# National Presto Industries, Inc. v. Performance Food Group, Inc.

> District Court, S.D. Ohio · August 14, 2020

URL: https://www.frixlaw.com/law-library/cases/10376041

## Case

- **Court:** District Court, S.D. Ohio
- **Decided:** August 14, 2020
- **Opinion:** 100trialcourt
- **Cited by:** 0 later opinions in the Frix Law Library

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## Opinion text

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION AT DAYTON

National Presto Industries, Inc.,

Plaintiff,
v. Case No. 3:19-cv-272
Judge Thomas M. Rose

Performance Food Group, Inc., and Ohio Pizza
Products, L.L.C.,

Defendants.

ENTRY AND ORDER DENYING MOTION TO DISMISS BY
DEFENDANTS OHIO PIZZA PRODUCTS, LLC, AND
PERFORMANCE FOOD GROUP, INC. ECF 14.

Plaintiff National Presto Industries has sued Performance Food Group and Ohio Pizza
Products, LLC for claims stemming from an alleged violation of a settlement agreement and
alleged new violations of Plaintiff’s trademark. Defendants have moved the Court to dismiss the
case. (ECF 14).
I. Background
Plaintiff National Presto Industries, Inc., alleges it owns and has used its PRESTO mark in
connection with the advertising, promotion, and sale of food preparation equipment and
kitchenware for more than 70 years. See Compl., at ¶¶ 11-16 (ECF 1, PageID 5).
Defendant Ohio Pizza supplies food preparation equipment. See id., at ¶ 18 (ECF 1, PageID
5). In 2006, Ohio Pizza sought to register the mark AMERICA’S FAVORITE FOODS PRESTO
for “Distributorships in the field of pizza, [I]talian and deli food products.” See id., at ¶ 19 (ECF

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1, PageID 5). Upon learning of Ohio Pizza’s efforts to register that mark, National Presto filed a
Notice of Opposition (the “391 Opposition”) alleging that the use of AMERICA’S FAVORITE
FOODS PRESTO (i) is confusingly similar to the National Presto Marks; (ii) is likely to cause
deception as to the nature or origin of Ohio Pizza’s goods; and (iii) dilutes the distinctive nature
of National Presto’s National Presto Marks. See id., at ¶ 20 (ECF 1, PageID 5).

On June 29, 2009, Ohio Pizza and National Presto resolved that dispute, entering into a
Settlement Agreement and Withdrawal of Opposition. See Compl., at ¶ 21 (ECF 1, PageID 6); see
also Settlement Agreement, Compl., Ex. G (ECF 1, PageID 57-64). Under this Settlement
Agreement, Ohio Pizza agreed,
(A) not to sell food preparation equipment, kitchen appliances, or
utensils to the retail or institutional markets in connection with the
Ohio Pizza Mark, or any trademark, service mark or trade name that
includes or consists of the word “presto.”

(B) … to use reasonable commercial efforts to avoid confusion
between the Ohio Pizza Mark, as well as any other trademarks,
service marks or trade names used by Ohio Pizza (including future
marks or names) that include or consist of the word “presto,” and
the trademarks or service marks of National Presto that include or
consist of the word “presto.”

Settlement Agreement, Compl., Ex. G, Sections 1.A.-B (ECF 1, PageID 58).
The parties’ Coexistence Agreement contains a cure provision that states in pertinent part
that Plaintiff may challenge Ohio Pizza’s use of PRESTO if:
Prior to [Plaintiff] taking any action, either in the United States
Patent and Trademark Office or before a court or other judicial
tribunal, [Plaintiff] attempts to resolve such actual confusion or
perceived likelihood of confusion by working diligently and in good
faith with Ohio Pizza to resolve such confusion or likelihood of
confusion; in such a circumstance, Ohio Pizza agrees to work in
good faith with [Plaintiff] . . . .

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Ex. G to Compl. § 2.D, at 59.
National Presto alleges that, as consideration for Ohio Pizza’s promises, it agreed to
withdraw the 391 Opposition, and consented to Ohio Pizza’s registration of the AMERICA’S
FAVORITE FOODS PRESTO mark. See id., Sections 2.A & 2.C (ECF 1, PageID 58-59).
National Presto alleges, however, that it expressly reserved the right to challenge the use or

registration of any future trademark or service mark that includes or consists of the word “presto,”
in the event that such future mark causes or is likely to cause confusion. See id., Section 2.D (ECF
1, PageID 59).
In May 2017, Defendant Performance Food Group, Inc., a nationwide distributor of food
and food preparation equipment, merged with Ohio Pizza. See Compl., at ¶ 32 (ECF 1, PageID 7-
8). National Presto alleges that, as a result of that transaction, Performance Food Group assumed
the liabilities and obligations of Ohio Pizza. See id. at ¶¶ 32- 40, 109-114 (ECF 1, PageID 8-9; 18-
19); see also Settlement Agreement, Compl., Ex. G, Section 4.C. (ECF 1, PageID 60) (expressly
providing that the Settlement Agreement “shall inure to the benefit of, and shall be binding upon

the Parties [and their] successors and assigns . . . .”)
On June 2, 2018, Performance Food Group filed U.S. Application Serial No. 87/945,869
(the “’869 Application”), seeking to register PRESTO for “distributorships in the field of pizza,
Italian, and deli food products” in International Class 035 on the Principal Register of the U.S.
Patent and Trademark Office. See Compl., at ¶ 41 (ECF 1, PageID 9); see also Compl., Ex. J (ECF
1, PageID 73-81). National Presto alleges that the ‘869 Application is virtually identical to the
PRESTO mark. (See Compl., at ¶ 41 (ECF 1, PageID 9), and Compl., Exs. A, B, C (ECF 1, PageID
23-30). As a result, National Presto alleges that the mark in the ‘869 Application is so identical

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to the National Presto mark that it would cause confusion with the National Presto mark. See id.
Moreover, National Presto alleges that Defendants were selling food preparation equipment and
kitchen appliances and utensils in connection with the word “PRESTO,” in an alleged further
breach of the Settlement Agreement. See Compl., at ¶ 42 (ECF 1, PageID 9).
On December 17, 2018, National Presto’s counsel sent Defendants a cease and desist letter

regarding Defendants’ use of “Presto.” See id., at ¶ 43 (ECF 1, PageID 9); see also Cease and
Desist Letter, Compl., Ex. K (ECF 1, PageID 83-85). The letter claims Defendants breached the
Settlement Agreement by selling food preparation equipment and kitchen appliances in connection
with the word “Presto,” and by filing the ‘869 trademark application. See id. National Presto
further claimed that Defendants’ “use of the ‘PRESTO’ mark constitutes not only a breach of
contract, but also trademark infringement and various forms of unfair competition, under both the
Lanham Act (Title 17 United States Code) and common law.” Id. National Presto demanded that
Defendants “immediately cease and desist utilizing the PRESTO mark in connection with their
businesses,” and that “Defendants “abandon its ’869 App. and stop[] use of the word ‘Presto’ in

connection with food preparation equipment, kitchen appliances or utensils to the retail or
institutional markets.” Id.
Plaintiff alleges Defendants remain in breach of the Settlement Agreement. While
Defendants appeared to have removed references to “PRESTO” in association with their
equipment, appliances, and utensils, see Compl., at ¶ 49 (ECF 1, PageID 10), Plaintiff contends
that the extent of that breach of the Settlement Agreement remains unknown, and that breach also
is undisputed. Meanwhile, Defendants refuse to abandon their ’869 Application, which is
identical to National Presto’s PRESTO mark, and will allegedly cause confusion with the National

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Presto Marks in breach of the Settlement Agreement and allegedly in violation of federal and state
intellectual property laws.
After issuing the Cease and Desist Letter, National Presto alleges it further attempted to
resolve this dispute through phone calls and correspondence with Defendants over the winter and
spring of 2019. Despite efforts to resolve this dispute, Plaintiff contends Defendants remain in

breach of the Settlement Agreement by continuing to pursue the registration of the ‘869
Application Mark, consisting solely of the word “PRESTO.” See Compl., at ¶ 50 (ECF 1, PageID
10-11).
National Presto filed their complaint on September 3, 2019. National Presto alleges 1)
breach of contract; 2) federal trademark infringement; 3) trademark infringement under Ohio
common law; 4) federal unfair competition and false designation of origin; 5) unfair competition
under Ohio common law; 6) deceptive trade practices under the Ohio Deceptive Trade Practices
Act; and 7) successor liability. See generally Compl. (ECF 1). Defendants have moved for
dismissal of the Complaint under Rule 12(b)(6) of the Federal Rules of Civil Procedure. See

generally Motion to Dismiss (ECF 14).
II. Standard
To survive a motion to dismiss pursuant to Federal Rule of Civil Procedure 12(b)(6), a
complaint must contain sufficient factual matter, accepted as true, to "'state a claim to relief that is
plausible on its face.'” Ashcroft v. Iqbal, 129 S. Ct. 1937, 1949 (2009) (quoting Bell Atlantic Corp.
v. Twombly, 550 U.S. 544, 570 (2007)); see also, Ass'n of Cleveland Fire Fighters v. City of
Cleveland, Ohio, 502 F.3d 545, 546 (6th Cir. 2007). The "tenet that a court must accept as true
all of the allegations contained in a complaint is inapplicable to legal conclusions" and "threadbare

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recitals of the elements of a cause of action, supported by mere conclusory statements, do not
suffice" to withstand the requirements of Federal Rules of Civil Procedure 8 and 12(b)(6).
Ashcroft, 129 S. Ct. at 1949.
When a court is presented with a Rule 12(b)(6) motion, it may consider the complaint and
any exhibits attached thereto, public records, items appearing in the record of the case and exhibits

attached to defendant's motion to dismiss so long as they are referred to in the complaint and are
central to the claims contained therein." Bassett v. Nat'l Collegiate Athletic Ass'n, 528 F.3d 426,
430 (6th Cir. 2008). "[W]here materials are central to the claims asserted, a defendant may
introduce these materials if the plaintiff fails to do so" without converting a motion to dismiss for
failure to state a claim into a motion for summary judgment. Dials v. Watts Bros. Moving &
Storage Sys., Inc., No. C2-03-513, 2003 U.S. Dist. LEXIS 21413, at *7 (S.D. Ohio Nov. 24, 2003).
“When a court is presented with a Rule 12(b)(6) motion, it may consider the Complaint
and any exhibits attached thereto, public records, items appearing in the record of the case and
exhibits attached to defendant’s motion to dismiss so long as they are referred to in the Complaint

and are central to the claims contained therein.” JM Adjustments Servs., LLC v. J.P. Morgan Chase
Bank, N.A., No. 16-10630, 2016 U.S. Dist. LEXIS 94242, at *8 (E.D. Mich. July 20, 2016)
(quoting Weiner v. Klais & Co., 108 F.3d 86, 89 (6th Cir. 1997)). A motion to dismiss “is granted
when no material issue of fact exists and the party making the motion is entitled to judgment as a
matter of law.” Paskvan v. Cleveland Civil Serv. Comm’n, 946 F.2d 1233, 1235 (6th Cir. 1991).
III. Analysis

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Defendants move for dismissal of National Presto’s breach of contract claim asserting that
National Presto failed to plead a cognizable claim. National Presto asserts it alleged a viable
breach of contract claim.
Under Ohio Law, a breach of contract claim requires: 1) formation of a binding contract;
2) that the non-breaching party performed its contractual obligations; 3) that the breaching party

failed to fulfill its contractual obligations without legal excuse; and 4) that the non-breaching party
suffered damages as a result of the breach. See Carbone v. Nueva Constr. Group, L.L.C., 83 N.E.3d
375, 380 (Ohio App. 8th Dist. 2017). National Presto alleged each of those elements.
First, National Presto alleged that the Settlement Agreement is a binding and enforceable
contract. See Compl., at ¶ 64 (ECF 1, PageID 12). Second, National Presto alleged that it has
fulfilled all of its material obligations and otherwise fully performed under the Settlement
Agreement. See id., at ¶ 65 (ECF 1, PageID 12). Third, National Presto alleged that Defendants
failed to fulfill their contractual obligations without legal excuse by, among other acts and
omissions:

• Failing to use reasonable commercial efforts to avoid confusion
between the National Presto Marks and Defendants’ mark and use
of the word “Presto,” See id., at ¶ 66 (ECF 1, PageID 12-13);

• Selling food preparation equipment, kitchen appliances, and/or
utensils in connection with the word “PRESTO,” See id., at ¶ 67
(ECF 1, PageID 13);

• Using “PRESTO” by itself without “America’s Favorite Foods” in
connection with Defendants’ distribution services; See id., at ¶ 68;

• Selling food preparation equipment, kitchen appliances, and/or
utensils in connection with the mark “America’s Favorite Foods
Presto,” See id., at ¶ 69; and

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• Filing the ‘869 Application to register the Alleged Presto Mark,
which consists solely of the word “PRESTO”, is identical to
National Presto’s PRESTO mark, and will therefore cause confusion
with the National Presto Marks. See id., at ¶ 70.

Finally, National Presto alleged that it has been injured as a direct and proximate result of
Defendants’ breaches of the Settlement Agreement. See id., at ¶ 71.
Defendants argue that National Presto did not properly allege the third element—breach—
pertaining to one aspect of its breach of contract claim; and that National Presto’s breach of
contract claim is barred because Defendants cured their breach of the Settlement Agreement and,
therefore, National Presto did not sustain a cognizable injury.
Defendants urge this Court to dismiss National Presto’s breach of contract claim on the
grounds that the Settlement Agreement expressly permits Defendants’ use of “Presto” and
registration of the ‘869 Application Mark. Defendant asserts that the Settlement Agreement
permits National Presto to pursue the trademark and unfair competition claims alleged in its
Complaint. The Settlement Agreement states “National Presto reserves the right to challenge
[the] use or registration of any future trademark or service mark of [Defendants] that includes or
consists of the word “presto” and is used in connection with [Defendants’] Services or other goods
or services,” See Settlement Agreement, Ex. G to Compl., § 2D (ECF 1, PageID 59). Defendant
asserts the phrase “consist of” allows the stand alone use of “Presto.” This is not self-evident, as
the phrase connotes a non-exhaustive list when lacking an adverb such as “solely.”
Case law suggests the opposite. “Dictionaries, the Code, and caselaw all show that
‘consists of’ can introduce either an exhaustive list or a non-exhaustive list.” Patients Mut.
Assistance Collective Corp. v. Comm'r of Internal Revenue, 151 T.C. 176, 196 (2018). Merriam-
webster.com agrees that it implies a list of constituent parts, “to be composed or made up —usually

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used with ‘of.’ Breakfast consisted of cereal, milk, and fruit. The team consists of five players.”
https://www.merriam-webster.com/dictionary/consist. Defendants’ proposed definition is not to
the contrary, as it refers to plural constituent parts: “things” and “people.” See ECF 14-1, PageID
144 (“see also Merriam-Webster Dictionary (defining ‘consist of’ to mean ‘to be formed or made
up of (specified things or people)’”)).

It is also possible that “includes or consists” forms a hendiadys, “a figure of speech in
which two terms, separated by a conjunction, are melded together to form a single complex
expression.” Samuel L. Bray, "Necessary and Proper" and "Cruel and Unusual": Hendiadys in
the Constitution, 102 VA. L. REV. 687, 695 (2016).
Under Ohio law, the interpretation of written contract terms, including the determination
of whether those terms are ambiguous, is a matter of law for initial determination by the court.
Parrett v. Am. Ship Bldg. Co., 990 F.2d 854, 858 (6th Cir. 1993) (applying Ohio law); Potti v.
Duramed Pharmaceuticals, Inc., 938 F.2d 641, 647 (6th Cir. 1991) (applying Ohio law); see also
Inland Refuse Transfer Co. v. Browning–Ferris Indus. of Ohio, Inc., 15 Ohio St.3d 321, 474

N.E.2d 271, 272–73 (1984) (“If a contract is clear and unambiguous, then its interpretation is a
matter of law and there is no issue of fact to be determined. However, if a term cannot be
determined from the four corners of a contract, factual determination of intent or reasonableness
may be necessary to supply the missing term.”). “The role of courts in examining contracts is to
ascertain the intent of the parties.” City of St. Marys v. Auglaize Cty. Bd. of Commrs., 115 Ohio
St.3d 387, 875 N.E.2d 561, 566 (2007). See also Savedoff v. Access Grp., Inc., 524 F.3d 754, 763
(6th Cir. 2008). The intent of the parties being ambiguous, discovery is necessary.

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As Defendant points out, the Settlement Agreement conditions use and registration of the
Presto mark on an affirmative duty to use reasonable commercial efforts to avoid confusion
between Defendants’ use of “Presto” and registration of the ‘869 Application Mark, and the
National Presto Marks. To that end, the Settlement Agreement expressly provides:
Ohio Pizza agrees to use reasonable commercial efforts to avoid
confusion between the Ohio Pizza Mark, as well as any other
trademarks, service marks or trade names used by Ohio Pizza
(including future marks or names) that include or consist of the word
“presto,” and the trademarks or service marks of National Presto that
include or consist of the word “presto.”

Ex. G. to Compl., § 1.B (ECF 1, PageID 58).
National Presto alleges that Defendants breached that provision of the Settlement
Agreement by failing to use reasonable commercial efforts to avoid confusion between
Defendants’ use of “Presto” and their registration of the ‘869 Application Mark, and the National
Presto Marks, alleging in the Complaint:
Defendants breached the Settlement Agreement by not using
reasonable commercial efforts to avoid confusion between the
National Presto Marks and Defendants’ mark and use of the word
“Presto.” Defendants not only changed their mark from
“America’s Favorite Food Presto” to just “Presto,” but they also
expanded their goods and services in connection with just “Presto.”
So instead of making sure that they avoided confusion, Defendants
took active steps to make it seem as if the parties are related.

See Compl., at ¶ 66. (ECF 1, PageID 12-13). National Presto alleged that Defendants failed to
use reasonable commercial efforts to avoid confusion between the National Presto Marks and
Defendants’ use of the word “Presto” and their registration of the ‘869 Application Mark.
In its Complaint, National Presto alleged not only that Defendants breached the Settlement
Agreement by failing to honor their obligations to use reasonable commercial efforts to avoid

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confusion, but that Defendants took intentional and willful actions to make it seem as though
National Presto and the Defendants are related. See Compl., at ¶ 66. (ECF 1, PageID 12-13); see
also id. at ¶ 57 (ECF 1, PageID 11) (alleging that Defendants “are using “PRESTO” alone and
adopted the ‘869 Application Mark in bad faith with a deliberate intent to trade on the
extraordinarily valuable goodwill symbolized by National Presto’s PRESTO mark.”). Therefore,

National Presto alleges in the Complaint that Defendants breached the Settlement Agreement by
failing to use reasonable commercial efforts to avoid confusion between the National Presto Marks
and Defendants’ use of the word “Presto” and their registration of the ‘869 Application Mark.
Those allegations satisfy the pleading standards necessary to defeat a motion to dismiss under Rule
12(b)(6), and the Defendants’ Motion will be denied with regard to the breach of contract claim.
See Philadelphia Indem. Ins. Co., 732 F.3d at 649 (to survive a motion to dismiss under Rule
12(b)(6), a complaint need only contain “either direct or inferential allegations respecting all
material elements necessary for recovery under a viable legal theory.”)
Defendants next assert that National Presto’s breach of contract claim is barred by the

Settlement Agreement because Defendants have ceased that activity in response to the Cease and
Desist Letter. Defendants argue that National Presto cannot proceed on that aspect of its breach
of contract claim because, according to Defendants, National Presto did not sustain a cognizable
injury, because Defendants “fixed” their breach.
The Settlement Agreement, however, does not support this. National Presto pleaded a
cognizable injury as required under the applicable pleading standards. While National Presto
alleged in its Complaint that, in “January 2019, in accordance with the Settlement Agreement,
Defendants removed references to “PRESTO” in association with their equipment, appliances, and

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utensils,” Compl., at ¶ 49 (ECF 1, PageID 10), Defendants’ use of “PRESTO” allegedly constitutes
a breach of the Settlement Agreement. National Presto also pleaded that it sustained an injury as a
result of such breach. See id., at ¶ 62 (ECF 1, PageID 12), 71 (ECF 1, PageID 13). National Presto
has alleged each of the four elements necessary to plead a viable breach of contract claim, and
Defendants’ Motion will be denied.

Defendants next challenge National Presto’s trademark and unfair competition claims,
arguing that those claims are barred by the Settlement Agreement because, Defendants assert,
National Presto did not comply with the dispute resolution provisions under the Settlement
Agreement. Defendants’ argument is unpersuasive because National Presto expressly reserved
the right to pursue its trademark and unfair competition claims so long as (a) it has a good faith
opinion that Defendants’ use of “Presto” is likely to cause confusion in the market, and (b) National
Presto diligently attempts to resolve the dispute with Defendants before commencing the suit.
National Presto has alleged a good faith opinion that Defendants’ conduct has created a likelihood
of confusion between Defendants’ use of “Presto” and registration of the ‘869 Application Mark,

and the National Presto Marks, and National Presto diligently attempted to resolve this dispute
with Defendants.
Further, National Presto allegedly complied with its obligations under the Settlement
Agreement to work diligently and in good faith with Defendants to resolve this dispute. The
Complaint alleges that, National Presto sent Defendants the Cease and Desist Letter upon learning
of Defendants’ use of “Presto.” See Compl., at ¶ 43 (ECF 1, PageID 9); see also Cease and Desist
Letter, Compl., Ex. K (ECF 1, PageID 83-85). After issuing the Cease and Desist Letter in
December 2018, National Presto attempted to resolve this dispute through phone calls and

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correspondence with Defendants over the following six months. Defendants, however, allegedly
refused to cease their conduct, and National Presto filed this suit. Therefore, National Presto
alleges that it fulfilled its obligations to attempt to resolve this dispute by working diligently and
in good faith with Defendants. See Ex. G to Compl., § 2D(ii) (ECF 1, PageID 59). National Presto
is therefore authorized to exercise its rights under Section 2.D. of the Settlement Agreement by

pursing its trademark and unfair infringement claims, and Defendants’ Motion will be denied.
Finally, Defendants request that the Court strike National Presto’s allegations of
willfulness and corresponding damages. Defendants’ request is premised on the theory that the
underlying claims that are alleged to be willfully committed were not actionable. As explained,
they are. National Presto has alleged each of its claims—including the willful and intentional
nature of Defendants’ corresponding actions—and those allegations are accepted as true at this
stage of the litigation. See Compl., at ¶¶ 2, 57, 66, 76, 86, 92, 98, 103 (ECF 1, PageID 2; 11-18)
(alleging willful, deliberate, and intentional actions of Defendants); see also Morgan, 829 F.2d at
12 (allegations in Complaint taken as true when considering motion to dismiss under Rule

12(b)(6)). Therefore, Defendants’ Motion will be denied.
IV. Conclusion
Because Plaintiff has properly pleaded all of its claims, the Court DENIES Defendants’
Motion to Dismiss (ECF 14)
DONE and ORDERED in Dayton, Ohio, this Friday, August 14, 2020.
s/Thomas M. Rose
________________________________
THOMAS M. ROSE
UNITED STATES DISTRICT JUDGE

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/10376041. Public record. Not legal advice.