United States District Court, E.D. Arkansas, Jonesboro Division
TEMPORARY RESTRAINING ORDER
Zaxby’s Franchising, LLC’s
(“Zaxby’s”) motion for a temporary
restraining order [Doc. No. 2] is granted.
filed suit against MJM Foods, LLC (“MJM”) for (1)
trademark infringement and (2) unfair competition/false
designation of origin in violation of the Lanham Act, 15
U.S.C. §§ 1114(1), 1125(a); and (3) unfair
competition, (4) trademark infringement, and (5) breach of
contract under Arkansas law. Zaxby’s moved for an
ex parte temporary restraining order enjoining MJM
from, among other things, continuing to use the Zaxby’s
name and associated trademarks while operating a restaurant
in Jonesboro, Arkansas. See Doc. No. 2.
obtain an ex parte temporary restraining order,
Zaxby’s must submit a verified complaint or affidavits
in support of its motion, and Zaxby’s lawyer must
certify his efforts to give notice to the opposing side and
explain why additional notice should not be required.
Watkins, Inc. v. Lewis, 346 F.3d 841, 844 (8th Cir.
2003); Fed.R.Civ.P. 65(b). Courts then balance (1) the
movant’s likelihood of success on the merits of its
claims; (2) the threat of irreparable harm to the movant in
the absence of relief; (3) the balance between that harm and
the harm injunctive relief would cause the other side; and
(4) the public interest. Watkins, Inc., 346 F.3d at
844 (quoting Dataphase Sys., Inc. v. CL Sys., Inc.,
640 F.2d 109, 114 (8th Cir. 1981) (en banc)).
initial matter, Zaxby’s satisfied the procedural
requirements in Rule 65(b). Zaxby’s attached an
affidavit from Blake C. Bailey, its chief financial officer,
outlining facts supporting its motion, and Zaxby’s
lawyer represented that he made efforts to provide MJM notice
of Zaxby’s claims and the intent to seek a TRO.
See Bailey Aff., Doc. No. 2-1; Mot. TRO ¶¶
8-9, Doc. No. 2. No additional notice is necessary under the
respect to the merits, the factors weigh in Zaxby’s
favor. Zaxby’s is likely to succeed with its Lanham Act
trademark infringement claim. The Lanham Act prohibits the
use of another’s registered trademark without the
registrant’s consent in a manner that is “likely
to cause confusion, or to cause mistake, or to
deceive.” 15 U.S.C. § 1114(1)(a); B&B
Hardware, Inc. v. Hargis Indus., Inc., 569 F.3d 383, 389
(8th Cir. 2009). Zaxby’s references, and a search of
registered trademarks confirms, that it has valid, registered
trademarks. Compl. ¶ 11; Aff. ¶¶ 9, 11;
Daluth News-Tribune v. Mesabi Publ’g Co., 84
F.3d 1093, 1096 n.2 (8th Cir. 1996) (taking judicial notice
of trademark registration). Although MJM had permission to
use these marks under the licensing agreement, that agreement
has expired, and MJM’s continued use is without
Zaxby’s consent. Aff. ¶¶ 5, 9-10. MJM’s
restaurant bearing the same Zaxby’s name would
certainly confuse consumers into thinking that the restaurant
is still a Zaxby’s franchise. See
Downtowner/Passport Int’l Hotel Corp. v. Norlew,
Inc., 841 F.2d 214, 219 (8th Cir. 1988) (“[C]ommon
sense compels the conclusion that a strong risk of consumer
confusion arises when a terminated franchisee continues to
use the former franchisor’s trademarks.”
remaining factors also weigh in Zaxby’s favor. Having
demonstrated a likelihood of confusion, irreparable harm is
presumed. See Mutual of Omaha Ins. Co. v. Novak, 836
F.2d 397, 403 n.11 (8th Cir. 1987). Although a temporary
restraining order would undoubtedly interfere with
MJM’s business and likely affect its bottom line,
courts routinely recognize that this interference does not
outweigh the harm done to a trademark owner’s
significant investment in building goodwill with customers.
See, e.g., Wetzel’s Pretzels, LLC v. Johnson,
797 F.Supp.2d 1020, 1028-29 (C.D. Cal. 2011). Finally, the
public interest is best served by enforcing valid trademarks
and preventing consumer confusion. See, e.g., Kuper
Indus., LLC v. Reid, 89 F.Supp.3d 1005, 1014 (D. Neb.
2015); Am. Dairy Queen Corp. v. New Line Prods.,
Inc., 35 F.Supp.2d 727, 733 (D. Minn. 1998).
a temporary restraining order will issue, MJM is only
enjoined from using Zaxby’s registered trademarks,
brand, or name in connection with the operation of a
restaurant at 2626 Red Wolf Boulevard, Jonesboro, Arkansas.
Consequently, MJM must remove all signs, cups, condiments,
napkins, containers, or other materials that identify the Red
Wolfe Boulevard location as a Zaxby’s restaurant. This
order does not affect MJM’s ability to operate a food
service entity at that location, but only affects its ability
to do so under the Zaxby’s name, as requiring MJM to
cease all operations is overly broad. See, e.g.,
Reid, 89 F.Supp.3d at 1014 (continued operation under a
different name is different than ordering no operation at
all). MJM is not ordered to return Zaxby’s material,
manuals, brochures, or other materials at this time.
hearing for a preliminary injunction has been set for
Wednesday, June 1, 2016, 10:30 a.m., at the ...