9, at pp. 52:25-53:19.) The same is true of the

2
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 3 of 19

other two witnesses deposed by inTech who work at dealerships, each of whom acknowledged

their testimony was based upon their personal experience as lay witnesses and not as experts on

any topic. (See Ex. 1 at Ex. B, Additional Wilson Excerpts, at p. 109; Id. at Ex. C, Additional

Hensley Excerpts, at p. 66.)

105. In September 2017, at the Open House RV trade show in Elkhart, Indiana, inTech displayed

this poster at its trade show site, showing the configuration of its TERRA trailer and the TERRA

name and stylized font logo on that Trailer:

Exhibit O, page 111, lines 17 – 20 and page 178, line 19 – page 179, line 8; Ex. 10 of Exhibit O.;

Exhibit L, page 39, lines 15 – 25; Ex. 100 of Exhibit L; Compare the photograph of DE 69-3 at 67

with the poster of Ex. 100 of Exhibit L and Ex. 10 of Exhibit O (no change in the mark or style).

RESPONSE 105: This fact is disputed and unsupported by any evidence. The cited evidence does

not establish that inTech ever displayed the poster shown at Exhibit 10 to Exhibit O (or any other

poster of its kind). inTech has provided no direct evidence of the existence of this poster in 2017

3
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 4 of 19

or its presence at the 2017 Open House in Elkhart, Indiana. As Mr. Tuttle, shareholder of inTech,

himself acknowledged, inTech has no photographs of the poster reflected in Exhibit 10 to Exhibit

O at the trade show. (See DE 81-15, p. 179:9-22.) As to Exhibit L, Mr. Hensley, an inTech dealer,

actually testified that he “thought he saw it” but failed to give any conclusive testimony. Further,

other witnesses specifically could not recall having seen the poster. (See DE 81-13, p. 32:21-23:

“Q. Do you recall seeing that particular poster before? A. No.”; Ex. 1 at Ex. B, Additional Wilson

Excerpts, at pp. 79-83, Mr. Wilson, another inTech dealer, testifying that he did not recall having

seen the poster, that he could not purchase a Terra in 2017, 2018, or 2019, and that he first recalled

hearing of inTech’s TERRA brand in 2020; Id. at Ex. D, Additional Briggs Excerpts, at pp. 126-

128, Mr. Briggs, from the parties’ graphic design company, Sharpline Converting Inc., explaining

that he was at the 2017 open house but did not recall seeing the poster and, further, that the

existence of the poster at that time “would surprise [him]” because “that looks exactly like the

[logo] I made in 2020.”; Id. at Ex. E, Additional Kowal Excerpts, at p. 17-23, 62-63, Mr. Kowal

testifying that, as inTech’s marketing manager since 2018, he was not even aware of the poster

and had never seen it until Mr. Tuttle brought the poster to inTech’s offices, shortly before Mr.

Kowal was to be deposed in 2022.) Kowal further testified that, prior to his meeting with Mr.

Tuttle, he believed Sharpline had created the TERRA mark, just as Mr. Briggs, from Sharpline,

also testified. Further, Mr. Kowal testified that he believed Mr. Tuttle said the poster was made in

“2018.”

106. RV dealers who would sell inTech products saw that poster starting in September 2017.

Exhibit L, page 39, lines 15 – 25; Ex. 100 of Exhibit L.

RESPONSE 106: This fact is disputed and unsupported by any evidence. First, inTech’s cited

4
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 5 of 19

evidence does not support the statement, as inTech’s cited evidence relates only to one RV dealer,

Mr. Hensley, who testified that he “thought he saw it” but failed to give any conclusive testimony.

Further responding, see Response 105.

107. Starting in September 2017, inTech sold and delivered RVs as a result of its pre-production

advertising of its TERRA RVs, albeit certain RVs sold at that time were other models of inTech’s

RV trailers, such as the LUNA brand trailer. See RSMF 69, particularly part c and d. thereof for

evidentiary bases, including Exhibit J, page 233, line 22 – page 234, line 19 and page 237, line 23

– page 239, line19 and page 240, lines 2 – 14; Exhibit P, page 31, lines 8- 12; Exhibit N, page 39,

line 1 – page 40, line 7; Exhibit L, page 43, line 4 – page 44, line 5; Exhibit M, page 30, line 10 –

page 31, line 5.

RESPONSE 107: This fact is disputed and unsupported by any evidence. None of the cited

evidence supports the claimed statement that “inTech sold and delivered RVs as a result of its pre-

production advertising of its TERRA RVs” and none of the cited evidence suggests that inTech

did so in September 2017. No such evidence exists. inTech has failed to submit any actual evidence

that it was conducting any such “pre-production advertising” of TERRA travel trailers and has

failed to submit any documentary evidence of such “pre-production advertising.” For example, see

DE 81-10, pp. 239:20-240:14, where inTech’s head of sales acknowledged that he had no way of

knowing why any individual dealer signed up for inTech’s line of products. Likewise, in this same

exchange, inTech’s head of sales stated that no dealer ever said to him that they were only signing

up with inTech to be able to purchase a TERRA travel trailer, at some later date. As previously

admitted by inTech in its Response to Forest River’s Statement of Material Facts (DE 79) at

5
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 6 of 19

RSOMF 72, 74, 75, inTech had no actual TERRA units to sell until 2020.

108. Starting in September, 2017, inTech signed up RV dealers to sell its full product line of RVs

because of its pre-production advertising of the TERRA RV. Exhibit J, page 37, line 10 – page

39, line 17 and page 40, line 21 – page 43, line 11; DE 69-13 at 6, subpage 25, lines 8-22; Exhibit

J, page 80, lines 10 - 25 and page 156, line 22 – page 157, line 15 and page 162, lines 13 – 24;

Exhibit P, pages 20-21 of Ex. 16 thereof and page 44, line 15 – page 65, line 4.

RESPONSE 108: This fact is disputed and unsupported by any evidence. Each of the above

citations is to testimony of inTech witnesses and none of the cited testimony reflects that a single

RV dealer “signed” up with inTech “because of its pre-production advertising of the TERRA RV.”

See Response 107. Further, the cited portion of Exhibit 16 to Exhibit P is of no evidentiary value

whatsoever and does not include any actual evidence. Exhibit P is comprised purely of

argumentative responses, akin to inadmissible attorney argument, prepared specifically for the

purpose of aiding inTech’s corporate representative during his testimony (a so-called “red book”).

inTech’s corporate representative did not testify on Exhibit P and, at most, that exhibit was only

introduced as an exhibit to the corporate representative’s deposition. Exhibit P should thus be

stricken and any statements in Exhibit P are inadmissible as hearsay under Evid. R. 801.

109. Neither the TERRA mark, including its font style, as used by inTech nor the configuration

of the RV trailer to which that mark is applied by inTech, have significantly changed since

September 2017. Exhibit J, page 106, lines 14 - 18; Compare the photograph of DE 69-3 at 67

with the poster of Ex. 100 of Exhibit L and Ex. 10 of Exhibit O.

RESPONSE 109: This fact is disputed and unsupported by any evidence, in that inTech’s use of

6
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 7 of 19

the TERRA mark in 2017-2019 has not been proven by any evidence and in that there was no “RV

trailer” on “which that mark is applied by inTech” until 2020, as admitted by inTech in response

to Plaintiff’s SOMF. (See DE 79 at Nos. 72, 74, 75.) Specifically, inTech has not supplied a single

email, photograph, invoice, sales order, or any other documentary piece of evidence that would

prove its use of the TERRA mark before 2020. In 2020, Sharpline had prepared renderings of the

TERRA that are different that inTech’s current iteration of TERRA. (See DE 69 at No. 72.)

110. Starting in sometime in 2018, Forest River (directly and/or through its predecessor in interest,

East to West and North to South, Inc.) began to sell RV trailers under the brand name DELLA

TERRA. See RSMF 8 - 9, and 17 - 19 and evidentiary citations therein.

RESPONSE 110: Forest River does not dispute this paragraph and notes that inTech identifies

East-to-West & North-to-South, Inc. (“E2W”) as Forest River’s predecessor in interest, which

Forest River likewise does not dispute.

111. However, while Forest River (directly and/or through its predecessor in interest, East to West

and North to South, Inc.) used the DELLA TERRA brand in advertising, it did not actually apply

that mark to the actual trailers under sometime after the 2019 model year began. See RSMF 8 - 9,

and 19 and evidentiary citations therein.

RESPONSE 111: This statement is factually inaccurate and thus disputed by Plaintiff, although

Forest River notes there is no real “dispute” that this statement is inaccurate. See Ex. 1 at Ex. G,

and ¶9, plainly reflecting both E2W’s and Forest River’s uses of the DELLA TERRA mark on

physical trailers before and immediately after Forest River’s purchase of E2W.

112. On or about December 18, 2020, inTech shipped its first production unit RV trailer bearing

7
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 8 of 19

the TERRA name to an RV dealer. Exhibit P, page 21 of Ex. 16 therein and page 44, line 15 –

page 65, line 4.

RESPONSE 112: Forest River does not dispute this fact.

113. Prior to that shipment date, on December 4, 2021, Forest River sent a demand letter to inTech

accusing it of infringing upon Forest River’s OASIS and DELLA TERRA trademarks. Exhibit 4

to to Ex. X (Maxwell dep).

RESPONSE 113: Forest River does not dispute this fact.

114. In that demand letter, Forest River represented to inTech that it was still using the OASIS

trademark, showing a photo of a “2021 Forest River Shasta Oasis 21RB” as Exhibit A to that letter,

evidencing current use. DE 69-15 at 19 (photograph at top of page).

RESPONSE 114: This is disputed and unsupported by any evidence. Plaintiff’s demand letter

speaks for itself but clearly shows that Forest River only represented that it was the owner of the

“SHASTA OASIS” and DELLA TERRA marks. Further answering, Forest River does not dispute

that the demand letter includes a third-party photograph titled “2021 Forest River Shasta Oasis

21RB.”

115. However, that representation was false in that Forest River had ceased all use of OASIS

several years earlier and had never made a 2021 Forest River Oasis 21 RB product. DE 69-16 at

4, subpage 13, lines 2-9.

RESPONSE 115: This is disputed. Nothing Forest River stated in its demand letter was false and

the cited evidence does nothing to suggest that it was. Forest River does not dispute that its

8
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 9 of 19

products stopped being outwardly branded with the “OASIS” mark after 2018. (See DE 69-16 at

pp. 16-17, wherein Shasta’s corporate representative explains that while Shasta no longer markets

its trailers as “Shasta Oasis” models, its licenses and titles still refer to units as “Shasta Oasis.”)

116. Thereafter, the parties engaged in correspondence and discussion over several months to

attempt to resolve the dispute, during which inTech voluntarily dropped its use of OASIS,

regardless of the false representation by Forest River. Exhibit D; Exhibit A, ¶4.

RESPONSE 116: Forest River does not dispute that the parties engaged in discussions over

several months in an attempt to resolve the dispute. As explained in Response 115, Forest River

disputes that it made any false representation to inTech regarding OASIS. Further, Forest River

disputes that inTech “voluntarily dropped its use of OASIS” during these discussions, as Plaintiff’s

use of OASIS continued (despite its representations to the contrary) on its website well into 2022.

(See DE 69-13, pp. 166-171.). Regardless, these facts should be stricken as inadmissible under

Evid. R. 408.

117. Nonetheless, Forest River filed this lawsuit against inTech on August 31, 2021. Docket

Entry No. 1 (“DE 1") in this lawsuit.

RESPONSE 117: Forest River does not dispute this.

118. In actual practice, purchasers of DELLA TERRA products do not abbreviate the mark to

either DELLA or TERRA when describing the product. Exhibit M, page 37, line 12 - page 38,

line 4.

RESPONSE 118: Forest River disputes this as unsupported by any evidence, specifically the cited

9
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 10 of 19

evidence, which merely shows that a single individual—a dealer, Robert Wilson—does not

abbreviate the marks when describing the products. inTech’s citation to Exhibit M does not

demonstrate that “purchasers” as a whole do not abbreviate DELLA TERRA.

119. inTech and its dealers market the TERRA products in close association with its LUNA and

SOL products, creating an astrometric or astronomy connotation. DE 26 at 26, parg. 7 insert;

Exhibit J, page 205, lines 22 - 25 and page 207, lines 14 - 15.

RESPONSE 119: Forest River disputes this as unsupported by any evidence. The cited evidence

merely reflects testimony from inTech’s sales manager about his thought process in coming up

with possible names for what eventually became the TERRA in May of 2020. That testimony

includes his comments regarding a conversation with a dealer selling inTech products to whom

Mr. Fishburn, inTech’s sales manager, stated (again, in May of 2020) “I’m not in love with the line

name Terra.” The cited testimony says nothing at all of how inTech or its dealers “market the

TERRA products…”

120. In the marketplace each party puts it own business name alongside of the mountain logos

and word marks when the marks are on the products and on advertising. DE 69-3 at 17 (top

photograph), at 67 (inTech name on brochure and at front plate on vehicle adjacent propane tank

location), at 80 (lower right photo showing more clearly the inTech name on the front plate), at 81

(the inTech name shown silver on silver at the front plate); Exhibit J, page 9 of Ex. 7 therein.

RESPONSE 120: Forest River does not dispute that the cited evidence reflects East-to-West’s

name in combination with the Forest River Mountain Design and DELLA TERRA, but disputes

that all of its uses of the marks are so combined. (See, e.g., DE 69-3, pp. 43, 47, 51, 64, where the

10
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 11 of 19

Forest River Mountain Design is not combined with the business name or DELLA TERRA; see,

e.g., Ex. 1 at ¶9, Ex. F, and Ex. G, and DE 69-3, p. 38, 46 where DELLA TERRA appears by itself

on trailers and other promotional materials) Forest River disputes that inTech’s statements

regarding the TERRA are accurate and notes that in none of inTech’s cited images is inTech’s

name “alongside” its mountain logo or TERRA. Instead, “inTech” is shown only on the bottom-

front side of the unit.

121. In the market place, consumers are used to seeing a wide variety of travel trailers and other

RVs who use the same words as part of the brand name. Exhibit L, page 36, line 23 - page 37, line

15; Exhibit N, page 33, line 21 - page 35, line 20.

RESPONSE 121: Forest River disputes this statement as unsupported by any evidence,

specifically the cited evidence. None of the cited evidence comes from end-user consumers or

refers to what end-users are “used to seeing” or constitutes a survey of consumers by an expert

witness. To the extent inTech means to refer to the two specific RV dealers testifying in the cited

exhibits (in Exhibit L, Mr. Hensley; in Exhibit N, Mr. Hofert), Forest River does not dispute that

those witnesses testified to having seen some RVs with similar words as part of their brand names,

generally.

122. Many RVs are made with a variety of different mountain graphics, which, if noticed at all,

are considered by RV purchasers to be decorations rather than trademarks. Exhibit M, page 54,

line 6 - page 55, line 25; Exhibit N, page 37, line 9 - page 38, line 10 and page 63, line 23 - page

65, line 17; Exhibit L, page 38, line 5 - page 39, line 14.

RESPONSE 122: Forest River disputes this statement as unsupported by any evidence,

11
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 12 of 19

specifically the cited evidence. The cited evidence includes no evidence of “different mountain

graphics.” None of the cited evidence comes from end-user consumers or refers to what end-users

“consider.” None of the cited evidence is a survey of consumers on “different mountain graphics.”

To the extent inTech means to state that specific RV dealers testifying in the cited exhibits (Exhibit

L, Mr. Hensley; Exhibit N, Mr. Hofert; Exhibit M, Mr. Wilson) testified to having viewed

mountain graphics on RVs, Forest River does not dispute that limited fact.

123. In the marketplace, consumers typically purchase the travel trailer with the close assistance

of a knowledgeable dealer. Exhibit N, page 22, line 10 – page 25, line 11 and page 29, line 11 –

page 30, line 9, for example. Exhibit M, page 44, lines 4 – 20.

RESPONSE 123: Forest River disputes this statement as unsupported by any evidence,

specifically the cited evidence. None of the cited evidence includes any testimony regarding how

“consumers typically purchase” travel trailers. Further, the testimony cited reveals only the

experiences of three lay persons, each of whom is an RV dealer and not an end-user consumer.

124. Forest River adopted the DELLA TERRA font AFTER inTech used that font for its TERRA

travel trailer announcement at the September 2017 Open House. Exhibit O, page 111, lines 17 –

20 and page 178, line 19 – page 179, line 8; Ex. 10 of Exhibit O.; Exhibit L, page 39, lines 15 –

25; Ex. 100 of Exhibit L; RSFM 3.

RESPONSE 124: Forest River disputes this statement as both unsupported by any evidence and

specifically the cited evidence, and for the reasons set forth in Responses 105 and 109, as well as

its own SOMF and the supporting evidence thereto. (See DE 69, at Nos. 3-10, 17-36, and 72-76.)

12
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 13 of 19

125. Forest River knew that Fleetwood had been using the TERRA name for RVs prior to East to

West, and that those Fleetwood TERRA RVs were still being sold at least in the used RV market,

and yet Forest River still adopted and used the DELLA TERRA trademark to sell RVs despite the

potential likelihood of confusion. Exhibit K, page 65, line 16 - page 67, line 15.

RESPONSE 125: Forest River disputes this statement as argumentative (to the extent it interjects

the suggestion of a discussion of “likelihood of confusion” that does not exist in the cited

testimony) and unsupported by any evidence and specifically the cited evidence. Forest River does

not dispute that the cited testimony reflects Lisa Rees’ (an employee of Forest River) knowledge

regarding the existence of a company named Fleetwood that “used to build a Class A gas

motorhome called a Terra” which, to her knowledge ,“they don’t currently manufacture” anymore.

Ms. Rees does also testify that she believes there may be some “used” Fleetwood Terra units “on

the used market.” Forest River further states that Ms. Rees’ belief on this topic does nothing to

establish the existence of any underlying facts and that Fleetwood is not selling motor home RVs

under TERRA. (See Ex. 1, at Ex. A.)

126. Forest River decided there was no likelihood of confusion sufficient to tread on Fleetwood’s

trademark rights in the TERRA band name because Fleetwood’s RVs were in a different segment

of the RV market. Exhibit K, page 72, line 12 - page 73, line 12.

RESPONSE 126: Forest River disputes this statement as argumentative (to the extent it interjects

the suggestion of a discussion of “likelihood of confusion” that does not exist in the cited

testimony) and unsupported by any evidence and specifically the cited evidence. Forest River does

not dispute that Ms. Rees’ testimony includes her statement that “motorhome is in a different

segment. It’s a motorhome. It’s not a travel trailer,” such as those sold by the parties, or that Ms.

13
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 14 of 19

Rees’ testified that Forest River is not paying any royalty to Fleetwood for use of DELLA TERRA.

127. RV dealers physically separate travel trailers of different market segments on their dealership

lots, Exhibit L, page 29, line 20 - page 31, line 19, and that is done to build “brand awareness”

among RV end users, Exhibit M, page 38, line 5 - page 39, line 16 and page 92, line 9 - 15.

RESPONSE 127: Forest River disputes this statement as unsupported by the cited evidence,

which does not say anything of how “RV dealers” generally operate. Further, Mr. Hensley (in

Exhibit L) only testifies that East to West products are “not typically” placed right next to inTech

products on his lot. (See id. at p. 29:20-23.) Forest River does not dispute that the witnesses

testified about their specific dealership lots and opinions.

128. RV dealers inform RV end users about the differences between manufacturers. Exhibit N,

page 29, line 21 - page 30, line 9.

RESPONSE 128: Forest River disputes this statement as unsupported by the cited evidence,

which does not say anything of how “RV dealers” generally operate. Forest River does not dispute

that the cited evidence reflects the testimony of one dealer, Mr. Hofert, who testified that he does

explain differences between manufactures “under normal circumstances.”

129. inTech has gone out of its way to make its LUNA/SOL/TERRA product lines bear a common

family resemblance, the “tilt forward” front end with a predominant window, which is completely

visually distinct from any other travel trailers, even at a substantial distance and even without

seeing any word branding or logos on the products. Exhibit M, page 35, lines 9-21; Exhibit L,

page 34, line 13 – page 35, line 3; Exhibit N, page 26, line 16 – page 27, line 14; DE 26 at 26,

14
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 15 of 19

parg. 7; Exhibit J, page 67, line 21 – page 68, line 19 and page 91, line 16 – page 92, line 11, and

page 102, line 25 – page 103, line 11; Compare also trailer photos of DE 69-3 at 67 and 76 with

the trailer photos of DE 69-3 at 10 and 17; Exhibit M, page 93, line 8 – page 94, line 12.

RESPONSE 129: Forest River disputes this statement as unsupported by any evidence and,

specifically, by the cited evidence, which reflects that Mr. Wilson, Mr. Hofert, and Mr. Hensley

testified that they—inTech RV dealers—can distinguish inTech trailers. To this point and for

example, Forest River notes that Mr. Hensley’s testimony includes the statement that “[t]here’s

technical things that I can see that other people can’t” when he was asked if he could tell a Terra

unit from far away. (DE 81-12, p. 34:21-23). None of the above-cited exhibits demonstrate that

inTech “has gone out of its way” to make “its LUNA/SOL/TERRA product lines bear a common

family resemblance.”

130. When a prospective RV end user comes into an RV dealership they are often assigned a

salesperson who is physically with them in the purchase inquiry process, including product walk-

throughs. Exhibit N, page 23, lines 8 - 19.

RESPONSE 130: Forest River disputes this statement as unsupported by the cited evidence,

which does not say anything of how “RV dealers” generally operate. Forest River does not dispute

that the cited evidence reflects the testimony of one dealer, Mr. Hofert, who testified that his

dealership does this.

131. Three dealer witnesses have testified in this case, Mr. Hensley, Mr. Wilson, and Mr. Hofert,

who each sell both Terra and Della Terra products. Exhibit L, page 11, line 20 - page 13, line 3;

Exhibit M, page 24, lines 15 - 22; Exhibit N, page 9, line 19 - page 10, line 5, respectively.

15
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 16 of 19

RESPONSE 131: Forest River does not dispute this fact.

132. In the past three years, Mr. Hofert sold 550-600 RVs per year. Exhibit N, page 10, line 18 -

page 11, line 1.

RESPONSE 132: Forest River disputes this fact as inaccurate because Mr. Hofert’s cited

testimony relates to how many RVs he purchases per year, not how many he sells per year.

133. The instances of people coming into Mr. Hofert’s dealership having done no research and

wanting an RV right now is 3-5 times per year. Exhibit N, page 31, line 14 - page 32, line 17.

RESPONSE 133: Forest River disputes this fact as inaccurate because that is not what Mr. Hofert

testified. Instead, Mr. Hofert testified, as cited, that people “come in and say, ‘I’m going camping

this weekend and want an RV’” three to five times a year.

134. Others have used or sought to use the mark DELLA TERRA on a variety of goods. Exhibit

P, page 102 of Ex. 16 thereof (showing a U.S. Patent and Trademark Office TESS report for

DELLA TERRA of which the Court may take judicial notice); Exhibit A, ¶9; compare Exhibit S,

page 29, lines 3 - 11 (Mr. Franklyn doing TESS research incident to his survey).

RESPONSE 134: Forest River does not dispute that the evidence referenced shows other

registrations for DELLA TERRA on different goods, but disputes that these registrations represent

evidence of actual uses of marks in commerce by the purported owners of the registrations. inTech

submits no evidence on sales of products by the purported owners of the registrations.

16
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 17 of 19

135. The “suggestion” of “DELLA TERRA meaning ‘of the earth’ in Italian” was widely

promoted by Forest River. RSMF 15 (see Forest River assertions); Exhibit H, page 74 and page 3

of Ex. 28 thereof.

RESPONSE 135: Forest River does not dispute that the Italian translation of the words DELLA

TERRA is mentioned in certain of its promotional materials.

136. Purchasers of travel trailers do not mention or refer to the products by use of the mountain

logo when buying the goods. Exhibit M, page 55, lines 17 - 25; Exhibit N, page 38, lines 5 - 10.

RESPONSE 136: Plaintiffs disputes this statement as unsupported by any evidence and

specifically the cited evidence, which instead only shows that Mr. Wilson (Exhibit M) and Mr.

Hofert (Exhibit N) – two dealer purchasers of travel trailers – do not place orders by reference to

decorative graphics. Forest River does not dispute those two individuals testified as such, and does

not dispute that Mr. Wilson testified that consumers have not come into his dealership asking for

a “mountain travel trailer.”

137. Forest River’s mountain logo has always been used adjacent to the EAST TO WEST name

as if a composite mark with that name. DE 69-1 at 8, 14, 20, 24, 31, and 38.

RESPONSE 137: This statement is blatantly inaccurate and, thus, disputed. (See, e.g., DE 69-3,

pp. 43, 47, 51, 64; Ex. 1 at Ex. F).

138. Mr. Franklyn demonstrated evasiveness and obfuscatory conduct in deposition. E.g., Exhibit

S, page 13, line 5 - page 20, line 24 (when asked about how much confusion was significant).

RESPONSE 138: Forest River disputes this fact as unsupported by the cited testimony and,

17
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 18 of 19

regardless, as immaterial to this motion. This “fact” should thus be stricken.

DATED: May 18, 2023

Respectfully submitted,

s/ Philip R. Bautista
Philip R. Bautista (Ohio Bar No. 0073272)
pbautista@taftlaw.com
JoZeff W. Gebolys (Ohio Bar No.0093507)
(admitted pro hac vice)
jgebolys@taftlaw.com
TAFT STETTINIUS & HOLLISTER LLP
200 Public Square, Suite 3500
Cleveland, Ohio 44114
Phone: (216) 241-2838
Fax: (216) 241-3707

Tracy N. Betz (Indiana Atty. No. 24800-53)

tbetz@taftlaw.com
TAFT STETTINIUS & HOLLISTER LLP
One Indiana Square, Suite 3500
Indianapolis, Indiana 46204
Phone: (317) 713-3544
Fax: (317) 715-4535

Counsel for Plaintiff, Forest River, Inc.

18
 USDC IN/ND case 3:21-cv-00645-DRL document 83 filed 05/18/23 page 19 of 19

CERTIFICATE OF SERVICE

I hereby certify that on May 18, 2023 the foregoing was filed electronically. Notice of this

filing will be sent to all parties by operation of the Court’s electronic filing system, and parties

may access this filing through the Court’s system.

s/ Philip R. Bautista
Philip R. Bautista (Ohio Bar No. 0073272)

Counsel for Plaintiff, Forest River, Inc.

19