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IN THE UNITED STATES DISTRICT COURT

FOR THE MIDDLE DISTRICT OF PENNSYLVANIA

AVCO CORPORATION, : Case No. 4:12-CV-01313

:

Plaintiff & :

Counterdefendant, :

:

v. : (Judge Brann)

:

TURN AND BANK HOLDINGS, :

INC. and PRECISION AIRMOTIVE :

LLC, :

:

Defendants & :

Counterclaim Plaintiffs, :

:

v. :

:

AVSTAR FUEL SYSTEMS, INC. :

:

Counterclaim Defendant. :

MEMORANDUM

February 3, 2015

Pending before this Court is a Motion for a Preliminary Injunction (ECF No. 

101) filed by Defendant Turn and Bank Holdings, Inc. (hereinafter “TNB”) on 

November 4, 2014.1 TNB seeks injunctive relief to prevent Plaintiff and Counter-

 

1 TNB also included Precision Airmotive LLC as a co-defendant in the action. However, the parties have stipulated 

that Precision Airmotive LLC may be joined as a defendant and counterclaim-plaintiff in this action upon TNB’s 

filing of an answer, affirmative defenses and counterclaims to Plaintiff AVCO’s Second Amended Complaint (ECF 

No. 142).

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defendant AVCO Corporation2(hereinafter “AVCO”) from infringing TNB’s 

trademarks in connection with general aviation fuel injection servos. In response, 

Plaintiff filed a Motion to Strike TNB’s answer, affirmative defenses, 

counterclaims, and Motion for a Preliminary Injunction (ECF No. 104) based on 

improper joinder and the inclusion of confidential information from a previous 

settlement agreement negotiated and entered in another federal court. AVCO filed 

no other response or opposition to TNB’s Motion for a Preliminary Injunction.3 

When this Court granted TNB’s Motion to File under Seal that settlement 

agreement (ECF No. 112), Plaintiff AVCO filed a Motion for Reconsideration of 

the Court’s order (ECF No. 116). The Court held a hearing on the pending 

motions on January 12, 2015 and took evidence in the form of documentary 

exhibits and witness testimony.

At some point during the pendency of this litigation, AVCO filed a Motion 

to Enforce the Settlement Agreement in the United States District Court for the 

Middle District of North Carolina with United States District Judge Thomas 

Schroeder. On January 26, 2015, this Court entered an Order staying the 

 

2 This case has a very convoluted history in which parties have been joined and disputed and dropped throughout. It 

appears to this Court, based on the stipulation of the parties on January 28, 2015 (ECF No. 142), that AVStar Fuel 

Systems, Inc. (hereinafter “AVStar”) was not a party at the time that Defendants filed their Motion for a Preliminary 

Injunction (ECF No. 101), although for preliminary injunctive relief was similarly requested against AVStar. 

However, even if AVStar were a party to the instant motion, the Court would come to the same conclusion because 

the motion would necessarily rest on the same factual scenario which is addressed in this memorandum.

3 As a result of Plaintiff’s failure to otherwise file any opposition brief, TNB filed a “Renewed Motion for 

Preliminary Injunction” (ECF No. 111) in which they argue to the Court that AVCO’s Motion to Strike does not 

constitute an opposition to the pending motion. Though this document has been documented as a renewed motion, it 

is more aptly characterized as a letter to the court.

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unresolved motions pending the resolution of the motion before Judge Schroeder 

(ECF No. 140). On January 26, 2015, AVCO withdrew the motion pending before 

Judge Schroeder, and then on January 28, 2015, the parties jointly filed a Motion to 

Withdraw AVCO’s Motion to Strike (ECF No. 104) and AVCO’s Motion for 

Reconsideration (ECF No. 116), which this Court granted. Accordingly, TNB’s 

Motion for a Preliminary Injunction is the only remaining matter now ripe for 

consideration. For the reasons discussed, the Court will deny the motion

I. BACKGROUND

Precision Airmotive, LLC (hereinafter “Precision”), the predecessor of 

Defendant TNB, manufactured fuel injection servos for general aviation engines, a 

component which controls the delivery of a combustible fuel-air mixture to the 

engine.4 These servos are identified by alpha-numeric designations, each prefaced 

by the abbreviation “RSA”. Though the parties originally agreed that these 

designations describe various attributes of the servos including the type of fuel 

injection system, and nominal and actual bore sizes5, TNB now apparently 

maintains that these marks “have been used continuously and exclusively for 

decades to identify a distinct brand of fuel injection servos emanating from a single 

 

4 This Court has before it only the benefit of TNB’s exposition of the facts in this case since AVCO did not file an 

opposition brief. As such, the Court has gleaned many of the facts asserted in this section from Chief Judge 

Conner’s earlier memorandum of November 19, 2012.

5

See Memorandum and Order at 2, Nov. 19, 2012, ECF No. 60.

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original equipment manufacturer.” Def.’s Brief in Support at 2, Nov. 4, 2014, ECF 

No. 101 (hereinafter “Def.’s Brief in Support”).

 Specifically, the RSA Marks at issue in the current motion are the 

following: RSA-10ED1, RSA-10AD1, RSA-5AD1, RSA-10DB1, RSA-10DB2, 

RSA-10-ED2, RSA-7DA1, RSA-7AA1, RSA-5AB1, and RSA-5AD2. Precision 

purchased the right to make the product line at issue from the Bendix Corporation 

in 1988. AVStar is another company which has recently begun manufacturing fuel 

injection servos with the same alpha-numeric identifications. However, prior to 

AVStar’s use of the RSA designation, Precision was the only manufacturer of fuel 

injection servos to use this particular designation. 

AVCO, through its unincorporated division, Lycoming Engines, 

manufactures general aviation engines. It previously purchased its fuel injection 

servos exclusively through Precision, but it had recently begun purchasing at least 

a portion of its servos from AVStar prior to the institution of the instant litigation.

AVCO initiated this lawsuit by filing a complaint against Precision in which 

it brought claims alleging defamation, product disparagement, and tortious 

interference with contractual relations, sought a declaratory judgment that AVCO’s 

use of particular model designations for aircraft fuel injection servos did not 

violate the Lanham Act, and requested cancellation of trademark registration 

numbers corresponding to a collection of fuel injection servos. Precision 

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responded by joining AVStar, filing counterclaims for, inter alia, trademark 

infringement against AVStar and AVCO, and moving the court for a preliminary 

injunction restraining AVCO from using the RSA designations to reference fuel 

injection servos made by AVStar. On November 19, 2012, the Honorable

Christopher C. Conner, then presiding over this case, denied that request for 

preliminary injunctive relief.

On January 14, 2014, TNB obtained registration on the Principal Register 

for the RSA designation. On September 8, 2014, the parties stipulated to substitute 

TNB as a party in place of Precision. Two months later, on November 4, 2014, 

TNB once more moved for preliminary injunction requesting the same relief as in 

Precision’s previous motion. This matter is currently before the Court.

II. AVCO’S OPPOSITION

In their Renewed Motion for a Preliminary Injunction (ECF No. 111), 

Defendants argue that Plaintiff has failed to file an oppositional brief to its Motion 

for a Preliminary Injunction; consequently, its motion should be considered 

unopposed. Plaintiff does not respond to this argument. 

The local rules are very clear on this issue. Local Rule 7.6 mandates that 

“[a]ny party opposing any motion, other than a motion for summary judgment, 

shall file a brief in opposition within fourteen (14) days after service of the 

movant’s brief . . . Any party who fails to comply with this rule shall be deemed 

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not to oppose such motion.” L.R. 7.6. Because TNB filed their brief in support of 

their motion for a preliminary injunction on November 4, 2014, AVCO was 

required to file a brief in opposition, if it chose to do so, by November 18, 2014. 

AVCO did file a Motion to Strike on November 7, 2014; however, it filed no 

additional oppositional documents to the preliminary injunction request. Federal 

Rule of Civil Procedure 12(f) authorizes courts to strike only pleadings. Fed. R. 

Civ. P. 12(f) (“The court may strike from a pleading an insufficient defense or any 

redundant, immaterial, impertinent, or scandalous matter.”); see also Walthour v. 

Tennis, No. 3:CV-06-0086, 2008 WL 318386, at *8 (M.D.Pa. Feb. 4, 2008) 

(“Federal Rule of Civil Procedure 12(f) applies to pleadings, and motions, briefs, 

or memoranda, objections, or affidavits may not be attacked by a motion to 

strike.”) (Vanaskie, J.) (citations omitted). A motion for a preliminary injunction 

cannot appropriately be termed a pleading for the purposes of Rule 12(f). As such, 

AVCO’s motion was procedurally improper. Moreover, since the motion offered 

no defense to TNB’s motion but rather only introduced collateral issues regarding 

the inclusion of confidential information and improper joinder of a party, it cannot 

constitute a substantive opposition within the meaning of Local Rule 7.6. 

Consequently, TNB’s Motion for a Preliminary Injunction will be deemed 

unopposed.

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Nevertheless, even though TNB’s Motion for a Preliminary Injunction is 

deemed unopposed, this does not mean that the Court will simply accept TNB’s 

arguments without qualification and grant its motion without review. Rather, this 

Court will still evaluate TNB’s demonstrated facts and arguments within the 

context of the controlling law to determine whether an injunction is warranted and 

desirable.

III. DISCUSSION

“A preliminary injunction is an extraordinary remedy never awarded as of 

right.” Winter v. Natural Resources Defense Council, 555 U.S. 7, 24 (2008). A 

party seeking a preliminary injunction must establish four factors: (1) a reasonable 

probability of success on the merits of their argument; (2) irreparable harm to the 

movant in the absence of relief; (3) granting the preliminary injunction will not 

result in greater harm to the nonmoving party; and (4) the public interest favors 

granting the injunction. See American Exp. Travel Related Services, Inc. v. 

Sidamon-Eristoff, 669 F.3d 359, 366 (3d Cir. 2012).

TNB, through its predecessor in interest Precision Airmotive (hereinafter 

“Precision”), had previously filed on September 10, 2012 a very similar motion for 

preliminary injunctive relief to prevent AVCO from utilizing the same RSA 

designations to reference fuel injection servos made by third-party AVStar. As 

noted above, in an opinion dated November 19, 2012, Chief Judge Conner denied 

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Precision’s motion on the grounds that: (1) Precision had not demonstrated a 

likelihood of success on the merits by a preponderance of the evidence because the 

marks were neither inherently distinctive nor had Precision established that they 

had acquired secondary meaning; and (2) to grant the injunction would be contrary 

to the public interest in that an injunction could present quality and safety issues 

with regard to the maintenance, repair, and overhaul of general aviation engines; 

therefore, it may be more difficult for owners, operators, repairmen, mechanics, 

and other individuals who maintain the airworthiness of general aviation craft to 

identify whether a component in their engine is subject to a mandatory service 

bulletin issued by a manufacturer.

In determining the first issue, Chief Judge Conner accepted AVCO’s 

argument that the RSA designations refer not to a particular manufacturer of fuel 

injection servos, but rather to a generic type of fuel injection servo, which could be 

manufactured by any company. AVCO also presented documentary evidence of 

the identification plates that appear on the actual fuel injection servos. These metal 

plates bolted onto the servo communicate a number of facts about the product, 

including the model number, serial number, basic number, parts list number, and 

the identity of the manufacturer.

Now that TNB has renewed Precision’s motion for preliminary injunctive 

relief, it must demonstrate to this Court that there has been some sort of change in 

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information or circumstances which alters the balance of factors in its favor. See

Hayman Cash Register Company v. Sarokin, 669 F.2d 162, 165 (3d Cir. 1982) 

(“Under the law of the case doctrine, once an issue is decided, it will not be 

relitigated in the same case, except in unusual circumstances.”); see also 

Boehringer Ingelhein Vetmedica, Inc. v. Schering-Plough Corporation, 68 

F.Supp.2d 508, (D.N.J. 1999) (finding that the movant on a renewed motion for a 

preliminary injunction could not satisfy its burden of proving the elements which 

were also lacking in the original motion). It therefore must seek to prove that it 

can now demonstrate a likelihood of success on the merits because of facts not in 

existence in September 2012 and, further, that something has occurred since Chief 

Judge Conner’s order which changes his determination that the public interest 

would actually be harmed by the proposed injunctive relief.6

A. TNB’s Likelihood of Success on the Merits

In support of its first contention, TNB argues that it has obtained from the 

United States Patent and Trademark Office (hereinafter the “USPTO”) the 

exclusive right to the “RSA Mark” in connection with general aviation fuel 

injectors, cloaking the “RSA Mark” in presumptive validity which did not exist 

when Chief Judge Conner rendered his previous decision. Consequently, it argues

that this presumptive validity satisfies its burden of showing a likelihood of 

 

6 Though TNB makes additional arguments relating to elements two and three of the analysis, it is not necessary to 

consider these arguments given the Court’s determination that TNB has not adequately demonstrated a change in 

circumstances sufficient to overcome Chief Judge Conner’s holding on elements one and four. 

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success on the merits. As stated, AVCO made no response to this argument, 

although in the hearing it alluded to the possibility that TNB obtained this 

trademark by presenting false information to the USPTO.7

To succeed on a claim for trademark infringement, a plaintiff generally must 

prove that: (1) the marks are valid and legally protectable; (2) they own the mark in 

question; and (3) the defendant’s use of the marks to identify goods or services is 

likely to create confusion regarding the origin of the goods or services. See 

Optician’s Ass’n of America v. Independent Opticians of America, 920 F.2d 187, 

192 (3d Cir. 1990). A valid mark must be “capable of distinguishing . . . [the 

owner’s] goods from those of others.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 

U.S. 763, 768 (1992). An identifying mark must be either “inherently distinctive 

or . . . [have] acquired distinctiveness through secondary meaning.” Id. at 769. For 

a descriptive mark to acquire secondary meaning, “the primary significance of a 

product feature or term [must be] to identify the source of the product rather than 

the product itself.” Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 

1431, 1440 (3d Cir. 1994).

Chief Judge Conner determined that Precision had not satisfied its burden of 

demonstrating validity of the mark so as to create a likelihood of success on the 

merits because it was clear that the marks were not inherently distinctive and 

 

7 Unfortunately, the Court has no briefing or documentary evidence to back up this bald assertion by AVCO. Even 

if such an argument is in fact true, this Court cannot simply accept AVCO on its word that TNB lied to obtain the 

trademark.

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Precision had not adequately established that the marks had acquired secondary 

meaning. TNB now argues that its registration with the USPTO creates a 

presumption of validity, the element that Chief Judge Conner had determined was 

lacking. 

TNB is correct in this regard. As per 15 U.S.C.A. § 1507(b),

A certificate of registration of a mark upon the principal register provided by 

this chapter shall be prima facie evidence of the validity of the registered 

mark and of the registration of the mark, of the owner’s ownership of the 

mark, and of the owner’s exclusive right to use the registered mark in 

commerce on or in connection with the goods or services specified in the 

certificate, subject to any conditions or limitations stated in the certificate.

15 U.S.C.A. § 1507(b). 

Nevertheless, TNB must still prove that the use of the RSA marks by AVCO 

is likely to create confusion. “Generally, if the overall impression created by 

marks is essentially the same, ‘it is very probable that the marks are confusingly 

similar.’” Opticians Ass’n of America, 920 F.2d at 195 (citing 2 McCarthy, § 23:7). 

When the owner of the trademark and the alleged infringer “deal in competing 

goods or services, the court need rarely look beyond the mark itself. In those cases 

the court will generally examine the registered mark . . . and compare it against the 

challenged mark.” Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 462 (3d Cir. 1983). 

The movant need only show a likelihood of confusion; it need not demonstrate that 

actual confusion has resulted. Fotomat Corp. v. Photo Drive-Thru, Inc., 425 

F.Supp. 693, 703 (D.N.J. 1977); see also Fisons Horitculture, Inc. v. Vigoro 

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Industries, Inc., 30 F.3d 466, 472 (3d Cir. 1994) (finding that a likelihood of 

confusion exists “when the consumers viewing the mark would probably assume 

that the product or service it represents is associated with the source of a different 

product or service identified by a similar mark.”).

In this case, the actual fuel injection servos, while bearing same RSA marks, 

are clearly labeled as to which company manufactured them. TNB entered into 

evidence one servo created by Precision and one servo created by AVStar, each 

with the company’s name printed in demonstratively large letters down the side of 

the servo. TNB has not demonstrated beyond a mere hypothetical allegation any 

actual confusion resulting from AVCO’s use of the “RSA Marks.” Moreover, 

despite the similar designations for the servos, this Court has a hard time imagining 

that any consumer or operator would be confused as to the origin of the product 

due to such prominent labeling and therefore fails to find a likelihood of confusion.

B. The Public Interest

In support of its contention that Chief Judge Conner was incorrect in finding 

that the public interest would be harmed by granting injunctive relief, TNB claims, 

[i]n deciding Precision WA’s motion for preliminary injunctive relief, this 

Court observed the undeniably sound proposition that “the potential for 

substantial confusion in such an important field as flight safety” is a

significant consideration in determining whether an injunction should issue, 

but accepted AVCO’s arguments that an injunction would create safety 

issues with regard to the maintenance, repair, and overhaul of aircraft 

engines. Following this Court’s PI Order, it has become clear that AVCO’s 

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argument is wholly erroneous, and that an injunction is necessary to avoid

the precise safety issues identified by the Court.

Def.’s Brief in Support at 20. TNB does not, however, explain in its briefings how 

it has become clear that AVCO’s argument is wholly erroneous, nor did it do so at 

the hearing held by this Court. TNB appears only to reiterate arguments made 

before Chief Judge Conner in 2012, although it does make an indistinct argument 

that:

[s]ince this Court’s ruling on Precision WA’s motion, the critical importance 

of clear differentiation between AVStar’s servos and those manufactured by 

Precision has become clear. Evidence since the PI Order reveals that 

irreparable and catastrophic harm is likely to occur. The Australian and 

New Zealand AD Notes (Exhibit H) reveal, from government authorities, the 

impropriety of procedure applicable for one servo that is not equally 

applicable to a different servo bearing the same trademark. Moreover, the 

actual confusion in the industry points directly to harm incurred by the 

public, particularly including non-English speaking people that rely on the 

“RSA Marks” to convey information about the source of those products –

the very definition of a trademark.

Def.’s Brief in Support at 21-22. Unfortunately, this argument is too vague to 

sway the Court, which in any event declines to reconsider the arguments already 

rejected by Chief Judge Conner. In sum, and despite the able advocacy of defense 

counsel, TNB cannot prove any specific change in circumstances since the denial 

of its last request for injunctive relief as it relates to the public interest; 

consequently, this Court can find no basis for upending the status quo.

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IV. CONCLUSION

For the foregoing reasons, the Court declines to grant TNB’s motion for 

preliminary injunctive relief. An appropriate Order follows.

BY THE COURT:

/s Matthew W. Brann

Matthew W. Brann

United States District Judge

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