Category Archives: Business Law

Honest Abe Roofing sues Georgia Couple for Breach of Franchise Agreement, Trademark Infringement

09 Friday Sep 2022

Posted by in Business Law, Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trademark

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In April 2021, the Georgia-based defendants in this Indiana lawsuit entered into a Franchise Agreement with Honest Abe, a roof installation corporation located in Terre Haute, Indiana. The franchise relationship did not last long, and Honest Abe send a first Notice of Default in March 2022 asserting several material defaults. Following the failure by defendants to timely cure the defaults, a Notice of Termination was sent to the defendants on May 5, 2022. The defendants allegedly owe the plaintiff around $186,000 in past-due fees. The defendants are also accused of violating their non-compete agreements by starting a competing roofing company in the same geographic area. The Complaint (below) details interactions between an investigator and the defendants in which the defendants continue to refer to themselves as “Honest Abe.”

Honest Abe also requests a temporary restraining order and preliminary injunction (see Motion below).

Based on the very thorough complaint (with 19 exhibits) and the motion for a temporary restraining order/preliminary injunction, I expect the defendants will have a big fight on their hands. Pursuant to the Franchise Agreements, the defendants could also be responsible for Honest Abe’s attorney fees and costs, which are probably already substantial.

Stay tuned for updates.

Honest Abe Roofing Franchise, Inc. v. DCH & Associates, LLC et al.

Court Case Number: 2:22-cv-00387-JRS-MG
File Date: September 7, 2022
Plaintiff: Honest Abe Roofing Franchise, Inc.
Plaintiff Counsel: William W. Drummy of Wilkinson Goeller Modesitt Wilkinson & Drummy LLP
Defendants: DCH & Associates, LLC, Honest Abe Roofing of Macon Georgia, LLC, Dameion Harris, Christine Harris
Cause: Federal Trademark Counterfeiting, Federal Trademark Infringement, Federal Unfair Competition, False Designation of Origin, Breach of Franchise Agreement, Breach of Contract, Common Law Unfair Competition, Misappropriation of Goodwill
Court: Southern District of Indiana
Judge: James R. Sweeney II
Referred To: Mario Garcia

Complaint:

Brief in Support of Motion for Temporary Restraining Order and Preliminary Injunction:

Noble Roman’s sues Ex-Franchisee for Unpaid Royalties, Underreported Sales Figures

09 Wednesday Jun 2021

Posted by in Business Law, Indiana, Intellectual Property, Litigation, Southern District of Indiana

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Noble Roman’s is becoming a regular on this blog. It begs the question, why do they have so many intellectual property problems? Rather than dumping piles of money into back-end enforcement, perhaps they should spend more time on front-end due diligence and avoid many of these problems altogether. Given that most/all of the lawsuits involve ex-franchisees, perhaps Noble Roman’s should re-examine their franchise agreement or franchisee selection process. At least this lawsuit leaves out the ridiculous abandoned theft and conversion claims from their previous complaints.

As with most of their previous lawsuits, Noble Roman’s is suing a prior franchisee for breach of their franchise agreement. Here, the Defendants, with gas station locations in Florida and Georgia, have allegedly not paid the required royalty, underreported sales figures, failed to make available all Noble Roman’s menu items, failed to maintain required business hours, and sold non-Noble Roman’s food offerings.

The Complaint was originally filed in Marion County Superior Circuit Court for Marion County, Indiana but Defendants’ counsel has filed a Notice of Removal to the Southern District of Indiana, Indianapolis Division. Defendants’ counsel is Donald E. Pinaud, Jr. of Jacksonville, Florida.

Stay tuned for updates.

Noble’s Roman’s, Inc. v. AMI Stores Management, Inc. et al.

Case Number: 1:21-cv-01539-RLY-TAB
File Date: Sunday, June 6, 2021
Plaintiff: Noble Roman’s, Inc.
Plaintiff Counsel: Jaime L. Meyer, Jeffrey D. Roberts of Hollingsworth Roberts Means LLC
Defendant: AMI Stores Management, Inc., AMI 57 LLC d/b/a AMI 70 Food Mart, AMI 63 LLC d/b/a AMI 63 Food Mart
Cause: Breach of Franchise Agreement, Trademark Infringement
Court: Southern District of Indiana
Judge: Richard L. Young
Referred To: Tim A. Baker

Complaint:

Mid-May Indiana Intellectual Property Litigation Update

17 Monday May 2021

Posted by in Business Law, Indiana, Intellectual Property, Litigation, Northern District of Indiana, Southern District of Indiana, Trade Dress, Trade Secret, Trademark

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It’s been a slow month for new intellectual property lawsuits in Indiana, with just one filed since mid-April. However, several of the existing lawsuits are heating up, with numerous counterclaims being filed, including one alleging abusive litigation practices.

Schnebelt v. Anglotopia, LLC (ND, filed 1/18/2021) – A Notice of Voluntary Dismissal was filed on April 30, 2021 and the lawsuit was dismissed on May 4, 2021.

Noble Romans, Inc. v. Gateway Triangle Corp. et al. (SD, filed 2/5/2021) – On April 30, 2021, the Defendants filed an Answer and a Counterclaim for Abuse of Process, accusing Noble Roman’s and two Counterclaim Defendants of abusive litigation practices.

On May 14, 2021, the Counterclaim Defendants filed their Answer to the Counterclaim for Abuse of Process. The Counterclaim Defendants are represented by Jaime L. Meyer, Jeffrey D. Roberts, and Randy M. Fisher of Hollingsworth Roberts Means LLC.

Heartland Consumer Products LLC v. Speedway, LLC (SD, filed 2/5/2021) – An Amended Complaint was filed on April 23, 2021, adding an additional Plaintiff, TC Heartland LLC.

Indianapolis Bouldering, LLC v. BP Holdings Co. LLC et al. (SD, filed 2/11/2021) – A Notice of Voluntary Dismissal was filed on May 7, 2021 and the lawsuit was dismissed on May 10, 2021.

Watch Communications v. Jarman et al. (SD, filed 3/8/2021) – Between April 21, 2021 to April 28, 2021, each of the Defendants filed a similar Motion to Dismiss for several counts of the Complaint, including the counts most interesting to intellectual property practitioners, False Designation of Origin and Unfair Competition, Civil Conspiracy, and Common Law Unfair Competition.

On April 28, 2021, Defendants Grit Technologies and Jarman also filed their Answer, Counterclaim and Third-Party Complaint. The Counterclaim and Third-Party Complaint includes claims of Tortious Interference with a Contract, Defamation, Violation of Section 43(a) of the Lanham Act, Common Law Unfair Competition. These Defendants are represented by Wendy D. Brewer and Laura M. Brymer of Fultz Maddox Dickens PLC, with admission pending for Jeffrey L. Widman and Laura Caplin of Fox Rothschild LLP.

La Michoacana Meat Market TM Holdings, LLC v. Lopez et al. (SD, filed 3/9/2021) – No update yet.

La Michoacana Meat Market TM Holdings, LLC v. Galan et al. (ND, filed 3/9/2021) – No update yet.

Vroom, Inc. v. Midwest Motors LLC et al. (SD, filed 3/24/2021) – The Defendant’s owner has mailed a letter to the Court advising them that he is in the process of changing his company name. This isn’t an actual Answer but it might be enough for Plaintiff to seek redress outside of the Court system. Presumably, Plaintiff’s counsel will be seeking assurances that the letter’s claims are true and we’ll have to wait to see whether they continue to pursue additional remedies.

Delta Faucet Company v. Iakovlev et al. (SD, filed 3/25/2021) – The Defendant has not responded to the Amended Complaint and Delta Faucet Company filed a Request for Entry of Default on April 29, 2021.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al. (SD, filed 4/12/2021) – Defendants’ counsel have filed their Appearances and submitted a Notice of Extension of Time until June 3, 2021 to answer the Complaint.

Triple LLL Truck Repair, Inc. v. Triple LLL, Inc. et al. (ND, filed 4/26/2021) – No update yet.

Equestrian Arena Equipment Manufacturer Sues Competitor for Breach of Contract, Misappropriation of Trade Secrets

13 Tuesday Apr 2021

Posted by in Business Law, Indiana, Intellectual Property, Litigation, Patent, Southern District of Indiana, Trade Secret, Trademark

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Here’s an interesting lawsuit, which seems like it wants to be a patent lawsuit but instead is masquerading as a breach of contract or trade secret lawsuit.

In September 2016, the parties allegedly into a “Product Lines Purchase Agreement,” by which the Plaintiff purchased “all specifications, shop drawings, blueprints, records and intellectual property rights” relating to the Kiser DragMaster and Kiser Edge, equipment used for grooming and maintaining equestrian arenas.

Despite selling the intellectual property for those products to Plaintiff as a part of the deal, the Defendants are now accused of selling knockoff products, although under different product names. It seems that what Plaintiff really wants to do is prevent the sale of competing products, but they don’t have any patents to truly protect their product designs. As such, the Plaintiff’s lawyers had to get creative and try to bring breach of contract, trademark, and trade secret claims.

Apparently, representatives of the Defendants have referred to the Defendants’ products as a “redesign” of Plaintiff’s DragMaster. Even if true, the Defendants could claim a nominative fair use defense, as such references seem to actually be referring to old DragMaster products. The law around comparative advertising is pretty well-settled in favor of consumer knowledge, absent evidence of false endorsement. Competitors comparing a new product to an older competing product via name is typically allowed.

By way of example, the Complaint (below) contains the following diagram comparing the Defendants’ “Kiser 1000” to the Plaintiff’s “ABI DragMaster”:

Similarly, the “Kiser 200” is compared to the “ABI Edge”:

These are the types of comparison drawings you’d typically see in a patent lawsuit. All of the features being compared are utilitarian product features. The product names (i.e. trademarks) aren’t compared because they aren’t similar at all…Kiser 1000 vs. ABI DragMaster.

Proving a breach of contract or misappropriation of trade secrets will necessarily depend on proving that the Defendants’ products are actually infringing on the intellectual property owned by Plaintiff. Without any prior patent protection, that could be difficult to do in this context.

Stay tuned to see how the Defendants respond, perhaps with a Motion to Dismiss for some of the claims.

ABI Attachments, Inc. v. Kiser Arena Specialists, Inc. et al.

Court Case Number: 1:21-cv-00890-SEB-DLP
File Date: Monday, April 12, 2021
Plaintiff: ABI Attachments, Inc.
Plaintiff Counsel: James M. Lewis, Michael J. Hays of Tuesley Hall Konopa LLP
Defendant: Kiser Arena Specialists, Inc., Robert D. Kiser, James Kiser
Cause: Breach of Contract, Misappropriation of Trade Secrets, Lanham Act Violations, False Designation, False Advertising, Common Law Unfair Competition, Common Law Trademark Misappropriation, Unjust Enrichment
Court: Southern District of Indiana
Judge: Sarah Evans Barker
Referred To: Doris L. Pryor

Complaint:

Dispute over Great Western Trail publishing rights leads to trademark lawsuit

18 Thursday Apr 2019

Posted by in Branding, Business Law, Indiana, Indianapolis, Intellectual Property, Litigation, Southern District of Indiana, Trademark

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This is an interesting dispute involving board game publishing rights and exclusive trademark licensing.

The Complaint (below) references a contract by which the plaintiff, Stronghold Games, would exclusively publish a board game called “Great Western Trail” from August 3, 2016 to December 31, 2018. At that time, the game was owned by a German company called eggertspiele. The Complaint alleges that one of the obligations eggertspiele agreed to in the contract was it “will not during the term grant to any other person, firm or company any rights that would derogate from the grant made” in its contract with Stronghold Games.

Stronghold first released Great Western Trail in the U.S. in November 2016. It was very popular and quickly sold out. However, while seeking permission for a second print run of the game in June 2017, Stronghold learned that all assets of eggertspiele had been purchased by Plan B Games, the defendant.

Plan B Games asserted that it had no contract with Stronghold and it did not grant reprint rights to Stronghold. Subsequently, in January 2018, Plan B Games released its own version of Great Western Trail, seemingly identical but removing Stronghold’s logo from the packaging.

Screen Shot 2019-04-17 at 11.03.19 AM.png

I think this paragraph from the Complaint nicely sums up why Stronghold is unhappy with the current state of affairs: “Plan B was well aware of the pent-up demand for the Stronghold Version of this game in 2017, and the introduction of the nearly identical Plan B Version in early 2018 to satisfy the pent-up demand for the Stronghold Version improperly traded on Stronghold’s goodwill and has led to consumer confusion.”

Unfortunately, while the Complaint references the initial contract between Stronghold and eggertspiele granting publication rights, it didn’t include a copy of the contract for review. Although the contract apparently included language about minimum duration and exclusivity, it’s unclear whether the contract granted any property interest in the Great Western Trail trademark to Stronghold.

As general information, license agreements can give licensees standing to sue for infringement, provided that they grant an exclusive license and a property interest in the trademark. A trademark licensee’s proper use of a mark benefits the trademark owner, not the licensee. This allows trademark owners to rely on use by controlled licensees to prove continuing use of a trademark. Section 5 of the Lanham Act explicitly recognizes the acquisition of trademark rights by a licensor through first use of the mark by a controlled licensee.

However, in this situation, Stronghold appears to assert its own claim to property rights in the GREAT WESTERN TRAIL trademark distinct from the licensor, based on its own exclusive marketing efforts in the United States.

I look forward to reading the Answer, which hopefully will include the original contract. Stay tuned for updates.

UPDATE: This lawsuit was dismissed with prejudice on January 30, 2020.

Indie Game Studios, LLC v. Plan B Games, Inc et al.

Court Case Number: 1:19-cv-1492
File Date: Monday, April 15, 2019
Plaintiff: Indie Game Studios, LLC d/b/a Stronghold Games LLC
Plaintiff Counsel: Patrick J. Olmstead, Jr., John Bradshaw
Defendant: Plan B Games, Inc., Plan B Games Europe GMBH
Cause: Federal Unfair Competition, False Designation of Origin, Indiana Trademark Infringement, Common Law Unfair Competition, Conspiracy
Court: Southern District of Indiana
Judge: Sarah Evans Barker
Referred To: Mark J. Dinsmore

Complaint: