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Case 1:21-cv-00307-JPH-TAB Document 15 Filed 03/08/21 Page 1 of 27 PageID #: 204

UNITED STATES DISTRICT COURT


FOR THE SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION

N OBLE R OMAN ’ S , I NC .,

Plaintiff and Counterclaim


Defendant,
CASE NO. 1:21-CV-00307-JPH-TAB
v.

G ATEWAY T RIANGLE C ORP ., 7405


I NDY C ORP ., 850 I NDY C ORP .,
N ORTHLAKE M ARKETING , LLC, AND
T HOMAS M. C OLLINS , II,

Defendants and Counterclaim


Plaintiffs.

v.

PAUL MOBLEY AND TROY BRANSON,

Counterclaim Defendants.

DEFENDANTS’ ANSWER TO PLAINTIFF’S COMPLAINT,


AFFIRMATIVE DEFENSES AND COUNTERCLAIM

PARTIES

1. Noble Roman’s is an Indiana corporation with its principal place of

business located in Indianapolis, Marion County, Indiana.

ANSWER: Defendants admit the material allegations of Paragraph 1.

2. Gateway, 7405 and 850 are corporations incorporated and existing

under the laws of the State of Indiana with a principal office address of 3592 North

Hobart Road, Hobart, County of Lake, Indiana 46342. The Registered Agent for

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Gateway, 7405 and 850 is Mr. Collins and their Registered Agent’s Address is 3592

North Hobart Road, Hobart, County of Lake, Indiana 46342.

ANSWER: Defendants admit the material allegations of Paragraph 2.

3. Northlake is a limited liability company organized and existing under

the laws of the State of Indiana with a principal office address of 3592 North Hobart

Road, Hobart, County of Lake, Indiana 46342. The Registered Agent for Northlake

is Jared R. Tauber and its Registered Agent’s address is 1415 Eagle Ridge Drive,

Schererville, Indiana 46375.

ANSWER: Defendants admit the material allegations of Paragraph 3.

4. Gateway, 7405, 850, and Northlake shall be referred to hereafter as

the “Entity Defendant(s)”.

ANSWER: Defendants admit that Gateway, 7405, 850, and Northlake are

referred to in the complaint as “Entity Defendant(s).”

5. Mr. Collins is an Indiana citizen believed to be residing in Hobart,

Indiana.

ANSWER: Defendants admit that Mr. Collins is an Indiana citizen and

deny the remaining material allegations of Paragraph 5.

6. Mr. Collins is believed to be a principal officer and owner of each of the

Entity Defendants.

ANSWER: Defendants admit that Mr. Collins is a principal officer and

owner of Gateway, 7405 and 850, and defendants deny the remaining material

allegations of Paragraph 6.

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7. Mr. Collins and the Entity Defendants shall hereinafter be referred to

as the “Defendant(s)”.

ANSWER: Defendants admit that “the Entity Defendants” and Mr. Collins

are referred to in the complaint as the “Defendant(s).”

8. Defendants own a diversity of businesses in various industries operating

throughout the State of Indiana under the tradename LUKE’S OIL a.k.a. LUKE.

ANSWER: Defendants admit that one of more of the defendants’ own

convenience stores operating throughout the State of Indiana under the tradename

LUKE’s OIL. Defendants deny the remaining material allegations of paragraph 8.

COMMON ALLEGATIONS

9. Noble Roman’s incorporates all preceding allegations.

ANSWER: Defendants incorporate their responses to the preceding

paragraphs.

10. Noble Roman’s is in the business of franchising the operation of Noble

Roman’s pizza franchises that feature pizza, breadsticks, and other related food items

to various franchisees throughout the world.

ANSWER: Defendants admit that Noble Roman’s is in the business of

franchising the operation of Noble Roman’s pizza franchises that feature pizza,

breadsticks, and other related food items. Defendants are without knowledge as to

the remaining material allegations of Paragraph 10 and therefore deny the same.

11. Noble Roman’s is the exclusive holder of licensing and franchising

rights relating to the Noble Roman’s brand, including, without limitation,

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products, services, names, logos, images, media, goodwill, trademarks, and trade

dress (the “Intellectual Property").

ANSWER: Defendants are without knowledge of the material allegations

of Paragraph 11 and therefore deny the same.

12. Noble Roman’s is also the owner of certain property rights,

including the valuable privilege to exclusively use, license, and/or franchise

Noble Roman’s Intellectual Property in connection with the Noble Roman’s

franchise system (the “Property Rights”).

ANSWER: Defendants are without knowledge of the material

allegations of Paragraph 12 and therefore deny the same,

13. Noble Roman’s 1 has expended significant amounts of money and

resources on its Property Rights, including, without limitation, costs incurred

in the research, development, and marketing of its products, services, and

brand, and, as a result of Noble Roman’s efforts, Noble Roman’s Property

Rights are highly valuable.

ANSWER: Defendants are without knowledge of the material

allegations of Paragraph 13 and therefore deny the same.

14. Defendants own a diversity of businesses in various industries,

including, without limitation, over thirty (30) convenience stores operating

throughout the State of Indiana under the tradename LUKE’S OIL a.k.a. LUKE.

1Plaintiff’s name (Noble Roman’s) is misspelled 19 times is the complaint by


omitting the “ ‘s ”. The misspellings have been corrected in this answer.

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ANSWER: Defendants admit that Gateway owns fewer than thirty

convenience stores operating throughout the State of Indiana under the

tradename LUKE’s OIL a.k.a. LUKE. Defendants deny that the remaining

Defendants operate any convenience stores and deny any additional allegations

of Paragraph 14.

15. On or about June 30, 2013, Noble Roman’s and Gateway entered into

that certain NOBLE ROMAN’S INC. MASTER FRANCHISE AGREEMENT

(NOBLE ROMAN’S PIZZA), as amended by that certain AMENDMENT #1

NOBLE ROMAN’S MASTER FRANCHISE AGREEMENT as of June 22, 2016,

AMENDMENT #2 NOBLE ROMAN’S MASTER FRANCHISE AGREEMENT as

of December 21, 2016, and AMENDMENT #3 NOBLE ROMAN’S MASTER

FRANCHISE AGREEMENT as of October 18, 2017, (collectively, the “Franchise

Agreement”) (see Ex. “1”) pursuant to which Gateway was licensed and

authorized to sell “Noble Roman’s” branded food products using Noble Roman’s

Intellectual Property at the following fifteen (15) LUKE’S Locations (the

“Franchised Locations”) only:

LOC.# BUSINESS ADDRESS CITY STATE


NAME
1 Luke’s 216 1600 E. 81st Ave. Merrillville IN
2 Luke’s 265 3550 Sheffield Ave. Hammond IN
3 Luke’s 270 2299 US Hwy 30 Schererville IN
4 Luke’s 293 9297 Taft St. Merrillville IN
5 Luke’s 241 7101 W. 133rd Ave. Cedar Lake IN
6 Luke’s 273 7277 Taft St. Merrillville IN
7 Luke’s 249 6259 Melton Rd. Portage IN
8 Luke’s 242 2121 US Hwy 41 Schererville IN

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9 Luke’s 251 1224 E. Ridge Rd. Griffith IN


10 Luke’s 298 298 Melton Rd. Chesterton IN
11 Luke’s 231 3211 W. 37th Ave. Hobart IN
12 Luke’s 220 5695 Indpls. Blvd. East Chicago IN
13 Luke’s 224 3 E. US Hwy6 Valparaiso IN
14 Luke’s 226 4333 S. St. Lafayette IN
15 Luke’s 232 500 E. 37th Ave. Hobart IN

ANSWER: Defendants state that the documents speak for themselves.

Defendants further state that, following the parties’ prior settlement agreement,

only locations one through 14 were under the Franchise Agreement as amended.

Defendants deny any remaining allegations of Paragraph 15.

16. On information and belief, Franchise Locations 1-15 are owned

and/or operated by 7405 and/or Gateway, Franchised Locations 1 and 12 are also

owned and/or operated by Northlake, and Franchised Location 2 is also owned

and/or operated by 850.

ANSWER: Defendants admit that locations 1-14 are operated by

Gateway. Defendants denying the remaining allegations of Paragraph 16.

17. The Franchise Agreement between Noble Roman’s and Gateway

terminated on December 31, 2019.

ANSWER: Defendants admit the material allegations of Paragraph 17.

COUNT I:
CIVIL ACTION UNDER INDIANA CODE§ 34-24-3-1
FOR RECOVERY OF DAMAGES, COSTS AND FEES ARISING
FROM DEFENDANTS’ CONVERSION OF NOBLE ROMAN’S
PROPERTY RIGHTS IN VIOLATION OF INDIANA CODE§ 35-43-4-3

18. Noble Roman’s incorporates by reference all preceding allegations.

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ANSWER: Defendants incorporate their responses to the preceding

paragraphs.

19. Defendants have willfully and intentionally used Noble Roman’s

Intellectual Property with knowledge that Noble Roman’s owns the Property

Rights.

ANSWER: Defendants deny the material allegations of Paragraph 19.

20. Defendants have encumbered Noble Roman’s Property Rights in

connection with the sale of unauthorized products and/or services bearing Noble

Roman’s Intellectual Property without authorization and with knowledge that the

Property Rights were owned by Noble Roman’s.

ANSWER: Defendants deny the material allegations of Paragraph 20.

21. Defendants advertised and sold unauthorized products utilizing

Noble Roman’s Intellectual Property without the authorization of Noble Roman’s.

ANSWER: Defendants deny the material allegations of Paragraph 21.

22. Defendants sold unauthorized products utilizing Noble Roman’s

Intellectual Property at (at least) one (1) non-Franchised Location without the

authorization of Noble Roman’s.

ANSWER: Defendants deny the material allegations of Paragraph 22.

23. After the termination of the Franchise Agreement, Defendants

continued to utilize Noble Roman’s Intellectual Property to advertise and sale their

products and services.

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ANSWER: Defendants deny the material allegations of Paragraph 23.

24. Noble Roman’s lost value in its Property Rights when Defendants

advertised and sold unauthorized products in connection with Noble Roman’s

Intellectual Property.

ANSWER: Defendants deny the material allegations of Paragraph 24.

25. By using Noble Roman’s Intellectual Property in connection with

Defendants’ products, Defendants have attempted to profit by encumbering Noble

Roman’s Property Rights.

ANSWER: Defendants deny the material allegations of Paragraph 25.

26. In connection with its unlawful activities, Defendants 2 knowingly or

intentionally exerted unauthorized control over Noble Roman’s Property Rights

in connection with the advertisement, distribution, sale, and use of unauthorized

products and/or services.

ANSWER: Defendants deny the material allegations of Paragraph 26.

27. As the owner of the Property Rights, Noble Roman’s alone has the

right to control and authorize the use of Noble Roman’s Intellectual Property in

connection with the sale of products and/or services.

ANSWER: Defendants are without knowledge as to the truth of the

allegations of Paragraph 27 and therefore deny the same.

28. The Property Rights constitutes valuable property.

2Plaintiff erroneously uses the singular “defendant” to refer to the plural


“defendants” four times in the complaint. These errors are corrected in this answer.

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ANSWER: Defendants are without knowledge as to the truth of the

allegations of Paragraph 28 and therefore deny the same.

29. Defendants obtained, took, sold, conveyed, encumbered, possessed

and/or transferred all or a valuable part of Noble Roman’s Property Rights

through the advertisement and sale of products and/or services utilizing Noble

Roman’s Intellectual Property.

ANSWER: Defendants deny the material allegations of Paragraph 29.

30. In connection with their unlawful activities, Defendants obtained,

took, sold, conveyed, encumbered, possessed and/or transferred all or a valuable

part of Noble Roman’s Property Rights for Defendants’ own use and benefit and

in exclusion and defiance of Noble Roman’s rights in its Property Rights.

ANSWER: Defendants deny the material allegations of Paragraph 30.

31. Defendants sold products in connection with Noble Roman’s

Intellectual Property without Noble Roman’s consent and in a manner or to an

extent other than that to which Noble Roman’s had consented.

ANSWER: Defendants deny the material allegations of Paragraph 31.

32. Gateway sold products in connection with Noble Roman’s

Intellectual Property in a manner or to an extent other than that to which Noble

Roman’s had consented.

ANSWER: Defendants deny the material allegations of Paragraph 32.

33. In connection with their unlawful activities, Defendants

encumbered Noble Roman’s Property Rights for their own use and benefit.

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ANSWER: Defendants deny the material allegations of Paragraph 33.

34. As a result of Defendants’ conversion, Noble Roman’s was damaged

in an amount to be determined and seeks its statutory remedies under the

Indiana Crime Victim’s Act, Indiana Code § 34-24-3-1, for Defendant’s violation

of Indiana Code § 35-43-4-3, including, but not limited to treble damages, costs,

and attorney’s fees.

ANSWER: Defendants deny the material allegations of Paragraph 34.

COUNT II:
CIVIL ACTION UNDER INDIANA CODE§ 34-24-3-1
FOR RECOVERY OF DAMAGES, COSTS AND FEES ARISING FROM
DEFENDANTS’ THEFT OF NOBLE ROMAN’S PROPERTY RIGHTS IN
VIOLATION OF INDIANA CODE § 35-43-4-2

35. Noble Roman’s incorporates by reference all preceding allegations.

ANSWER: Defendants incorporate their responses to the preceding

paragraphs.

36. Defendants have willfully and intentionally used Noble Roman’s

Intellectual Property with knowledge that Noble Roman’s owns the Property Rights.

ANSWER: Assuming that this allegation refers to unauthorized use,

Defendants deny the material allegations of Paragraph 36.

37. Defendants have encumbered Noble Roman’s Property Rights in

connection with the sale of unauthorized products and/or services bearing Noble

Roman’s Intellectual Property without authorization and with knowledge that the

Property Rights were owned by Noble Roman’s.

ANSWER: Defendants deny the material allegations of Paragraph 37.

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38. Defendants advertised and sold unauthorized products utilizing Noble

Roman’s Intellectual Property without the authorization of Noble Roman’s.

ANSWER: Defendants deny the material allegations of Paragraph 38.

39. Defendants sold unauthorized products utilizing Noble Roman’s

Intellectual Property at (at least) one (1) non-Franchised Location without the

authorization of Noble Roman’s.

ANSWER: Defendants deny the material allegations of Paragraph 39.

40. After the termination of the Franchise Agreement, Defendants

continued to utilize Noble Roman’s Intellectual Property to advertise and sale their

products and services.

ANSWER: Defendants deny the material allegations of Paragraph 40.

41. Noble Roman’s lost value in its Property Rights when Defendants

advertised and sold unauthorized products in connection with Noble Roman’s

Intellectual Property.

ANSWER: Defendants deny the material allegations of Paragraph 41.

42. By using Noble Roman’s Intellectual Property in connection with

Defendants’ products, Defendants have attempted to profit by encumbering Noble

Roman’s Property Rights.

ANSWER: Defendants deny the material allegations of Paragraph 42.

43. In connection with its unlawful activities, Defendant knowingly or

intentionally exerted unauthorized control over Noble Roman’s Property Rights

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in connection with the advertisement, distribution, sale, and use of unauthorized

products and/or services.

ANSWER: Defendants deny the material allegations of Paragraph 43.

44. As the owner of the Property Rights, Noble Roman’s alone has the

right to control and authorize the use of Noble Roman’s Intellectual Property in

connection with the sale of products and/or services.

ANSWER: Defendants are without knowledge as to the truth of the

allegations of Paragraph 44 and therefore deny the same.

45. The Property Rights constitute valuable property.

ANSWER: Defendants are without knowledge as to the truth of the

allegations of Paragraph 45 and therefore deny the same.

46. Defendant obtained, took, sold, conveyed, encumbered, possessed

and/or transferred all or a valuable part of Noble Roman’s Property Rights

through the advertisement and sale of products and/or services utilizing Noble

Roman’s Intellectual Property.

ANSWER: Defendants deny the material allegations of Paragraph 46.

47. In connection with their unlawful activities, Defendants obtained,

took, sold, conveyed, encumbered, possessed and/or transferred all or a valuable

part of Noble Roman’s Property Rights for Defendants’ own use and benefit and

in exclusion and defiance of Noble Roman’s rights in its Property Rights.

ANSWER: Defendants deny the material allegations of Paragraph 47.

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48. Defendants sold products in connection with Noble Roman’s

Intellectual Property without Noble Roman’s consent and in a manner or to an

extent other than that to which Noble Roman’s had consented.

ANSWER: Defendants deny the material allegations of Paragraph 48.

49. Gateway sold products in connection with Noble Roman’s Intellectual

Property in a manner or to an extent other than that to which Noble Roman’s had

consented.

ANSWER: Defendants deny the material allegations of Paragraph 49.

50. In connection with their unlawful activities, Defendants encumbered

Noble Roman’s Property Rights for their own use and benefit.

ANSWER: Defendants deny the material allegations of Paragraph 50.

51. As a result of Defendants’ theft, Noble Roman’s was damaged and seeks

an award of actual damages resulting from Defendants’ violations of Indiana Code §

35-43-4-2, treble damages, costs and attorney’s fees pursuant to the Indiana Crime

Victim’s Act, Ind. Code§ 34-24-3-1.

ANSWER: Defendants deny the material allegations of Paragraph 51.

COUNT III:
BREACH OF FRANCHISE AGREEMENT

52. Noble Roman’s incorporates by reference all preceding allegations.

ANSWER: Defendants incorporate their responses to the preceding

paragraphs.

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53. All conditions precedent to the commencement of this action including

but not limited to any requirements for notice of default or demand have occurred or

been waived or otherwise excused.

ANSWER: Defendants deny the material allegations of Paragraph 53.

54. The Franchise Agreement is a valid and enforceable contract between

Noble Roman’s and Gateway.

ANSWER: The allegations of Paragraph 54 call for a legal conclusion to

which no responses is required. Defendants further state that the document

speaks for itself. Defendants admit that the Franchise Agreement was a valid and

enforceable contract between Noble Roman’s and Gateway and further state that

the contract has terminated. Defendants deny any remaining allegations of

Paragraph 54 and specifically deny that they are liable for any alleged breach of the

agreement.

55. Gateway has breached the Franchise Agreement in connection with the

sale of unauthorized products and/or services.

ANSWER: Defendants deny the material allegations of Paragraph 55.

56. In violation of the Franchise Agreement, Gateway advertised and sold

unauthorized products and/or services utilizing Noble Roman’s Intellectual Property

at Franchised Locations.

ANSWER: Defendants deny the material allegations of Paragraph 56.

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57. After the termination of the Franchise Agreement, Gateway continued

to utilize Noble Roman’s Intellectual Property in violation of the Franchise

Agreement.

ANSWER: Defendants deny the material allegations of Paragraph 57.

58. After the termination of the Franchise Agreement, Gateway continued

to utilize Noble Roman’s Intellectual Property to advertise and sale unauthorized

products and/or services in violation of the Franchise Agreement.

ANSWER: Defendants deny the material allegations of Paragraph 58.

59. In violation of the Franchise Agreement, Gateway advertised and sold

unauthorized products and/or services utilizing Noble Roman’s Intellectual

Property at non-Franchised Locations.

ANSWER: Defendants deny the material allegations of Paragraph 59.

60. As a result of Gateway’s breaches, Noble Roman’s has been damaged

in an amount to be determined.

ANSWER: Defendants deny the material allegations of Paragraph 60.

61. Noble Roman’s is entitled to recover any and all damages as a result

of Gateway’s breach of the Franchise Agreement, plus prejudgment and post

judgment interest at the statutory rate, plus attorneys’ fees, collection fees and

costs.

ANSWER: Defendants deny the material allegations of Paragraph 61.

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COUNT IV:
TRADEMARK INFRINGEMENT

62. Noble Roman’s incorporates all preceding allegations.

ANSWER: Defendants incorporate their responses to the preceding

paragraphs.

63. Noble Roman’s registered the Noble Roman’s® word mark on the

Principal Register of the United States Patent and Trademark Office in 1974 under

Registration No. 987,069, THE BETTER PIZZA PEOPLE® word mark in 1995

under Registration No.1,920,428, and the design mark on the Principal

Register of the United States Patent and Trademark Office in 1992 under

Registration No. 1682308 (hereinafter, collectively, the "Marks").

ANSWER: Defendants are without knowledge as to the truth of the

allegations of Paragraph 63 and therefore deny the same.

64. The registrations of the Marks are valid and incontestable and enjoy

the statutory presumptions of validity and ownership.

ANSWER: The allegations of Paragraph 64 call for legal conclusions to

which no responses are required.

65. Noble Roman’s has used the Marks in commerce continuously since

1972 in connection with marketing, identifying, and promoting its franchises.

ANSWER: Defendants are without knowledge as to the truth of the

allegations of Paragraph 65 and therefore deny the same.

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66. Defendants traded unfairly upon Noble Roman’s well-established

goodwill and reputation by confusing the public as to the origin of its products,

including the sale of non-conforming items at Defendants’ Franchised Locations

and non-Franchised Locations while holding themselves out to the public as a

vendor of Noble Roman’s products and/or in connection with Noble Roman’s Marks.

ANSWER: Defendants deny the material allegations of Paragraph 66.

67. Defendants’ use [sic] Noble Roman’s Marks was without the

authorization or consent of Noble Roman’s.

ANSWER: Defendants deny the material allegations of Paragraph 67.

68. Gateway’s use [sic] Noble Roman’s Marks was without the authorization

or consent of Noble Roman’s and/or outside the scope of permission granted in the

Franchise Agreement.

ANSWER: Defendants deny the material allegations of Paragraph 68.

69. Defendants’ acts constitute trademark infringement, a violation of 15

U.S.C. § 1114(1), as well as a false designation of origin in violation of 15 U.S.C. §

1125.

ANSWER: Defendants deny the material allegations of Paragraph 69.

70. Defendants’ acts also violate Indiana’s Trademark Act, Indiana Code

Chapter 24-2-1.

ANSWER: Defendants deny the material allegations of Paragraph 70.

71. Noble Roman’s has been damaged by Defendants’ willful infringement

and false designation of origin.

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ANSWER: Defendants deny the material allegations of Paragraph 71.

72. Noble Roman’s is entitled to recover any and all damages, treble

damages, plus attorneys’ fees, collection fees and costs, as a result of the trademark

infringement, false designation of origin and violation of the Lanham Act and

Indiana’s Trademark Act.

ANSWER: Defendants deny the material allegations of Paragraph 72.

COUNT V:
UNJUST ENRICHMENT

73. Noble Roman’s incorporates all preceding allegations.

ANSWER: Defendants incorporate their responses to the preceding

paragraphs.

74. Defendants’ use of Noble Roman’s Intellectual Property was without the

authorization or consent of Noble Roman’s.

ANSWER: Defendants deny the material allegations of Paragraph 74.

75. Defendants have been unjustly enriched by knowingly utilizing and

benefiting from Noble Roman’s Property Rights and Intellectual Property without

authorization and without paying for the same.

ANSWER: Defendants deny the material allegations of Paragraph 75.

76. Noble Roman’s is entitled to recover any and all damages and other

amounts available at law and/or in equity as a result of such unjust enrichment.

ANSWER: Defendants deny the material allegations of Paragraph 76.

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AFFIRMATIVE DEFENSES

1. Plaintiff’s claims fail to state a claim upon which relief can be granted.

2. Plaintiff’s trademark claims are barred due to Plaintiff’s acquiescence

or estoppel.

3. Plaintiff’s state law trademark claims are barred due to its failure to

continue to register its mark with the Indiana Secretary of State as required by

Indiana law.

4. Plaintiff’s claims are barred, in whole or in part, by the equitable

doctrine of unclean hands.

5. Plaintiff may not recover any damage which it has unreasonably failed

to mitigate or avoid.

6. Defendants continue to investigate the facts related to Plaintiff’s

complaint and reserve the right to add additional affirmative defenses.

WHEREFORE, Defendants request judgment in their favor on Plaintiff’s

complaint, and for all other relief, legal or equitable, to which they are entitled.

COUNTERCLAIM

THE PARTIES

1. Counterclaim Plaintiffs, Gateway, 7405 and 850 are corporations

incorporated and existing under the laws of the State of Indiana with a principal

office address of 3592 North Hobart Road, Hobart, Lake County, Indiana 46342.

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2. Counterclaim Plaintiff Northlake is a limited liability company

organized and existing under the laws of the State of Indiana with a principal office

address of 3592 North Hobart Road, Hobart, County of Lake, Indiana 46342.

3. Counterclaim Plaintiff Thomas M. Collins, II is an Indiana citizen

residing in Valparaiso, Indiana and is a principal officer and owner of Gateway,

7405 and 850.

4. Counterclaim Defendant Noble Roman’s, Inc. is an Indiana

corporation with its principal place of business located in Indianapolis, Marion

County, Indiana.

5. Counterclaim Defendant Paul Mobley is the Executive Chairman of

Noble Roman’s, Inc. and resides in Indianapolis, Indiana.

6. Counterclaim Defendant Troy Branson is the Executive Vice President

of Noble Roman’s, Inc. and resides in Indianapolis, Indiana.

JURISDICTION

1. This counterclaim arises under the laws of the State of Indiana. The

jurisdiction of this Court is proper through the Court’s supplemental jurisdiction

under 28 U.S.C. §1367.

2. This Court has personal jurisdiction over plaintiff Noble Roman’s, Inc.

by, inter alia, plaintiff’s filing of its Complaint. The Court has personal jurisdiction

over Counterclaim Defendants Paul Mobley and Troy Branson because they reside

in Indiana.

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3. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b)(1)

because Counterclaim Defendants Paul Mobley and Troy Branson reside in this

district and Counterclaim Defendant Noble Roman’s has its principal place of

business in this district.

FACTS

4. In June 2013, Gateway entered into a Master Franchise Agreement

with Noble Roman’s, pursuant to which Gateway was licensed and authorized to

sell “Noble Roman’s” branded food products using Noble Roman’s Intellectual

Property at certain convenience stores owned and operated by Gateway.

5. The Agreement was amended twice, and the term was extended

through December 31, 2019.

6. On July 8, 2019, Troy Branson contacted Tom Collins regarding

alleged “critical issues.”

7. On July 9, 2019, Branson advised Collins of “some very serious issues

to discuss and I am reaching out to you so that we can avert a time and monetary

consuming situation.” (Emphasis added).

8. On July 15, 2019, Paul Mobley sent a letter with a cover email to

Collins advising him of purported “major violations of your Franchise Agreement

and the Federal Lanham Act, among other things.” In the letter, Mobley identified

two issues.

9. First, Mobley accused Defendants of displaying on a television a few

Noble Roman’s photographs at a convenience store location that did not have a

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Noble Roman’s franchise. The photographs did not contain Noble Roman’s name or

trademark.

10. Second, Mobley complained that at Noble Roman’s franchised

locations, Defendants had placed sandwiches that had not been approved by Noble

Roman’s in a warmer with Noble Roman’s warmer wrap. The sandwiches at issue

were marked with Defendants’ brand name, “Luke.”

11. In his July 15, 2019 letter, Mobley offered to settle these issues if

Defendants would agree to extend the Master Franchise Agreement by four years,

from the then-existing termination date of December 31, 2019 to December 31,

2023. Mobley also threatened that if the settlement offer was not accepted “Noble

Roman’s will pursue all legal remedies available to it, which includes any legal fees

for pursuing its rights and protecting its franchise.” (Emphasis added).

12. On August 21, 2019, Branson told Collins that he needed to know

whether Gateway was going to accept Noble Roman’s offer, agreeing to a four-year

extension of the term of the Franchise Agreement, or “if we need to pursue this

legally” and “start running up the bill.” Branson further advised that “it’s going to

be costly” and that under both the Franchise Agreement and the Lanham Act it’s

“very clear in that you’ll pay our legal fees.” (Emphasis added).

13. Under the circumstances, however, Defendants would not be

responsible for paying Noble Roman’s legal fees under either the Franchise

Agreement or the Lanham Act.

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14. Section 1117(a) of the Lanham Act provides that “[t]he court in

exceptional cases may award reasonable attorney fees to the prevailing party.” 15

U.S.C. § 1117(a). District courts may determine whether a case is “exceptional” in

the case-by-case exercise of their discretion, considering the totality of the

circumstances.

15. The Franchise Agreement provides that the franchisee shall pay the

franchisor’s attorney fees in certain circumstances, such as when the franchisor

incurs fees as a “a result of any default by Franchisee,” but there was no default

here.

16. Section XVII(3)(n) of the Franchise Agreement provides: “If Franchisee

misuses or makes any unauthorized use of the Marks or otherwise materially

impairs the goodwill associated therewith or Franchisor’s rights therein; provided

that, notwithstanding the above, Franchisee shall be entitled to notice of such event

of default and shall have five days to cure such default.” (Emphasis added).

17. As confirmed in a letter dated August 26, 2019 from Gateway’s in-

house counsel to Mobley, Gateway ceased use of the alleged Noble Roman’s photos

within 5 days of the July 15 notice.

18. Regarding the food warmer issue, Gateway’s counsel’s August 26 letter

explained that Branson was aware of this practice and, on behalf of Noble Roman’s,

he approved the selling of non-Noble Roman’s brand sandwiches in the counter

warmer due to space limitations at the stores, on the condition that the sandwiches

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were clearly identified as Luke’s and did not use any of Noble Roman’s marks or

packages. These two conditions were satisfied at all franchised locations.

19. Thus, to the extent that these minor issues (i.e., photos lacking any

Noble Roman’s mark and warmers containing clearly marked Luke products) might

be regarded as contract violations, the first (the photos) was cured pursuant to

Section XVII(3)(n) of the Franchise Agreement within five days of notice and as to

the second (warmers), Noble Roman’s had consented and acquiesced as long as

certain conditions were met and they were.

20. Notwithstanding the lack of any valid claims against Defendants,

Mobley wrote a letter on August 29, 2019 in which he threatened to engage in

abusive litigation practices:

If we are forced to file a lawsuit we will have a significantly


long period of discovery as we will subpoena all accounting
records, sales records, purchase records and any other
financial information to determine our ultimate damages.
In addition, we will conduct interrogatories of everyone in
your organization with knowledge of its activities in order to
determine all of the facts. [Emphasis added].

21. Noble Roman’s complaint in this case is facially deficient, setting forth

no specific facts as to Defendants’ alleged wrongful conduct.

22. In its complaint, Noble Roman’s asserts multiple unwarranted claims

including claims for treble damages under the Indiana Crime Victims Relief Act for

allegedly committing the crimes of conversion (Count I) and theft (Count II). These

claims have no substantial basis in law or fact.

23. The Noble Roman’s counsel who prepared the complaint is currently

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the subject of a disciplinary complaint for filing a similar trademark lawsuit with

multiple unwarranted claims, “not for the purpose of obtaining a judgment but

instead, increasing costs … by pleading facially deficient counts such as …

violations of the Indiana Crime Victims Act.” Verified Complaint for Disciplinary

Action, In the Matter of P. Adam Davis, Ind. S. Ct., Cause No. 21S-DI-00088 (Filed

2/26/2021).

CLAIM FOR ABUSE OF PROCESS

24. Counterclaim Plaintiffs repeat the allegations of paragraphs 1 - 23 of

the Counterclaim above as if fully set forth herein.

25. Noble Roman’s claims are objectively unreasonable under the

circumstances.

26. The purpose of Noble Roman’s and its agents in prosecuting this action

is not to obtain a judgment on the merits but to cause the Defendants to incur costs.

27. Noble Roman’s uses abusive litigation practices in this and other cases

to induce the franchisee to extend its franchise agreements or, failing that, to make

the franchisee an example so that other franchisees will extend their franchise

agreements rather than face similar adverse consequences.

28. The prosecution of Noble Roman’s claims for these ulterior purposes is

not proper in the normal course of litigation and constitutes an abuse of process.

29. The persons responsible for causing this abuse of process are the

Plaintiff, Noble Roman’s, Inc., and the Counterclaim Defendants Paul Mobley and

Troy Branson.

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30. Defendants have been damaged by incurring attorney fees and other

costs as a result of this abuse of process by Noble Roman’s, Mobley, and Branson.

PRAYER FOR RELIEF

WHEREFORE, Counterclaimants pray for judgment as follows:

Entering judgment in favor of Defendants dismissing Plaintiff’s


complaint with prejudice;

Entering judgment on the Counterclaim against Noble Roman’s,


Branson, and Mobley, including both compensatory and punitive
damages;

Awarding Defendants their costs, including attorneys’ fees, incurred in


defending this action under 15 U.S.C. § 1117(a); and

Awarding Defendants such other relief as the Court deems just and
proper.

JURY DEMAND

Defendants respectfully request a trial by jury.

Respectfully submitted,

PRICE WAICUKAUSKI JOVEN & CATLIN, LLC

/s/ Ronald J. Waicukauski


Ronald J. Waicukauski, Atty. No. 1089-53
Carol Nemeth Joven, Atty. No. 18091-53A
PRICE WAICUKAUSKI JOVEN & CATLIN, LLC
The Hammond Block Building
301 Massachusetts Avenue, 2nd Floor
Indianapolis, Indiana 46204
Telephone: (317) 633-8787
Facsimile: (317) 633-8797
rwaicukauski@price-law.com
cnemeth@price-law.com

ATTORNEYS FOR DEFENDANTS

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CERTIFICATE OF SERVICE

I certify that on the 8th day of March 2021, the foregoing was filed

electronically and served upon counsel of record via the Court’s ECF filing system.

/s/ Ronald J. Waicukauski

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