FBB IP LLC v. Big Boy Restaurant Group, LLC

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF OHIO

WESTERN DIVISION - CINCINNATI

FBB IP LLC, : Case No. 1:25-cv-95

Plaintiff, Judge Matthew W. McFarland

BIG BOY RESTAURANT

GROUP, LLC,

Defendant.

ORDER AND OPINION

This matter is before the Court on Plaintiff's Amended Motion for Temporary

Restraining Order (Doc. 9). Defendant filed a Response in Opposition (Doc. 20), to which

Plaintiff filed a Reply in Support (Doc. 21). This matter is therefore fully briefed and ripe

for the Court’s review. For the following reasons, the Court GRANTS Plaintiff's

Amended Motion for Temporary Restraining Order (Doc. 9).

BACKGROUND

This dispute centers around the respective rights of two parties to use the Big Boy

name and registered marks in certain locations. Specifically, Plaintiff FBB IP LLC alleges

that Defendant Big Boy Restaurant Group, LLC has been infringing its trademark rights

by advertising for the imminent opening of Big Boy restaurants in locations where

Plaintiff owns the Big Boy trademarks. An understanding of a few agreements, which

involved the Plaintiff's and Defendant’s predecessors in interest, provides necessary

context for the present matter.

Big Boy branded restaurants first opened their doors nearly a century ago in 1936.

(Ver. Compl., Doc. 1, § 11.) Since then, Big Boy restaurants have expanded throughout

the country amid changes in ownership and franchising agreements. (Id. at | 12-15.) In

late 2000, Liggett Restaurant Enterprises LLC (Defendant’s predecessor in interest)

purchased the Big Boy franchise system and certain federally registered trademarks. (Id.

at § 16.) At the time, Frisch’s Restaurants, Incorporated (Plaintiff's predecessor in

interest) owned exclusive franchise rights for the Big Boy brand in Indiana, Kentucky,

and select counties in Ohio and Tennessee. (Id. at § 17.) Frisch’s and Liggett agreed to

separate their operations, and Liggett transferred ownership of the relevant Big Boy

trademarks as they pertain to Frisch’s geographic territory. (Id. at § 18.) Frisch’s and

Liggett put pen to paper on January 12, 2001, when they entered into three integrated

agreements to memorialize the terms of their separation: the Transfer Agreement, the

Limited Concurrent Use Agreement, and the IP Use Agreement (collectively “the

Agreements”). (Id. at 4] 19.)

The Transfer Agreement demarcates the ownership of the Big Boy marks by

geographic territories. It provides that (1) “Liggett shall convey to Frisch’s complete,

absolute, perpetual and irrevocable ownership of the Big Boy [Marks] within Frisch’s

[Territory]” and (2) “Liggett shall retain complete, absolute, perpetual and irrevocable

ownership of the Big Boy [Marks] outside of Frisch’s [Territory].” (Transfer Agreement,

Doc. 9-2, Pg. ID 683.) This Agreement further clarifies that “Frisch’s shall succeed to

[Liggett’s] position as franchisor within Frisch's [Territory].” (Id. at Pg. ID 685.)

The Limited Concurrent Use Agreement requires Liggett to cooperate with

Frisch's efforts to obtain concurrent use registrations for the trademarks within Frisch’s

Territory. (Concurrent Use Agreement, Doc. 9-2, Pg. ID 699.) These efforts came to

fruition in 2009 when the parties obtained concurrent use registrations from the United

States Patent and Trademark Office based on each party confining its use of the Big Boy

marks to its respective territory. (TTAB, Doc. 9-2, Pg. ID 772-781; Trademark Order, Doc.

9-2, Pg. ID 783-85; Concurrent Registrations, Doc. 9-2, Pg. ID 834-63.)

The IP Use Agreement governs the parties’ use of the Big Boy rights in their

respective territories. (IP Use Agreement, Doc. 9-2, Pg. ID 664.) It provides that the parties

will not use the trademarks “in a manner which will . . . materially detract from the Big

Boy reputation.” (/d. at Pg. ID 665.) The parties agreed, for instance, that they will

“maintain and operate all Big Boy restaurants in good condition and repair and in a

proper and business-like manner, and use its reasonable efforts to maintain a clean, quiet,

and respectable atmosphere.” (Id.) After enumerating the conditions on each parties’ use

of the Big Boy rights, the Agreement continues:

Notwithstanding the foregoing, nothing herein shall be deemed to. . . preclude or

restrict Liggett in the use, promotion and application of the Big Boy Rights (to

restaurant operations or otherwise) that Liggett determines in its reasonable

business judgment to be in its best interest.

(Id.)

The Agreements also set forth conditions in resolving disputes that may arise

between the parties. To begin, the parties agreed that “all disputes arising under, or

relating to the interpretation of, this Agreement, including without limitation all disputes

concerning the use of the Big Boy Rights, shall be subject to final and binding arbitration.”

(IP Use Agreement, Doc. 9-2, Pg. ID 669.) But, there is an exception: “arbitration shall not

preclude a Court from granting interim equitable relief while the arbitration is pending.”

(Id.) As for judicial relief, each party “consent[ed] to the jurisdiction of the Federal District

Court for the Eastern District of Michigan (Detroit) and the Federal District Court

Southern District (Ohio) [sic] and they each waive[d] any objection to forum or venue.”

(Transfer Agreement, Doc. 9-2, Pg. ID 689.) However, “[iJn no event” shall a party “be

entitled to relief which narrows the scope of the rights of the [other party], under th[e]

Agreement, to use the Big Boy Rights.” (IP Use Agreement, Doc. 9-2, Pg. ID 669.) In terms

of substantive state law, the parties agreed Michigan law would apply in construing and

enforcing the Agreements. (Agreements, Doc. 9-2, Pg. ID 672, 689.)

On November 7, 2007, Frisch’s and Big Boy Restaurants International, LLC

(Liggett’s successor and Defendant's predecessor in interest) entered into a Trademark

Use Agreement to “confirm the scope and terms” of the aforementioned IP Use

Agreement signed six years earlier. (Ver. Compl., Doc. 1, { 34; Use Agreement, Doc. 9-2,

Pg. ID 720-24.) Relevant here, the parties confirmed that Big Boy Restaurants

International, LLC “will not use or advertise the Big Boy Trademark in . . . Frisch’s

Territory for Frisch’s goods and services.” (Use Agreement, Doc. 9-2, Pg. ID 723.)

The Agreements also anticipated the possibility of assignment: “Each party may

assign its interests under th[e] Agreement provided that any such assignee shall also be

the owner of such party’s interests in the Big Boy Rights.” (IP Use Agreement, Doc. 9-2,

Pg. ID 673.) Written notice of any assignment must be given to the other party of the

Agreements. (Id.) Once assigned, the assignee becomes bound by the Agreements. (Id.;

see also Use Agreement, Doc. 9-2, Pg. ID 724 (explaining that 2007 terms would similarly

bind successors and assignees)).

In June 2016, Frisch’s IP LLC (Plaintiff's direct predecessor in interest) acquired

Frisch’s trademarks through assignment and licensed the use of the trademarks to

affiliated entities to use in connection with corporate-owned restaurants or franchised

restaurants. (Ver. Compl., Doc. 1, {| 47; Frisch’s IP Assignment, Doc. 21-1, Pg. ID 1297-

1301.) After operating for decades in its territory under the Big Boy trademarks, Frisch’s

restaurants began closing in October 2024 when the landlord of multiple restaurants

initiated eviction proceedings. (Ver. Compl., Doc. 1, [4 3, 41.) Around November 2024,

Plaintiff FBB IP LLC and its affiliates acquired Frisch’s IP LLC and its affiliates’ assets,

including the trademarks central to this dispute (along with the associated goodwill), the

franchise agreements, and certain assets of the remaining restaurants, in exchange for fair

market value. (Id. at { 53; FBB IP Assignment, Doc. 21-1, Pg. ID 1308-12.) Plaintiff has also

registered the trademarks in question with the United States Patent and Trademark

Office. (Registrations, Doc. 9-2, Pg. ID 787-832.)

Plaintiff's franchisees and licensees currently operate thirty-one restaurants with

the Big Boy mark in its territory. (Hashim Decl., Doc. 9-3, Pg. ID 872-73; Frisch’s

Locations, Doc. 9-3, Pg. ID 974.) Now, Defendant Big Boy Restaurant Group, LLC plans

to reopen Frisch’s recently closed restaurants within Plaintiff's territory under the Big

Boy name by March 2025. (Ver. Compl., Doc. 1, § 5; Cory Decl., Doc. 9-4, Pg. ID 980-82.)

Defendant has been seeking employees to fill positions at these soon-to-be Big Boy

restaurants. (Cory Decl., Doc. 9-4, Pg. ID 980-82; Assistant Manager Posting, Doc. 9-3, Pg.

ID 954; Shift Leader/ Manager Posting, Doc. 9-3, Pg. ID 956.)

Plaintiff filed this Verified Complaint, as well as an arbitration demand with the

American Arbitration Association, on February 14, 2025. (Ver. Compl., Doc. 1, § 6.)

Specifically, Plaintiff brings claims for trademark infringement and unfair competition

under the Lanham Act. (Id. at 9 69-80.) On February 18, 2025, Plaintiff filed an Amended

Motion for Temporary Restraining Order to enjoin Defendant from using the Big Boy

marks in Plaintiff's territory and to preserve the status quo pending arbitration. (Motion,

Doc. 9.)

LAW AND ANALYSIS

I. Arbitration and the Proper Forum

Defendant raises a few preliminary matters, which the Court will address before

turning to the merits of Plaintiff's request for injunctive relief. First, Defendant contends

that this matter should be dismissed because only arbitration can afford complete relief.

(Response, Doc. 20, Pg. ID 1046-48.) The Court agrees with Defendant's submission that

the arbitrator is “entitled to conclusively adjudicate the dispute.” (Id. at Pg. ID 1048.) But,

as Defendant also recognizes, the IP Use Agreement provides a carveout in the

mandatory arbitration provision: “arbitration shall not preclude a Court from granting

interim equitable relief while the arbitration is pending.” (IP Use Agreement, Doc. 9-2,

Pg. ID 669.) This is precisely what Plaintiff is requesting here — interim injunctive relief to

preserve the status quo pending arbitration. Courts frequently address requests for

interim relief pending arbitration when, like here, the parties unambiguously agreed to

potentially seek such relief. See, e.g., United States v. Miraca Life Scis., Inc., No. 3:13-CV-

1025, 2021 WL 679275, at *4 (M.D. Tenn. Feb. 22, 2021); Nexteer Auto. Corp. v. Korea Delphi

Auto, Sys. Corp., No. 13-CV-15189, 2014 WL 562264, at *7-8 (E.D. Mich. Feb. 13, 2014). In

line with the Agreement, the Court will consider Plaintiff's request for interim equitable

relief.

Next, Defendant argues that this matter should be dismissed or transferred

because this is the improper forum. (Response, Doc. 20, Pg. ID 1048-49.) The Agreement’s

arbitration clause reads as follows:

Unless otherwise provided, all disputes arising under, or relating to the

interpretation of, this Agreement, including without limitation all disputes

concerning the use of the Big Boy Rights, shall be subject to final and

binding arbitration in Cincinnati, Ohio, if [Defendant] is the Complaining

Party, or in Detroit, Michigan, if [Plaintiff] is the Complaining Party.

(IP Use Agreement, Doc. 9-2, Pg. ID 669.) The parties dispute who qualifies as the

“complaining party” in this matter. (Compare Response, Doc. 20, Pg. ID 1048, with Suppl.

Memorandum, Doc. 13, Pg. ID 997-1003; Reply, Doc. 21, Pg. ID 1281.) The American

Arbitration Association has sent the parties a preliminary letter stating that the

“arbitration clause calls for the hearing to be held in Cincinnati.” (AAA Letter, Doc. 21-2,

Pg. ID 1320.) Irrespective of the ultimate forum for arbitration, the Court need not wade

into this question because the parties agreed that “arbitration shall not preclude a Court

from granting interim equitable relief while the arbitration is pending.” (IP Use

Agreement, Doc. 9-2, Pg. ID 669 (emphasis added)).

Notably, under the integrated Transfer Agreement, the parties “consent[ed] to the

jurisdiction of the Federal District Court for the Eastern District of Michigan (Detroit) and

the Federal District Court Southern District (Ohio) [sic] and they each waive[d] any

objection to forum or venue and agree[d] to accept service of process by mail in any action

arising out of this Agreement.” (Transfer Agreement, Doc. 9-2, Pg. ID 689.) Given the

unspecified nature of the phrase “a Court” and the fact that Defendant consented to suit

here in the Southern District of Ohio, the Court will not transfer or dismiss this matter.

II. Unclean Hands

Defendant further claims that Plaintiff should be precluded from obtaining

equitable relief because Plaintiff itself has unclean hands. (Response, Doc. 20, Pg. ID 1049-

50.) The doctrine of unclean hands permits courts “to deny injunctive relief where the

party applying for such relief is guilty of conduct involving fraud, deceit,

unconscionability, or bad faith related to the matter at issue to the detriment of the other

party.” Performance Unlimited, Inc. v. Questar Publishers, Inc., 52 F.3d 1373, 1383 (6th Cir.

1995) (quotation omitted). That being said, unclean hands “must be established by clear,

unequivocal and convincing evidence.” Hoover Transp. Servs., Inc. v. Frye, 77 F. App’x 776,

784 (6th Cir. 2003) (quotation omitted) (explaining that “unclean hands are not to be

lightly inferred”). Such unconscionable conduct must also have a sufficient connection to

the matter in dispute. See Cyber Sols. Int’l, LLC v. Pro Mktg. Sales, Inc., 634 F. App’x 557,

568 (6th Cir. 2016) (“This doctrine, however, does not grant courts free-floating authority

to deny declaratory relief in all cases in which a party has engaged in misconduct.”) In

the trademark infringement context, the doctrine of unclean hands may preclude

equitable relief to a plaintiff who procured or used the trademark in a deceptive or

fraudulent manner. See California Fig-Syrup Co. v. Frederic Stearns & Co., 73 F. 812, 817 (6th

Cir. 1896); T. Marzetti Co. v. Roskam Baking Co., No. 2:09-CV-584, 2010 WL 793050, at *12

(S.D. Ohio Mar. 3, 2010); Scooter Store, Inc. v. SpinLife.com, LLC, 777 F. Supp. 2d 1102, 1113

(S.D. Ohio 2011).

Defendant alleges that Plaintiff has unclean hands after Frisch’s allowed sixty-four

evictions of Big Boy restaurants in its territory, precipitated negative press concerning the

Big Boy brand, and transferred assets to Plaintiff. (Response, Doc. 20, Pg. ID 1050.)

Plaintiff responds that it is not responsible for the alleged acts of its predecessors, and, in

any event, such alleged conduct fails to speak to the relevant issue here—opening

restaurants under the Big Boy trademark in the other party’s exclusive territory. (Reply,

Doc. 21, Pg. ID 1282-84.)

The Court finds that there is not presently “clear, unequivocal and convincing

evidence” on the record to conclude that Plaintiff itself has acted unconscionably or with

unclean hands as related to this matter. Hoover Transp. Servs., Inc, 77 F. App’x at 784; see

also Bonner Farms, Ltd. v. Fritz, 355 F. App’x 10, 17 (6th Cir. 2009) (cleaned up) (“[T]his rule

does not require the plaintiff to be a saint in all of its affairs, but only that the plaintiff

must not be guilty of reprehensible conduct with respect to the subject matter of its suit.”).

More directly, the Court does not find clear evidence that Plaintiff procured or used the

trademarks in a deceptive or fraudulent manner. Thus, Plaintiff is not precluded from

seeking equitable relief.

III. Motion for Temporary Restraining Order

Federal Rule of Civil Procedure 65 empowers courts to issue temporary restraining

orders. The purpose of such an order is to preserve the status quo pending a reasoned

resolution of the matter. Procter & Gamble Co. v. Bankers Tr. Co., 78 F.3d 219, 226 (6th Cir.

1996). Courts consider four well-established factors when determining whether to grant

or deny a temporary restraining order: “(1) whether the movant has a strong likelihood

of success on the merits; (2) whether the movant would suffer irreparable injury without

the [temporary restraining order]; (3) whether issuance of the [temporary restraining

order] would cause substantial harm to others; and (4) whether the public interest would

be served by issuance of the [temporary restraining order].” Certified Restoration Dry

Cleaning Network, L.L.C. v. Tenke Corp., 511 F.3d 535, 542 (6th Cir. 2007); AGW X-Press, Inc.

v. FCA US, LLC, No. 21-1805, 2022 WL 2759872, at *3 (6th Cir. July 14, 2022). These are

“factors to be balanced, not prerequisites that must be met.” Certified, 511 F.3d at 542

(quotation omitted). The Court now considers each in turn.

a. Likelihood of Success

Plaintiff brings claims for trademark infringement and unfair competition under

the Lanham Act. (See Ver. Compl., Doc. 1, § 69-80.) For purposes of a temporary

restraining order, Plaintiff need only show a likelihood of success as to one of these

claims. See Brown v. Greene Cnty. Vocational Sch. Dist. Bd. of Educ., 717 F. Supp. 3d 689, 694

(S.D. Ohio 2024). Additionally, the analysis for an unfair competition claim mirrors that

of a trademark infringement claim. Champions Golf Club, Inc. v. The Champions Golf Club,

Inc., 78 F.3d 1111, 1123 (6th Cir. 1996); Too, Inc. v. Companies, Inc., 229 F. Supp. 2d 825,

838 (S.D. Ohio 2002). The Court’s analysis therefore begins and ends with Plaintiff's

trademark infringement claim. “A party proves trademark infringement by showing (1)

that it owns a trademark, (2) that the infringer used the mark in commerce without

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authorization, and (3) that the use of the alleged infringing trademark is likely to cause

confusion among consumers regarding the origin of the goods offered by the parties.”

AWGI, LLC v. Atlas Trucking Co., LLC, 998 F.3d 258, 264 (6th Cir. 2021) (quotations

omitted).

1. Ownership

To start, Plaintiff has registered the trademarks in question with the United States

Patent and Trademark Office. (Registrations, Doc. 9-2, Pg. ID 787-832.) This creates a

presumption of validity, ownership, and the exclusive right to use the trademarks in

commerce. See 15 U.S.C. § 1115(a). While this presumption is rebuttable, Defendant has

not shown how this presumption has been overcome.

Defendant first argues that Plaintiff has failed to provide adequate evidence that

it is the assignee of the relevant Big Boy trademarks. (Response, Doc. 20, Pg. ID 1051.)

Plaintiff replied by attaching the assignments in question. Specifically, these documents

show that Frisch’s assigned the trademarks to Frisch’s IP, LLC, who then assigned them

to Plaintiff. (Assignments, Doc. 21-1, Pg. ID 1297-1301, 1308-1312.)

These assignments also address Defendant’s second concern: that Plaintiff may

have participated in an “assignment in gross” of the trademarks. (Response, Doc. 20, Pg.

ID 1052.) To follow this argument, it helps to understand that a “trademark is a

placeholder for the accumulated goodwill of a business.” Yellowbook Inc. v. Brandeberry,

708 F.3d 837, 846 (6th Cir. 2013). Accordingly, if a trademark is assigned without its

associated goodwill, this is known as an invalid “assignment in gross” that fails to

provide the assignee any rights. Id.; see also 15 U.S.C. § 1060(a)(1) (“A registered mark or

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a mark for which an application to register has been filed shall be assignable with the

good will of the business in which the mark is used, or with that part of the good will of

the business connected with the use of and symbolized by the mark.”). The proscription

against “assignments in gross” has arisen from two sources: “(1) the fundamental nature

of a trademark which is not a property right but only a right appurtenant to an established

business or trade in connection with which the mark is employed; and, (2) the protection

of the consuming public against confusion or deception.” Greenlon, Inc. of Cincinnati v.

Greenlawn, Inc.,542 F. Supp. 890, 893 (S.D. Ohio 1982) (citations omitted). Here, Plaintiff's

assignments included not only the trademarks themselves but also the accompanying

goodwill. (Assignments, Doc. 21-1, Pg. ID 1297-1301, 1308-1312 (assigning the trademarks

“together with the goodwill of the Business symbolized by the Marks”)). Therefore,

Defendant has not shown that Plaintiff holds an invalid “assignment in gross.”

Defendant further contends that severing the trademark rights from direct

operating rights violates the Agreements. (Response, Doc. 20, Pg. ID 1052.) Specifically,

Defendant cites the following assignment clause: “each party may assign its interests

under th[e] Agreement provided that any such assignee shall also be the owner of such

party’s interest in the Big Boy Rights.” (IP Use Agreement, Doc. 9-2, Pg. ID 673.) However,

as Plaintiff points out, the Agreements only define the “Big Boy Rights” as the particular

trademarks. (Transfer Agreement, Doc. 9-2, Pg. ID 682, 691-94.) Considering the lineage

of assignments to Plaintiff, it appears that Plaintiff has been assigned the “Big Boy Rights”

as contemplated in the Agreements. Defendant has not pointed to language in the

Agreements that an assignee itself must operate the restaurants within its territory.

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(Contra IP Use Agreement, Doc. 9-2, Pg. ID 666 (referencing “the number of Big Boy

restaurants operated by or through [Defendant] or [Plaintiff]) (emphasis added)). Plaintiff

holds the trademarks for the restaurants currently operating in its territory —a practice

which seems to have been similarly performed by its predecessors.

Lastly, Defendant argues that it has the right to intervene and operate Big Boy

restaurants in Plaintiff's territory under the Agreements. (Response, Doc. 20, Pg. ID 1056-

57.) Defendant cites a paragraph within the IP Use Agreement that speaks to the use of

the Big Boy Rights. (Id.) This paragraph includes conditions on the parties’ use of the

trademarks, including to “maintain and operate all Big Boy restaurants in good condition

and repair and in a proper business-like manner” and to “not permit gambling or other

adult themes.” (IP Use Agreement, Doc. 9-2, Pg. ID 665.) The Agreement then provides:

Notwithstanding the foregoing, nothing herein shall be deemed to: (a)

require [Plaintiff] or [Defendant] to operate in a manner which is dissimilar

to their current Big Boy restaurant operations, or (b) preclude or restrict

[Defendant] in the use, promotion and application of the Big Boy Rights (to

restaurant operations or otherwise) that [Defendant] determines in its

reasonable business judgement to be in its best interest.

(Id.)

Defendant maintains that this language allows it to use the Big Boy trademarks to

operate restaurants in Plaintiff's territory as long as Defendant reasonably determines

such action is within its best interest. (Response, Doc. 20, Pg. ID 1057.) In contrast, Plaintiff

interprets this provision to include covenants—rather than conditions subsequent

pertaining to how each party may use the trademarks within its own territory. (Motion,

Doc. 9, Pg. ID 531; Reply, Doc. 21, Pg. ID 1287.)

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The Court finds Plaintiff's reading of this provision more convincing. As an initial

matter, the parties entered the IP Use Agreement “to govern the use of the Big Boy Rights

by [Plaintiff] and [Defendant] in their respective areas.” (IP Use Agreement, Doc. 9-2, Pg.

ID 664 (emphasis added)). Additionally, given the introductory clause of

“notwithstanding the foregoing, nothing herein shall be deemed,” the provision in

question appears to refer to the preceding use conditions in the parties’ respective

territories. This interpretation also finds support across the integrated Agreements.

Defendant's predecessor conveyed to Plaintiff's predecessor “complete, absolute,

perpetual and irrevocable ownership of the Big Boy Rights within [Plaintiff's territory].”

(Transfer Agreement, Doc. 9-2, Pg. ID 683.) And, while the parties contracted to

mandatory arbitration with the possibility for interim judicial relief, they specifically

agreed that a party shall not “be entitled to relief which narrows the scope of the rights

of the Breaching Party, under this Agreement, to use the Big Boy Rights.” (IP Use

Agreement, Doc. 9-2, Pg. ID 669.)

The parties’ understanding of their rights and obligations was further solidified in

2007. In reference to these Agreements, Frisch’s and Big Boy Restaurants International,

LLC (Defendant’s predecessor in interest) confirmed that Big Boy Restaurants

International, LLC “will not use or advertise the Big Boy Trademark in . . . Frisch’s

Territory for Frisch’s goods and services.” (Use Agreement, Doc. 9-2, Pg. ID 723-24

(binding successors and assignees as well)). The parties may adjudicate alleged breaches

of the Agreements in arbitration, but the Court does not find—for the limited scope of

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present purposes—that Defendant's contractual arguments rebut Plaintiffs’ ownership

over the relevant trademarks.

For all these reasons, Plaintiff has sufficiently shown ownership over the

trademarks in question.

2. Infringer Used the Trademark

It is undisputed that Defendant plans to open Big Boy restaurants in Plaintiff's

territory this March. Plaintiff has also set forth evidence that Defendant has been

advertising these restaurants under the Big Boy trademarks. For instance, Defendant has

been seeking employees to fill positions at Big Boy restaurants in Plaintiff's territory.

(Hashim Decl., Doc. 9-3, Pg. ID 870; Assistant Manager Posting, Doc. 9-3, Pg. ID 954; Shift

Leader/ Manager Posting, Doc. 9-3, Pg. ID 956.) Defendant does not contest this evidence.

This second element of usage is therefore satisfied.

3. Likelihood to Confuse

“The touchstone of liability [for trademark infringement] is whether the

defendant's use of the disputed mark is likely to cause confusion among consumers

regarding the origin of the goods offered by the parties.” Daddy’s Junky Music Stores, Inc.

v. Big Daddy’s Fam. Music Ctr., 109 F.3d 275, 280 (6th Cir. 1997). Courts consider the

following eight factors to determine whether the infringing mark will likely confuse

consumers as to the origin of the goods: “(1) strength of the plaintiff's mark; (2)

relatedness of the goods or services; (3) similarity of the marks; (4) evidence of actual

confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7)

defendant's intent in selecting the mark; and (8) likelihood of expansion of the product

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lines or services.” AWGI, LLC v. Atlas Trucking Co., LLC, 998 F.3d 258, 264-65 (6th Cir.

2021). These factors are “simply a guide to help determine whether confusion is likely,”

and “a plaintiff need not show that all, or even most, of the factors listed are present in

any particular case to be successful.” Homeowners Grp. v. Home Mktg. Specialists, Inc., 931

F.2d 1100, 1107 (6th Cir. 1991); PACCAR Ine. v. TeleScan Techs., LLC, 319 F.3d 243, 249-50

(6th Cir. 2003).

Defendant argues that these eight factors are only appliable after a court

determines that an alleged infringer actually used the trademark. (Response, Doc. 20, Pg.

ID 1055.) As explained, the record shows that Defendant has used the Big Boy trademarks

to advertise its imminent opening of restaurants in Plaintiff's territory. The question

therefore turns to the likelihood of confusion. Defendant has not contested the

application of these factors.

i. Strength of the Trademark

“The strength-of-the-mark factor focuses on the distinctiveness of a mark and its

recognition among the public.” AWGI, LLC, 998 F.3d at 265 (quotation omitted). Big Boy

has become a strong and distinct trademark by continuously operating throughout

Plaintiff's territory, as well as the nation, for decades. Defendant does not dispute this

fact, and courts have consistently held the same. See, e.g., Big Boy Rests. v. Cadillac Coffee

Co., 238 F. Supp. 2d 866, 870-71 (E.D. Mich. 2002) (concluding that the Big Boy mark is

“widely recognized in the [United States] and many foreign countries” and that “it is a

distinctive and famous mark”); Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville,

Inc., 670 F.2d 642, 648 (6th Cir. 1982) (presuming strong mark from defendant's “attempts

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to implant in the public mind the idea that all of its restaurants are affiliated with the Big

Boy mark”). This factor strongly suggests a likelihood of confusion.

ii. Relatedness of the Goods or Services

“Services and goods are related not because they coexist in the same broad

industry but are related if the services are marketed and consumed such that buyers are

likely to believe that the services, similarly marked, come from the same source, or are

somehow connected with or sponsored by a common company.” AWGI, LLC, 998 F.3d at

266 (quoting Leelanau Wine Cellars, Ltd. v. Black & Red, Inc., 502 F.3d 504, 516 (6th Cir.

2007)). As a rule of thumb, when the parties are directly competing with each other,

confusion is likely when the trademarks are sufficiently similar. See id. Here, the goods

and services are highly related because it appears that Defendant intends to open

restaurants with similar products and services as the Frisch’s Big Boys currently

operating within Plaintiff's territory. (See Cory Decl., Doc. 9-4, Pg. ID 981.) This factor

favors a finding of likely confusion.

iii. | Similarity of the Trademarks

Courts give “considerable weight” to the similarity of the trademarks in dispute.

Daddy's Junky Music Stores, Inc., 109 F.3d at 283. The trademarks in question in this case

are identical. Plaintiff and Defendant hold concurrent use rights over the same

trademarks in their respective territories. This similarity creates a high likelihood for

confusion when used in the same geographic territory. See Red Roof Franchising, LLC v.

Riverside Macon Grp., LLC, No. 2:18-CV-16, 2018 WL 558954, at *2 (S.D. Ohio Jan. 25, 2018)

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(explaining that “a high probability of confusion exists because the marks are not merely

similar [but] are identical”). This factor reinforces a finding of likely confusion.

iv. Evidence of Actual Confusion

Though evidence of actual confusion is often considered “the best evidence of

likelihood of confusion,” this factor is not always particularly pertinent. Daddy’s Junky

Music Stores, Inc., 109 F.3d at 284. “Due to the difficulty of securing evidence of actual

confusion, a lack of such evidence is rarely significant, and the factor of actual confusion

is weighted heavily only when there is evidence of past confusion, or perhaps, when the

particular circumstances indicate such evidence should have been available.” Id.

(quotation omitted); Little Caesar Enters., Inc. v. Pizza Caesar, Inc., 834 F.2d 568, 572 (6th

Cir. 1987) (giving less weight to this factor when “there has been no real opportunity for

actual confusion”). Plaintiff suggests that there may already be public confusion as to the

ownership of the restaurants that Defendant is advertising as Big Boy in Plaintiff's

territory. (Motion, Doc. 9-1, Pg. ID 536.) The Court does not find this factor to be especially

salient given the current circumstances and posture of this case.

v. Marketing Channels Used

In considering the marketing channels, courts examine “how and to whom the

respective goods or services of the parties are sold.” Leelanau, 502 F.3d at 519. The

likelihood of confusion involves weighing whether: “(1) the goods are sold through

different avenues; (2) the parties have different customers; and (3) they market their

goods or services in different ways.” AWGI, LLC, 998 F.3d at 267. Plaintiff notes that

Defendant uses similar channels in advertising and through its online presence. (Motion,

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Doc. 9-1, Pg. ID 536.) The IP Use Agreement also includes a provision that restaurants

must include Big Boy signage. (IP Use Agreement, Doc. 9-2, Pg. ID 665.) And, finally, it

is evident that Defendant is targeting the same customers because it is seeking to expand

into Plaintiff's territory. Thus, this factor cuts in favor of finding a likelihood of confusion.

vi. Likely Degree of Consumer Care

Courts presume customers typically exercise ordinary caution but that customers

use a higher degree of care when the goods or services are expensive or unusual. AVVGI,

LLC, 998 F.3d at 267. “The casual ‘degree of purchaser care’ in selecting fast-food

restaurants,” according to the Sixth Circuit, “supports a conclusion of likelihood of

confusion.” Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 648

(6th Cir. 1982) (explaining that such purchases are “not likely to be the object of intensive

consumer research”); Daddy's Junky Music Stores, Inc., 109 F.3d at 285 (finding the same).

Courts have applied similar reasoning to relatively “causal” food purchases. See, e.g., La

Bamba Licensing, LLC v. La Bamba Authentic Mexican Cuisine, Inc., 295 F. Supp. 3d 756, 769

(W.D. Ky. 2018). This factor contributes towards a showing of likely consumer confusion.

vii. Defendant’s Intent in Selecting the Mark

This factor considers whether a defendant “intend[ed] to benefit from the other

mark’s recognition.” AWGI, LLC, 998 F.3d at 268 (quotation omitted). Evidence that a

defendant knew of the plaintiff's trademark and its belief that using the trademark would

divert business away from the plaintiff may demonstrate such intent. Kibler v. Hall, 843

F.3d 1068, 1081 (6th Cir. 2016). It is apparent that Defendant was aware of the

geographical boundaries of the trademarks in question as articulated in the Agreements

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and filings with the United States Patent and Trademark Office. By using the Big Boy

trademark in Plaintiff's territory, Defendant has demonstrated an intent to take

advantage of the trademark’s long history of recognition in this market. This factor points

towards a likelihood of consumer confusion. And, even if Defendant lacked such intent,

this factor would at the very least remain neutral. See id. (explaining that “a lack of intent

has no effect on the determination of likelihood of confusion”).

viii. Likelihood of Expansion

“A strong possibility that either party will expand its business to compete with the

other’s increases the likelihood of consumers confusing the sources of the parties’

products.” Kibler, 843 F.3d at 1082. Extended analysis is unnecessary on this point since

this dispute centers around Defendant expanding beyond its territory to advertise and

open Big Boy restaurants in Plaintiff's territory. This final factor therefore further

supports a finding of likely consumer confusion.

* x *

Considering these factors in the collective, the Court concludes that Defendant's

“use of the disputed mark is likely to cause confusion among consumers regarding the

origin of the goods offered by the parties.” Daddy’s Junky Music Stores, Inc., 109 F.3d at

280. Plaintiff has therefore satisfied each element of a trademark infringement claim

against Defendant and is likely to succeed on the merits.

b. Irreparable Harm

As Plaintiff has established a likelihood of success on the merits of its trademark

infringement claim, it is entitled to a rebuttable presumption of irreparable harm. See 15

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US.C. § 1116(a). This statutory presumption accounts for the unique nature of

trademarks and the difficulty in calculating the cost of their infringement. See Wynn Oil

Co. v. Am. Way Serv. Corp., 943 F.2d 595, 608 (6th Cir. 1991) (quotation omitted)

(“[I]rreparable injury flows both from the potential difficulty of proof of plaintiff's

damages, and also from the impairment of intangible values.”); CFE Racing Prod., Inc. v.

BMF Wheels, Inc., 793 F.3d 571, 596 (6th Cir. 2015) (quotation omitted) (explaining that

irreparable harm follows a plaintiff's showing “that it will lose control over the reputation

of its trademark . . . because loss of control over one’s reputation is neither calculable nor

precisely compensable”).

In addition to this presumption of irreparable harm, Plaintiff also argues that there

is a significant risk that it may lose its concurrent trademark registration if Defendant

uses the trademark in Plaintiff's territory. (Motion, Doc. 9-1, Pg. ID 539.) See also Frisch’s

Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642, 651 (6th Cir. 1982)

(explaining that plaintiff showed irreparable harm since it had a substantial interest in its

exclusive use of the Big Boy trademark and had spent extensive efforts to promote its

trademark in the area).

Defendant counters that Plaintiff has failed to demonstrate irreparable harm

because Plaintiff's predecessor in interest had already caused significant harm to the

trademark, and it is unclear how Plaintiff may use the trademark moving forward.

(Response, Doc. 20, Pg. ID 1057.) Defendant does not provide authority for the

proposition that it is entitled to use the trademark in Plaintiff's territory by alleging that

Plaintiff's predecessor previously tarnished the trademark’s reputation. Furthermore,

ZL.

Plaintiff's franchisees and licensees currently operate thirty-one restaurants with the Big

Boy trademark in Plaintiff's territory. (Hashim Decl., Doc. 9-3, Pg. ID 872-73; Frisch’s

Locations, Doc. 9-3, Pg. ID 974.) Defendant’s operation in Plaintiff's territory would

therefore likely cause consumer confusion and impact Plaintiff's intangible reputation.

Thus, Plaintiff is likely to suffer irreparable harm if the status quo is not preserved.

c. Substantial Harm to Others

The Court next considers the harm to others caused by a temporary restraining

order. Plaintiff argues that any harm to Defendant is of its own willful making. (Motion,

Doc. 9-1, Pg. ID 540.) Courts routinely discount harm to a defendant when there is

evidence that the defendant placed itself in such a position by knowingly infringing the

plaintiff's trademark. See, e.g., Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d

377, 382 (6th Cir. 2006) (explaining that the “harm” suffered by a trademark infringer is

“hardly a legally cognizable one”); Worthington Foods, Inc. v. Kellogg Co., 732 F. Supp. 1417,

1461 (S.D. Ohio 1990) (similar); Hydrojug, Inc. v. Five Below, Inc., 625 F. Supp. 3d 684, 717

(N.D. Ohio 2022) (qualifying such harm as “self-inflicted”).

The Court recognizes Defendant's assertion that injunctive relief may harm its

employees and consumers. (Response, Doc. 20, Pg. ID 1059.) But, as identified by Plaintiff,

there is nothing to prevent Defendant from opening restaurants under a different, non-

trademarked name. See Red Roof Franchising, LLC v. Riverside Macon Grp., LLC, No. 2:18-

CV-16, 2018 WL 558954, at *3 (S.D. Ohio Jan. 25, 2018) (acknowledging that defendant

may still operate the hotel in question—just not under the trademarked name). Thus,

given Defendant's willful actions and the possibility of mitigating harm by operating in

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other ways, the potential harm to others does not preclude the relief sought here.

d. Public Interest

The public interest is served by preventing consumer confusion and enforcing

contractual duties. See Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d 377, 383

(6th Cir. 2006); Certified Restoration Dry Cleaning Network, L.L.C. v. Tenke Corp., 511 F.3d

535, 551 (6th Cir. 2007). After all, “the general public is a key beneficiary of the federal

trademark system because the federal trademark system has a great interest in

administration of the trademark law in a manner that protects against confusion.”

Hydrojug, Inc. v. Five Below, Inc., 625 F. Supp. 3d 684, 717 (N.D. Ohio 2022) (quotation

omitted). In light of the preceding analysis, the Court finds that a temporary restraining

order will preserve the status quo, prevent consumer confusion, and respect the parties’

bargained-for territories of trademark usage. Such relief is within the public interest.

* *

As such, and after thorough consideration, each of the four factors support

granting Plaintiff's Amended Motion for Temporary Restraining Order. The Court

therefore finds it appropriate to grant limited injunctive relief to preserve the status quo

pending arbitration in this matter.

e. Security

The Sixth Circuit directs district courts to expressly address the question of

whether a bond is required as security for temporary restraining orders and preliminary

injunctions. Roth v. Bank of the Commonwealth, 583 F.2d 527, 539 (6th Cir. 1978). Federal

Rule of Civil Procedure 65(c) requires that the moving party give security in an amount

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that the court considers proper “to pay the costs and damages sustained by any party

found to have been wrongfully enjoined or restrained.” That being said, district courts

have broad discretion in determining that amount or whether bond is needed at all.

Molton Co. v. Eagle-Picher Indus., Inc., 55 F.3d 1171, 1176 (6th Cir. 1995); see also Ohio State

Univ. v. Thomas, 738 F. Supp. 2d 743, 757 (S.D. Ohio 2010) (declining to impose bond after

considering, among other things, that all four factors weighed in favor of injunctive

relief).

Plaintiff argues that the Court should exercise its discretion in not imposing bond.

(Motion, Doc. 9-1, Pg. ID 541.) And notably, Defendant does not contest the issue of

security. In light of the foregoing analysis and the indistinct harm to Defendant, the Court

determines that Plaintiff need not post bond at this time.

CONCLUSION

For the foregoing reasons, the Court GRANTS Plaintiff's Amended Motion for

Temporary Restraining Order (Doc. 9) and ORDERS the following:

1. Defendant, its respective agents, employees, and those acting in active concert

with Defendant shall be ENJOINED from:

a. Using any of Plaintiff's Big Boy Marks or any trademark, service mark,

trade name, or logo that is confusingly similar to Plaintiff's Big Boy

Marks, within Plaintiff's Territory. Plaintiff's Big Boy Marks include the

following Registration Numbers:

e 5,373,176

e 5,984,556

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e 5,373,175

e 5,421,398

e 6,615,727

e 6,010,714

e 5,373,179

© 6,348,451

e 3,690,889

e 4,026,143

b. Causing a likelihood of confusion or misunderstanding as to its

affiliation, connection, or association with Plaintiff, its franchisees or

licensees, or with any of the products and services offered by them

within Plaintiff's Territory;

c. Unfairly competing with Plaintiff or its franchisees or licensees within

Plaintiff's Territory; and

d. Otherwise infringing Plaintiff's Big Boy Marks or using any similar

designation, alone or in combination with any other components, within

Plaintiff's Territory.

2. Subject to further orders by this Court, this Order shall expire on the 14th day

following its entry on the docket. The Court will address Plaintiff’s Motion for

Preliminary Injunction (Doc. 9) in due course.

IT IS SO ORDERED. Date/Time: March 7, 2025 at 1:15 PM

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF OHIO

Maoh, Usha LS

By: | □

JUDGE MATTHEW W. McFARLAND

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