Truenorth Cos., L.C. v. Trunorth Warranty Plans of N. Am., LLC
353 F. Supp. 3d 788
N.D. Iowa2018Background
- TrueNorth (insurance/financial services) sued TN Warranty (truck warranties) for trademark infringement, dilution, false designation, false advertising, and unfair competition based on similar "TrueNorth/TrüNorth" marks; TrueNorth holds registered trademarks dating to 2001–2006.
- TN Warranty began using a TrüNorth/compass-style mark in 2015; the PTO sustained TrueNorth's opposition and denied TN Warranty's registration by default in 2017.
- TrueNorth moved for a preliminary injunction (Aug. 2018) to stop TN Warranty's use of similar marks, alleging marketplace confusion and reputational harm; TN Warranty opposed and argued limited overlap in customers/channels.
- TrueNorth also moved to exclude TN Warranty's damages expert (Christopher King), alleging TN Warranty withheld financial materials King relied on in violation of Rule 26; TN Warranty withheld documents citing confidentiality concerns and a history with a competitor (Premium 2000+).
- The court held a hearing, received supplemental filings, denied the injunction for lack of demonstrated irreparable harm, found TN Warranty violated Rule 26 but declined wholesale exclusion of King's testimony, and awarded TrueNorth fees as a Rule 37 sanction and an extension of expert/dispositive deadlines.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Preliminary injunction / irreparable harm | TrueNorth: confusion is causing reputational injury and disruption that is not fully compensable by money; calls/emails show actual confusion. | TN Warranty: harms are speculative, limited in number, and TrueNorth delayed seeking relief; monetary damages can compensate. | Denied — TrueNorth failed to show imminent, certain, and great irreparable harm; recorded incidents (few calls) were insufficient and delay undermined urgency. |
| Presumption of irreparable harm from likelihood of confusion | TrueNorth: presumption should apply (traditional trademark practice). | TN Warranty: post-eBay/Winter presumption is improper; plaintiff must show likely irreparable harm. | Court declined to apply a presumption; required plaintiff to affirmatively show likely irreparable harm. |
| Expert exclusion for discovery violations (Rule 26/37) | TrueNorth: King relied on undisclosed financial data; failure to produce those materials prejudiced rebuttal preparation and violates Rule 26. | TN Warranty: withheld for confidentiality concerns; intended to supplement after protective-order amendment, not willful; King relied on representations and would supplement. | Court found TN Warranty violated Rule 26 (not substantially justified, not harmless). Did not fully exclude King but granted alternative sanctions — TrueNorth to submit fee statement; ordered prompt production and extended expert deadlines. |
| Motion to amend protective order / proposed "Highly Confidential Plus" designation | TN Warranty: needed extra protections because of risk documents could be leaked to competitor; sought to prevent disclosure to opposing in-house counsel. | TrueNorth: proposal came after disclosure deadline and withheld materials; no good cause shown. | Denied — court found no good cause and that TN Warranty should have sought court relief earlier rather than withholding disclosures. |
Key Cases Cited
- Univ. of Texas v. Camenisch, 451 U.S. 390 (preserve relative positions pending trial; standard for preliminary injunction)
- Dataphase Systems, Inc. v. C L Systems, Inc., 640 F.2d 109 (8th Cir.) (four Dataphase factors for preliminary injunction)
- Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (plaintiff must show irreparable injury likely; limits on presumption)
- eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (traditional equitable four-factor test applies to injunctions)
- Roudachevski v. All-American Care Centers, Inc., 648 F.3d 701 (8th Cir.) (lack of irreparable harm is dispositive)
- Gen. Motors Corp. v. Harry Brown's LLC, 563 F.3d 312 (8th Cir.) (reputational goodwill can be irreparable but must be shown)
- Med. Shoppe Int'l, Inc. v. S.B.S. Pill Dr., Inc., 336 F.3d 801 (8th Cir.) (intangible harms like goodwill may be irreparable)
- Wegener v. Johnson, 527 F.3d 687 (8th Cir.) (factors for Rule 37(c)(1) sanctions)