USDC IN/ND case 3:21-cv-00645-DRL document 101 filed 10/13/23 page 1 of 5

UNITED STATES DISTRICT COURT

Northern District of Indiana
South Bend Division

FOREST RIVER, INC., )

)
Plaintiff, )
) CASE NO.: 3:21-cv-645-DRL-MGG
v. )
)
INTECH TRAILERS, INC., )
) JURY TRIAL DEMAND
Defendant. )

DEFENDANT’S MOTION TO AMEND ORDER OF DOCKET ENTRY NO. 89

Pursuant to Fed. R. Civ. P. 46 and 52(b), inTech objects to the Court’s Order of September

15, 2023 (Docket Entry No. 89, or “DE 89" as referred to herein), and requests specific amendment

thereto. In particular, on page 9 of the Order, the Court stated as a conclusion of law that “[n]o

reasonable jury could find that inTech was the first user of the Terra mark.” In the context that

statement was made, and as a matter of even the Court’s logic, that statement was plainly erroneous

or unduly ambiguous. What the Court should have said, using its own conclusions of law and fact,

was that “no reasonable jury could find that inTech used the Terra trademark before Forest River

used the Della Terra trademark.” Correction is requested in order to avoid confusion and to

streamline the issues for any necessary appeal.

Relevant Background Facts:

In its “Response Brief in Opposition to Plaintiff’s Partial Motion for Summary Judgement”

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(DE-78), inTech pointed out as a matter of prior case law that “if the defendant was the first user of

the accused trademark, the defendant’s use cannot have caused the likelihood of consumer

confusion.” DE-78 at page 7. Thereafter, and separate from its analysis of the likelihood of

confusion factors, inTech applied that rule of law to the facts of this case, arguing that “[w]ith

respect to Forest River, inTech was the senior user of both the word TERRA and the font used for

that mark.” DE-78 at page 22. Concluding that analysis, inTech asserted that “even if there is a

likelihood of confusion, Forest River is not entitled to judgement as a matter of law because it fails

to show that the likelihood of confusion was caused by inTech.” DE-78 at page 23.

The Court did not accept that argument in the Order of DE-89, finding instead that as a

matter of law that the “use” which would have qualified for trademark purposes requires a “vendible

article in the market” followed by continuous public use of that article. DE-78 at pages 8-9. The

Court made a finding of fact that “the Della Terra brand name (and mountain design mark) on the

trailer appeared on October 14, 2020 – before inTech’s public launch of the Terra line in November

2020.” DE-78 at page 9. At that point, and in the context of “[t]he question today is whether a

reasonable jury could find that Forest River lacks a protectable interest in its Della Terra and

mountain design marks,” DE-89 at page 8, the Court then determined as a matter of law that “[n]o

reasonable jury could find that inTech was the first user of the Terra mark.”

Analysis of the Issue Presented:

The problem inTech has with that particular legal conclusion is twofold. First, the finding

of facts and legal analysis which led to it was erroneous, but that is an appealable issue for which

objection is automatically preserved anyway in the event that appeal is needed. Secondly, and for

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resolution in the present motion, the legal conclusion is either clearly in error by the Court’s own

analysis or at the very least ambiguous and prejudicial to inTech if that ambiguity is not resolved.

The clear error arises because it is not an issue in this case as to who the “first user of the

Terra mark” was. Forest River did not claim to be the first user of the Terra mark. Instead, Forest

River contends that it used the Della Terra mark as trademark prior to inTech using the Terra mark

as a trademark, and previously inTech claimed the reverse.1 Forest River has never asserted that it

has ever used the Terra mark. Similarly, inTech has never asserted that it was the first user of the

Terra mark. In fact, inTech asserted that Holiday Rambler was the first user of the Terra mark for

recreational vehicles, although the court has determined that Holiday Rambler’s prior use is not a

specific defense which can be raised by inTech to deny Forest River a protectable interest in the

Della Terra mark. DE-89 at page 10.

Thus, the ambiguity arises. If the Court is suggesting that the issue of who was the first user

of the Terra mark matters in this case, that can only be true, as a matter of simple logic, if Forest

River’s use of the Della Terra mark gives it trademark rights which are broad enough in scope to

cover a competitor’s use of a Terra mark. However, that scope of those rights can only be

determined via the likelihood of confusion analysis, which has not been made as yet. Indeed, the

Court has determined that a reasonable jury could find in inTech’s favor in that regard. DE 89 at

page 25. Thus, there has a yet been no determination that using the Della Terra mark gives Forest

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The adverb “previously” being used hereto to denote that while inTech contends the
Court made a reversible error in its decision in that regard, for purposes of the remainder of this
case before the District Court, inTech must accept that ruling as the current “law of the case.”
Accordingly, any further argument by inTech with respect to its use of the mark Terra to describe
its additional line of travel trailers will be in the context of gauging the relative “strength” of the
Della Terra mark in terms of its degree of “distinctiveness” and inTech’s intent or alleged
“wilfulness” in using that mark after Forest River sent its demand letter.

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River any first use rights with respect to the Terra mark.

However, to make the statement that no reasonable jury could find that inTech was the first

user of the Terra mark in the context of a discussion of whether Forest River has a protectable

trademark is to suggest that the Court has determined that Forest River has priority rights in the Terra

mark as well as the Della Terra mark. Indeed, in discussions between the parties since the Order of

DE-89, that is the position that Forest River is now taking, and it expected that Forest River will

make that assertion at trial. See, e.g., DE-98 at page 2.

The mark Della Terra is a composite mark having two components, the word Della and the

word Terra. As a matter of black letter law, trademark rights in a composite mark do automatically

convey trademark rights in the separate components of that composite mark. Instead, “[t]he

commercial impression of a trademark is derived from it as a whole, not from its elements separated

and considered in detail.” Estate of P.D. Beckwith, inc. v. Commissioner of Patents, 252 U.S. 538,

545-46 (1920). This is doctrine has evolved into the well-kn own “anti-dissection rule” of trademark

law. See, Autozone, Inc. v. Strick, 543 F. 3d 923, 931 (7th Cir. 2019). Accordingly, it would be plain

error for the Court to conclude that ownership of the Della Terra mark conveyed ownership rights

in the Terra mark merely by priority of use.

Accordingly, inTech seeks relief under Fed. R. Civ 46 and 52(b) to amend the Order of DE-

89 so as to clarify the Court’s findings and conclusions, avoid ambiguity, and simplify issues that

may need to be appealed. inTech requests that the objected to statement in the Order of DE-89

should be deleted. Instead, if the Court actually intended to mean that it concluded Forest River has

rights to the Terra trademark because no reasonable jury could deny that Forest River used the Della

Terra trademark before inTech used the Terra trademark, that should be stated expressly. inTech

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believes that would be a clear error of law, but if that was the basis for the Court’s statement, it

should be made clear to the Court of Appeals.

Conversely, if the Court actually intended to mean merely that it concluded Forest River has

protectable rights to the Della Terra trademark, because no reasonable jury could deny that Forest

River used the Della Terra trademark before inTech used the Terra trademark, that should be stated

expressly. Again, inTech believes that would be an error of law, but that is a different kind of error

of law, and the issues on appeal, if appeal is needed, this should be clarified.

Dated: October 13, 2023 Respectfully submitted,

s/Ryan M. Fountain
_____________________________
Ryan M. Fountain (Attorney No 8544-71)
420 Lincoln Way West
Mishawaka, Indiana 46544
Tel.: 574-258-9296
Fax: 574-247-1237
Email: RyanFountain@aol.com
Attorney for Defendant

Certificate of Service

I certify that, on October 13, 2023, I electronically filed the foregoing document with the Clerk of
the Court using CM/ECF system, which sent notification of such filing to all of the parties through
at least the following counsel of record:

Tracy N. Betz at tbetz@taftlaw.com

s/Ryan M. Fountain
Ryan M. Fountain
Attorney for Defendant