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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF INDIANA
TERRE HAUTE DIVISION

HONEST ABE ROOFING FRANCHISE,

INC., an Indiana Corporation,

Plaintiff,

v. Case No. 2:22-cv-387

DCH & ASSOCIATES, LLC,

a Georgia limited liability company,
HONEST ABE ROOFING OF MACON
GEORGIA, LLC, a Georgia limited liability
company, DAMEION HARRIS, individually,
and CHRISTINE HARRIS, individually

Defendants.

BRIEF IN SUPPORT OF PLAINTIFF’S MOTION FOR TEMPORARY RESTRAINING

ORDER AND PRELIMINARY INJUNCTION

I. INTRODUCTION

Plaintiff Honest Abe Roofing Franchise, Inc. (“Honest Abe”) respectfully submits this

Brief in Support of its Motion for a Temporary Restraining Order and Preliminary Injunction,

seeking to enjoin Defendants DCH & Associates, LLC (“DCH”), Honest Abe Roofing of Macon

Georgia, LLC (“HAR of Macon”), and Dameion Harris and Christine Harris (collectively, “Mr.

and Mrs. Harris”) (collectively, the “Defendants”) from continuing to infringe on Honest Abe’s

Federally registered trademarks and violating covenants not to compete and post-termination

obligations set forth in the Franchise Agreement dated April 8, 2021 (the “Macon Franchise

Agreement”) (See Exhibit E to Complaint), and the Franchise Agreement dated December 22,

2021 (the “Columbus Franchise Agreement”) (See Exhibit A to Complaint), (collectively, the

“Franchise Agreements”), and each Defendants’ Confidentiality and Nondisclosure Agreements

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and Covenants Not to Compete (the “Noncompete Agreements”) (See Exhibit C and Exhibit G

to Complaint), each of even date with the respective Franchise Agreements described above. Mr.

and Mrs. Harris also each executed a Principal Owner’s Guaranty and Assumption of Obligations

(the “Personal Guarantees”) in connection with the Franchise Agreements, pursuant to which Mr.

and Mrs. Harris agreed to “personally jointly and severally guarantee [HAR of Macon’s and DCH]

performance under the Franchise Agreement[s].” (See Exhibit B and Exhibit F to Complaint).

This action comes as a necessary response to two former Honest Abe franchisees’ and their

owners’ blatant breaches of their respective post-termination obligations under their Franchise

Agreements and Noncompete Agreements, and willful and deliberate acts of unfair competition,

trademark infringement, counterfeiting, and misappropriation of goodwill.

On April 8, 2021, Mr. and Mrs. Harris and HAR of Macon executed the Macon Franchise

Agreement to run an Honest Abe Roofing franchise in the Macon, Georgia, metropolitan statistical

area (“MSA”) territory (the “Macon Franchise Agreement Designated Area”). As franchisees, Mr.

and Mrs. Harris received certain confidential and proprietary information of Honest Abe, including

Honest Abe’s system standards, operational procedures, and initial and ongoing training

concerning the operation of an Honest Abe business. On May 5, 2022, after providing Mr. and

Mrs. Harris and HAR of Macon written notice of their numerous defaults under the Macon

Franchise Agreement, Honest Abe terminated the Macon Franchise Agreement, which triggered

Mr. and Mrs. Harris’ and HAR of Macon’s post-term obligations under the Macon Franchise

Agreement and Noncompete Agreements.

When the Macon Franchise Agreement terminated, Honest Abe specifically instructed

HAR of Macon and Mr. and Mrs. Harris to, among other things, “cancel any assumed name or

equivalent registration which contains any of the [Honest Abe registered] Trademarks or parts of

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the Trademarks or any other name, service mark or trademark” of Honest Abe and “immediately

cease to use any Confidential Information, the Business System, the Standards and Specifications,

the Operations Manuals, and Honest Abe’s Marks and other distinctive signs, symbols and devices

associated with the System.” (See Exhibit K to Complaint). HAR of Macon and Mr. and Mrs.

Harris were also specifically reminded of each of their obligations under the Macon Noncompete

Agreement not to engage in a business competitive with Honest Abe within the geographic and

temporal parameters agreed upon by the parties.

On December 22, 2021, Mr. and Mrs. Harris and DCH executed the Columbus Franchise

Agreement to run an Honest Abe Roofing franchise in the Columbus, Georgia MSA territory (the

“Columbus Franchise Agreement Designated Area”). However, DCH materially breached the

Agreement by failing to commence operations of the Columbus franchise within 5 months of

signing the Columbus Franchise Agreement. Therefore, the Columbus Franchise Agreement

terminated on June 1, 2022, which triggered Mr. and Mrs. Harris’ and DCH’s post-termination

obligations under the Columbus Franchise and Noncompete Agreements.

Immediately following the termination of their Honest Abe Franchise Agreements, Mr. and

Mrs. Harris started operating a competing roofing business in Columbus, Georgia. Rather than

complying with their post-termination obligations under the Noncompete Agreements, the Macon

Franchise Agreement, and the Columbus Franchise Agreement and their post-termination

obligations not to use Honest Abe’s Marks or otherwise portray themselves or their businesses as

being or having been associated with Honest Abe, all of which they freely agreed to, Mr. and Mrs.

Harris are currently: 1) providing competitive roofing and related services to consumers in

Georgia, including Columbus and Macon; and 2) continuing to include Honest Abe’s trademarks

in their corporate name, Honest Abe Roofing of Macon Georgia, LLC, and have even gone so far

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as to instruct who they believed to be potential customers to refer to their new roofing business as

“Honest Abe.” This unauthorized and counterfeit use of Honest Abe’s registered trademarks, in

which Honest Abe has built substantial goodwill through years of exclusive use, infringes on

Honest Abe’s trademarks and is highly likely to confuse consumers to mistakenly believe that

Defendants’ goods and roofing services are affiliated with Honest Abe.

Defendants’ willful, ongoing breaches of the Franchise and Noncompete Agreements, their

operation of a competing roofing business, infringing and counterfeit use of Honest Abe’s

registered trademarks, and intentional misappropriation of Honest Abe’s goodwill, are causing,

and will continue to cause, irreparable harm to Honest Abe, its franchise system, and its

franchisees. Honest Abe’s ability to enforce Defendants’ post-termination obligations and

covenants not to compete affects Honest Abe’s ability to maintain control of its reputation and

goodwill and refranchise in the affected geographic areas, and allows Defendants to unfairly and

unlawfully compete against Honest Abe and its franchisees. This harm cannot easily be measured

or remedied by an award of damages. Accordingly, the balance of the four-part test to issue

injunctive relief weighs heavily in favor of Honest Abe.

Immediately, Honest Abe seeks to prevent: 1) All Defendants from operating a competing

business in violation of the Franchise Agreements and Noncompete Agreements; 2) All

Defendants from using Honest Abe’s Confidential Information; and 3) All Defendants from

making unauthorized and infringing use of Honest Abe’s registered trademarks. Defendants’

conduct is causing direct and irreparable harm to Honest Abe and must be enjoined.

II. FACTUAL BACKGROUND

The Honest Abe Roofing Franchise System

Honest Abe has developed a unique and proprietary business system for providing roof

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repair services, new roof installation, gutter installation, and siding installation, along with

other products and services with the primary focus being new roof installation (the “Business

System”), all associated with Honest Abe’s Federally registered trademarks “Honest Abe Roofing”

(Registration No. 5,417,968) and “Honest Abe Roofing the Reliable Roofer” (3,690,665), and its

other trademarks, trade names, and related marks (collectively, the “Marks”). (Complaint ¶¶ 17,

20, 31, 32).

Honest Abe provides its unique services to the general public through authorized

franchisees (the “Franchise System”) (Complaint ¶ 18). As part of the Franchise System, Honest

Abe owns certain confidential and proprietary information and trade secrets not available to the

public (the “Confidential Information”) (Complaint ¶ 22). To ensure the quality of services

provided using the Marks, Honest Abe, among other things, provides: (1) uniform standards and

operational procedures for all Honest Abe franchise businesses; (2) the standards for presentation

and use of the Marks in conjunction with the Business System; (3) initial and ongoing training

concerning the operation of an Honest Abe franchise business; (4) specially designed point-of-sale

systems to process, track, and document work orders, work flow, and ongoing projects; and (5)

ongoing operational support and assistance to its franchisees. (Complaint, ¶ 19). The Honest Abe

Franchise System benefits from its collective, exclusive access to and use of such standards,

operational procedures, training, and other information that is confidential to Honest Abe and its

franchisees. (Complaint, ¶ 24).

Honest Abe’s Franchise System relies on each franchisee playing by Honest Abe’s rules,

such as providing Honest Abe’s roofing services in a first-class manner, coordinating marketing

efforts, full and consistent operation of the Business System, and each franchisee being held to the

same competitive standards. (Complaint, ¶ 25). In that regard, all equity owners of Honest Abe

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franchisees are required to execute a Confidentiality and Nondisclosure Agreements and

Covenants Not to Compete upon entering the Franchise System. (Complaint, ¶ 23) As a result of

Honest Abe’s efforts, the Marks have become associated in the minds of other roofing and related

businesses and consumers as providing the highest standards of quality in the roofing industry.

(Complaint ¶ 32).

Honest Abe has a network of authorized franchisees, with a high concentration of stores in

the Midwest and Southeast regions of the United States. Other than Defendants, Honest Abe has

five (5) locations in Georgia. Honest Abe franchisees benefit from the competitive advantage they

receive from being trained in Honest Abe’s confidential and proprietary business system and

methods, Honest Abe’s vendor and supplier contacts, marketing efforts, and the goodwill

associated with the Marks. The Franchise System is undermined when franchisees like the

Defendants unilaterally decide to operate a directly competitive business in the same geographic

market as their former franchise locations after termination of their Franchise Agreement and uses

Honest Abe’s Marks and Confidential Information in connection with that same competing

business. (Complaint ¶ 26).

Honest Abe has spent, and spends, considerable resources, time, and effort on ongoing

development, promotion, and servicing of the Franchise System, its Marks, and its Confidential

Information. (Complaint ¶ 30). In addition, Honest Abe has made substantial investments in

promotional and marketing campaigns designed to create a strong brand and image on behalf of

itself and the franchisees. (Complaint ¶ 31). Therefore, Honest Abe’s franchisees’ and owners’

covenants not to compete with Honest Abe or its other franchisees after receiving Honest Abe’s

training and Confidential Information are critical for maintaining the integrity of Honest Abe’s

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Franchise System and the value of Honest Abe’s customer goodwill and Confidential Information.

(Complaint ¶ 29).

The Macon and Columbus Franchise Agreements, Noncompete Agreements, and

Personal Guarantees

On April 8, 2021, HAR of Macon and Mr. and Mrs. Harris entered into the Macon

Franchise Agreement with Honest Abe, granting HAR of Macon a nonexclusive right and license

to operate an Honest Abe Roofing franchised business in the Macon, Georgia, Metropolitan

Statistical Area (the “Macon Franchise Agreement Designated Area”) with a physical location at

6004 Hawkinsville Road, Macon, Georgia 31216 (the “Macon Franchise Location”). (Complaint

¶ 14, 33). On December 22, 2021, DCH and Mr. and Mrs. Harris entered into the Columbus

Franchise Agreement with Honest Abe, granting DCH a nonexclusive right and license to operate

an Honest Abe Roofing franchised business in the Columbus, Georgia, Metropolitan Statistical

Area (the “Columbus Franchise Agreement Designated Area”). (Complaint ¶ 9).

The Franchise Agreements authorized the Defendants to use Honest Abe’s Marks in

connection with their respective Honest Abe franchised business. Under the Franchise

Agreements, Mr. and Mrs. Harris agreed not to use any of the Marks as part of their corporate or

other name. (Complaint ¶ 40).

As part of both the Macon and Columbus Franchise Agreements, Defendants agreed to pay

Honest Abe monthly royalties, technology fees, and brand development fees, and authorized

Honest Abe to collect the same through electronic funds transfer (“EFT”). (See Sections 2.02,

9.02, 12.02F of Exhibit E to Complaint). The Franchise Agreements also required them to provide

Honest Abe access to their sales data and information through the computer system that all Honest

Abe franchisees must use and notify Honest Abe whenever their address for receiving notice under

the Franchise Agreements changed. (See Sections 6.05L and 18 of Exhibit E to Complaint).

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In addition, the Columbus Franchise Agreement required DCH and Mr. and Mrs. Harris to

open for business within five (5) months of execution. (See Sections 6.02 and 6.05(M) of Exhibit

A to Complaint). Under Paragraph 15.01A of the Columbus Franchise Agreement, Mr. and Mrs.

Harris’s failure to “commence construction of the [applicable] Franchised Business or open” the

same is a default “for which there shall be no opportunity to cure.” (See Section 15.01A of Exhibit

A to Complaint).

In addition, Section 16 of the Franchise Agreements requires Defendants to comply with

certain post-termination obligations. (See Section 16 of Exhibits A and E to Complaint). These

obligations include, among other things, requiring Defendants to, upon termination of the

applicable Franchise Agreement: i) immediately cease to use any Confidential Information, the

Business System, the Standards and Specifications, the Operations Manuals, and Honest Abe’s

Marks and other distinctive signs, symbols and devices associated with the System; ii) Cancel any

assumed name or equivalent registration which contains any of Honest Abe’s Marks or parts of

the Marks or any other name, service mark or trademark of Honest Abe’s; iii) Immediately pay

Honest Abe within seven (7) days of the date of termination all Royalties, Brand Development

Fund fees, and any other fee payable to Honest Abe, with late payment charges, interest and any

other fees due to Honest Abe; iv) Immediately pay to Honest Abe the actual and consequential

damages, costs, and expenses (including without limitation attorney and expert fees) incurred by

Honest Abe as a result of HAR of Macon’s default; v) Strictly comply with, observe and abide by

all of the provisions and covenants in Section 16 of the Macon Franchise Agreement; vi) Neither

directly nor indirectly represent to the public that any other business Defendants may then own or

operate, is or was operated as, or was in any way connected to, the System; and vii) Not operate

or do business under any name or in any manner which might tend to give the general public the

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impression that their business is operating a Franchised Business or any confusingly-similar

business. Id.

Under Section 16 of the Franchise Agreements, Defendants agreed not to use any marks

that could cause confusion, mistake, or deception as to the source of origin of their goods or

services, or which could dilute Honest Abe’s rights in and to any of the Marks; or utilize any

designation of origin, description or representation which might suggest an association or

connection with Honest Abe. (See Sections 16.04(A) and 16.4(B) of Exhibits A and E to

Complaint).

Contemporaneous with the execution of the Franchise Agreements, Mr. and Mrs. Harris

signed the Noncompete Agreements and the Personal Guarantees. (See Exhibits B, C, F, and G

to Complaint). Under the Noncompete Agreements, Mr. and Mrs. Harris agreed to not “for a period

of 2 years from the date of each respective Franchise Agreement’s termination . . . carry on, be

engaged in or be concerned with or interested in . . . any business competitive with or similar to

the Franchised Business within 50 miles of the Franchised Business Location or any other Honest

Abe Roofing Franchised Business.” (See Section 4(a) of Exhibits C and G to Complaint). Under

the Noncompete Agreement, a “business competitive with or similar to the Franchised Business”

is “any business offering the same or similar products and services, including roofing, gutters, and

other home improvement products and services,” then offered by Honest Abe. (See Section 26 of

Exhibits A and E of Complaint). Such covenant not to compete with Honest Abe or its franchisees

after receiving Honest Abe’s training and Confidential Information are imperative for maintaining

the integrity of Honest Abe’s Franchise System and the value of Honest Abe’s Confidential

Information. (Complaint, ¶ 29). Further, under each Personal Guarantee, Mr. and Mrs. Harris

agreed to personally guarantee, and thus are personally liable for, HAR of Macon’s and DCH’s

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respective breaches of their post-termination obligations under the Franchise Agreements and

Noncompete Agreements.

Termination of the Macon Franchise Agreement

On March 8, 2022, after HAR of Macon’s and Mr. and Mrs. Harris’ repeated defaults under

the Macon Franchise Agreement, Honest Abe sent such them a written notice of default (the “First

Notice of Default”) consistent with the Macon Franchise Agreement’s notice provisions, including

sending the Notice to the mailing address for receiving notices provided therein by Mr. and Mrs.

Harris. (See Exhibit H to Complaint). The First Notice of Default notified HAR of Macon and

Mr. and Mrs. Harris of their specific material defaults and provided them 30 days to cure such

defaults in order to avoid termination of the Macon Franchise Agreement; such material defaults,

at the time, included: failing to pay Honest Abe the agreed-upon monthly royalty, brand

development fee, and technology fee; failing to comply with Honest Abe’s EFT requirements; and

failing to restore Honest Abe’s access to HAR of Macon’s Quickbooks. Id. However, the First

Notice of Default was returned to Honest Abe as “undeliverable” because Mr. and Mrs. Harris had

changed their mailing address and failed to notify Honest Abe – another breach of the Macon

Franchise Agreement. (See Exhibit I to Complaint).

On April 12, 2022, after learning Mr. and Mrs. Harris’s new address, Honest Abe sent

HAR of Macon and Mrs. and Mrs. Harris a second notice of default (the “Second Notice of

Default”). (See Exhibit J to Complaint). The Second Notice of Default notified Mr. and Mrs.

Harris of every default outlined in the First Notice of Default, each of which still having been

uncured, and also Mr. and Mrs. Harris’s additional discovered defaults, which included changing

their address where they may receive notices under the Macon Franchise Agreement without

notifying Honest Abe and canceling the required workers’ compensation insurance for their Macon

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franchised business. Id. HAR of Macon and Mr. and Mrs. Harris failed to cure their defaults.

(Complaint, ¶ 55). Therefore, the Macon Franchise Agreement was terminated pursuant to a notice

of termination (the “Macon Notice of Termination”), effective May 5, 2022, which triggered

Defendants’ post-termination obligations under the Macon Franchise Agreement. (See Exhibit K

to Complaint).

The Macon Notice of Termination specifically instructed Mr. and Mrs. Harris to, among

other things, “cancel any assumed name or equivalent registration which contains any of the

[Honest Abe registered] Trademarks or parts of the Trademarks or any other name, service mark

or trademark” of Honest Abe and “immediately cease to use any Confidential Information, the

Business System, the Standards and Specifications, the Operations Manuals, and Honest Abe’s

Marks and other distinctive signs, symbols and devices associated with the System.” Id. The

Macon Notice of Termination also clearly outlined and set forth Mr. and Mrs. Harris’s other post-

termination covenants and obligations under the Macon Franchise and Noncompete Agreements.

Id.

Termination of the Columbus Franchise Agreement

As explained above, the Columbus Franchise Agreement required DCH and Mr. and Mrs.

Harris to open their Columbus franchise business within 5 months of execution, or May 22, 2022.

On June 1, 2022, the Columbus Franchise Agreement was terminated pursuant to a written notice

of termination (the “Columbus Notice of Termination”), due to DCH’s and Mr. and Mrs. Harris’

failure to open the franchise for business. (Complaint, ¶ 29; Exhibit L to Complaint). The

Columbus Notice of Termination triggered and clearly set forth DCH’s and Mr. and Mrs. Harris’

post-termination covenants and obligations under the Columbus Franchise and Noncompete

Agreements. Id.

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Defendants’ Breaches of their Post-Termination Obligations

Rather than comply with the Noncompete Agreements and other post-termination

obligations under the Franchise Agreements that they freely entered into, Mr. and Mrs. Harris

immediately began to engage in, and continue to engage in, the business of offering and selling

roof repair services, new roof installation, gutter installation services, and similar home

improvement services in both Macon and Columbus, Georgia. (See Complaint, ¶ 75). Evidence

accumulated through Honest Abe’s private investigation clearly reveals that Mr. and Mrs. Harris

are providing roofing repair and installation services to consumers in the Macon and Columbus,

Georgia, markets, in direct violation of the Franchise Agreements and Noncompete Agreements.

(See Exhibit M to Complaint).

Plaintiff’s Investigator Confirmed That Mr. and Mrs. Harris are Actively Breaching their
Post-Termination and Noncompete Agreements with Honest Abe

Upon Honest Abe’s suspicion that Mr. and Mrs. Harris were operating a competing

business and continuing to use Honest Abe’s Marks, Honest Abe engaged the services of Southeast

Legal Investigation & Detection (“Southeast”), a private investigation firm in Georgia. On both

June 15, 2022 and June 18, 2022, Mr. Lee Wilson (the “Investigator”), a private investigator

working for Southeast, left voicemail messages for Mr. Harris at telephone number (240) 319-

2269 using the alias Nolan Diles, wherein he inquired about a roofing services in Macon, Georgia.

(See Exhibit M to Complaint, ¶ 10). The Investigator confirmed that the telephone number (240)

319-2269 was subscribed to Mrs. Harris. (See Exhibit M to Complaint, ¶ 8, Exhibit B). On June

22, 2022, the Investigator sent a text message to that same telephone number that read, “I’m trying

to reach a dude who does roofs in Macon. Can’t remember his name. Friend gave me number and

said to try you.” (See Exhibit M to Complaint, ¶ 11, Exhibit C).

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On June 24, 2022, the Investigator received a telephone call from Mr. Harris, calling from

(240) 319-2269, responding to the Investigator’s voicemail and text messages. (See Exhibit M to

Complaint, ¶ 12). Early in the call the Investigator asked Mr. Harris, “Are you Abe?,” referring to

Honest Abe. (See Exhibit M to Complaint, ¶ 12). While under the impression that the Investigator

was a potential customer, Mr. Harris responded, “Yes. Yes, sir. Yes, sir.” Id. The Investigator

represented that he wanted to help his son and daughter-in-law put a roof on their house, and Mr.

Harris explained that he would schedule a time for a “roofing advisor” to meet with the Investigator

to look at the house and collect more information about their needs. (See Exhibit M to Complaint,

¶ 13). The Investigator asked again, “Your name is Abe? Is that right?,” to which Mr. Harris

responded, “Yes, yes the company is Honest Abe Roofing but we just got bought over so we are

called Authority Home Service Professionals.” Id. For clarity, the Investigator asked, “Okay, so

Authority Home Associates, you said?” Id. Mr. Harris told him, “Yeah, but you can put Honest

Abe Roofing for now, just so they can remember.” Id. Mr. Harris spent the remainder of the call

discussing the Investigator’s financing options, informing the Investigator that his company works

with several banks to provide customers financing, and stating that his “inside salesperson” would

follow up when “she’s in front of a computer.” Id.

On June 29, 2022, after attempts by the Investigator to follow up with Mr. Harris on the

roofing quote, Mrs. Harris called the Investigator for information about the house and schedule a

meeting for a roofing advisor. (See Exhibit M to Complaint, ¶ 17). Mrs. Harris began the call by

stating “this is Authority Home Service Professionals.” (See Exhibit M to Complaint, ¶ 17). Mrs.

Harris told the Investigator, who was still representing himself as a prospective roofing customer,

that their company had “changed some things,” had been “bought out,” and had a new location but

would “absolutely service” him. Id. Mrs. Harris also made a point to confirm with the Investigator

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that the house to receive the roof replacement was “in the Macon area.” Id. The two went on to

discuss potential financing options for the project. Id. Following the phone call, Mrs. Harris sent

the Investigator a text message confirming the roofing advisor meeting was scheduled for Friday,

July 1, 2022, again identifying herself as “Christine with Authority.” (See Exhibit M to

Complaint, ¶ 18, Exhibit D).

On July 1, 2022, the Investigator met Mr. Harris at a house located at 3868 Robinson Road,

Macon, Georgia, for Mr. Harris to inspect the same and provide the Investigator a quote for the

price of a roof replacement. (See Exhibit M to Complaint, ¶ 19). 3868 Robinson Road is

approximately nine (9) miles from Defendants’ former Franchise Location in Macon and within

the Macon, Georgia MSA; thus, well within the Macon Franchise Agreement Designated Area and

the geographic scope of the Macon Noncompete Agreement’s restrictive covenant. (See

Complaint, ¶ 91, Exhibit N to Complaint). Mr. Harris arrived at the meeting in a 2015 GMC

Yukon Denali with Georgia Tag # CPD 9485, which vehicle is registered to Mrs. Harris. (See

Exhibit M to Complaint, ¶ 7, 19). When the Investigator again asked “Are you Abe, the Abes?,”

Mr. Harris replied that “Well, we’re now home service professionals.” (See Exhibit M to

Complaint, ¶ 20). Later, when the Investigator mentioned that “I guess y’all changed companies

or something,” Mr. Harris stated that “We had to because we’re doing more than roofs now.” (See

Exhibit M to Complaint, ¶ 21).

The Investigator’s meeting with Mr. Harris at 3868 Robinson Road lasted approximately

45 minutes. (See Exhibit M to Complaint, ¶ 19). During that time, Mr. Harris walked around and

investigated the house and discussed in detail the roofing and home improvement services that he

and Mrs. Harris offer, price quotes and rates for what Mr. and Mrs. Harris’s company would charge

for replacing the roof at the house, and potential financing options. (See Exhibit M to Complaint,

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¶ 21). Mr. Harris assured the Investigator that he was fully licensed and insured for the roofing

work. Id. When the Investigator asked Mr. Harris if their company was local, Mr. Harris

confirmed, “We’re out of Columbus, Georgia.” (See Exhibit M to Complaint, ¶ 22). When the

Investigator asked if Mr. Harris’s company serviced all over the State of Georgia, Mr. Harris

responded “Mm-hmm” in the affirmative and that “we’ve been doing pretty good business.” Id.

While Mr. Harris did not have a business card, he wrote a telephone number on a yellow legal pad

for the Investigator, along with the words “Authority Home Service Professional.” (See Exhibit

M to Complaint, ¶ 23, Exhibit E).

Following Mr. Harris’ meeting with the Investigator at 3868 Robinson Road in Macon,

Mrs. Harris emailed the Investigator a price estimate for a roof replacement at the house. (See

Exhibit M to Complaint, ¶ 26, Exhibit F). She quoted the Investigator $23,000 for “Architectural

Shingles” and $28,000 for "Polymodified Shingles.” Id. On July 5, 2022, the Investigator

responded to Mrs. Harris’ email requesting more information on his financing options; to which

Mrs. Harris replied that their company worked with multiple banks. (See Exhibit M to Complaint,

¶ 27, Exhibit G).

The Authority Home Service Professionals Website

Defendants are currently marketing and offering their competitive roofing repair roofing

installation, gutter installation, and related home improvement services to the public online at

https://www.ahsprofessionals.com (the “AHSP Website”). (See Complaint ¶ 101, Exhibit O to

Complaint). The AHSP Website specifically identifies Mr. and Mrs. Harris as co-owners of an

Authority Home Service Professionals location in Columbus, Georgia. (See Complaint ¶ 103,

Exhibit P to Complaint). Also, in a clear effort to avoid detection and accountability for violating

their Noncompete Agreements, the AHSP Website’s Privacy Policy, which is meant for website

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owners to provide disclosure and openness about their data collection activities, actually provides

the public with a non-existent street address of 1234 Elm Street, Terre Haute, Indiana 47802, and

a telephone number of (800) 304-1234, which is inoperative and clearly not tied to their active

roofing business. (See Complaint ¶ 107-111, Exhibit Q to Complaint). Defendants are clearly not

doing business at such address, as there is no place in Terre Haute, Indiana with an address of 1234

Elm Street. (See Complaint ¶ 109). Also, the telephone number (800) 304-1234 directs callers to

an automated message stating, “the offer for which you are calling is not yet available” before the

call is automatically ended. (See Complaint ¶ 111). Mr. and Mrs. Harris also omit, conceal, and

misdirect the public as to the actual identity of the website owner or owner of the tradename

“Authority Home Service Professionals.” (See Complaint ¶ 107, Exhibits Q to Complaint). There

is no company registered in the State of Georgia under the name “Authority Home Service

Professionals.” (Complaint ¶ 113-14). By no coincidence, the AHSP Website’s Privacy Policy is

identical to that of Honest Abe’s own website, except for the parties’ names, nonexistent street

address, and inoperative telephone number. (See Complaint ¶ 112, Exhibits Q and Exhibit R to

Complaint).

Defendants Continue to Use Honest Abe’s Marks

The Defendants also continue to use Honest Abe’s Marks in the name of their business

entity – Honest Abe of Macon Georgia, LLC – despite Honest Abe’s specific instruction in the

Notices of Termination to, among other things: 1) “cancel any assumed name or equivalent

registration which contains any of the [Honest Abe registered] Trademarks or parts of the

Trademarks or any other name, service mark or trademark” and 2) “immediately cease to use any

Confidential Information, the Business System, the Standards and Specifications, the Operations

Manuals, and Honest Abe’s Marks.” (See Complaint ¶ 115, Exhibits S to Complaint). As

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confirmed by the Investigator, Mr. and Mrs. Harris misrepresent to prospective customers that they

were “bought out,” and yet instruct prospective customers to refer to their competitive roofing

business as “Honest Abe.” (Complaint ¶ 82, 87, Exhibit M to Complaint, ¶ 13, 17). Mr. Harris

specifically told Honest Abe’s Investigator to, “put Honest Abe Roofing for now, just so they can

remember,” when the Investigator sought to clarify the name of Mr. Harris’s business. (See

Complaint ¶ 83, Exhibits M to Complaint, ¶ 13). Again, when asked by Plaintiff’s Investigator

whether they were “Abe,” Mr. Harris replied “Yes. Yes, sir. Yes, sir.” (Complaint ¶ 80, Exhibit

M to Complaint, ¶ 12). Such continued and deliberately misleading use of Honest Abe’s Marks

constitutes willful infringement, unfair competition, counterfeiting, and misappropriation of

goodwill, and is a violation of the Lanham Act and Defendants’ post-termination obligations under

the Franchise Agreements.

To date, Defendants have failed to comply with nearly all of their post-termination

obligations under the Franchise Agreements. (Complaint, ¶¶ 155-57, 162). Moreover, the

Defendants have no further rights to use Honest Abe’s Marks or to unfairly compete against Honest

Abe in violation of the Franchise Agreements and Noncompete Agreements. From the consuming

public’s perspective, they are performing the same service as Honest Abe. (Complaint, ¶ 120).

Honest Abe has no means of enforcing the Franchise Agreements and Noncompete Agreements

other than to seek injunctive relief. (Complaint, ¶ 119).

II. LAW AND ARGUMENT

A. A Temporary Restraining Order is Warranted

Pursuant to Rule 65(b)(1) of the Federal Rules of Civil Procedure, a temporary restraining

order should be granted because 1) Defendants have refused to comply with their post-termination

obligations under the Franchise Agreements, including returning Honest Abe’s confidential and

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proprietary information and trade secrets; 2) Defendants are directly competing with Honest Abe

and Honest Abe’s franchisees under the assumed name Authority Home Service Professionals in

blatant violation of the Noncompete Agreements; and 3) Defendants continue to intentionally

engage in the misleading and unauthorized use of Honest Abe’s Marks in their business entity

name and instruct potential customers to refer to them as “Honest Abe;” all of which is causing

Honest Abe irreparable harm. Re/Max North Cent. v. Cook, 272 F.3d 424, 432 (7th Cir. 2001)

(“We have clearly and repeatedly held that damage to a trademark holder’s goodwill can constitute

irreparable injury”); Turnell v. CentiMark Corp., 796 F.3d 656, 666 (7th Cir. 2015) (stating that

the injury to a former employee from employee’s breach of a noncompete agreement is a

“canonical form of irreparable harm” and difficult to calculate, making “restrictive covenants

prime candidates for injunctive relief”). Unless immediately restrained by this Court, Defendants

will continue to carry out their wrongful plans and acts against Honest Abe, thereby immediately

and permanently causing Honest Abe to suffer irreparable injury. Id.; Ram Products Co., Inc. v.

Chauncey, 967 F. Supp. 1071 (N.D. Ind. 1997) (“Loss of customer goodwill often amounts

to irreparable injury because the damages flowing from such losses are difficult to compute”).

B. Preliminary Injunction is Warranted

In the Seventh Circuit, a preliminary injunction may be granted where the party seeking an

injunction shows: (1) a likelihood of success on the merits; (2) irreparable harm should the

injunction be denied; (3) the balance of equities tips in favor of granting the injunction (i.e., that

the harm to Plaintiff’s if the injunction is denied will be greater than the harm the injunction, if

granted, would inflict on the Defendants); and, (4) the injunction is in the public interest. Illinois

Republican Party v. Pritzker, 973 F.3d 760 (7th Cir. 2020); Judge v. Quinn, 612 F.3d 537, 68

A.L.R.6th 765 (7th Cir. 2010). These factors are to be balanced against one another and the more

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net harm an injunction can prevent, the weaker the plaintiff’s claim on the merits can be while still

supporting preliminary relief. Hoosier Energy Rural Elec. Co-op., Inc. v. John Hancock Life Ins.

Co., 582 F.3d 721 (7th Cir. 2009).

1. Honest Abe is Likely to Succeed on the Merits of its Verified Complaint

Breach of Contract

Defendants have violated their express obligations under the Franchise Agreements and

Noncompete Agreements by refusing to comply with their post-termination obligations and

covenants not to compete. Indiana law is clear that courts will enforce restrictive covenants,

including covenants not to compete, if they are found to be reasonable. South Bend Consumers

Club, Inc. v. United Consumers Club, Inc., 572 F. Supp. 209 (N.D. Ind. 1983). More specifically,

courts will enforce covenants not to compete in the context of a franchise relationship when they

are reasonable and protect a legitimate business interest. Id. at 213-14 (holding that “in the context

of franchise operations,” a “protectible interest does exist in the franchise itself . . . and in other

interests attendant to a franchising arrangement recognized under Indiana law such as customer

contacts . . . and goodwill”); McCart v. H&R Block, Inc., 470 N.E.2d 756, 764 (Ind. Ct. App. 1984)

(explaining that covenant not to compete between franchisor and franchisee was enforceable in the

franchise context so long as it was reasonable because the franchisor had a “protectible interest in

the customers [franchisee] serviced under [franchisor’s] name”); Tutor Time Learning Centers,

LLC v. Larzak, Inc., 2007 WL 2025214 (N.D. Ind. 2007).

Operating a directly competing business in the same markets as Defendants’ former Honest

Abe franchised businesses, which markets the parties agreed would be covered in the geographic

scope of Defendants’ restrictive covenants, is precisely the type of action that the parties intended

to prohibit at the time of executing the Franchise Agreements and Noncompete Agreements. Yet,

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Defendants continue to provide directly competitive roof repair services, new roof installation,

gutter installation, and similar home improvement services all over the State of Georgia from a

business location in Columbus. Honest Abe’s investigation has revealed that Mr. and Mrs. Harris

openly instruct prospective customers to refer to them as “Honest Abe.” In that regard, there is no

question that the Defendants are violating their contractual obligations to Honest Abe.

Continuing to use Honest Abe’s confidential and proprietary information and Marks

constitutes irreparable harm under Indiana law. See South Bend Consumers Club, 572 F. Supp. at

213 (assuming that a protectible interest exists in a franchise itself and in customer contacts and

goodwill associated with the franchise); McCart, 470 N.E.2d at 764 (holding that a franchisor had

a protectible interest in the goodwill of its mark, which it preserved by including the covenant not

to compete in its franchise agreement); Tutor Time Learning Centers,2007 WL 2025214, at *12

(holding that a franchisor had a legitimate, protectible interest in its system, the goodwill of its

business, and the confidential materials and information associated with its franchise system).

a. Honest Abe’s Legitimate Business Interest

Honest Abe has a legitimate business interest in enforcing the post termination obligations

and covenants not to compete because: 1) Honest Abe has established a name, reputation, and

goodwill in multiple regions of the United States, including in the State of Georgia, as a result of

its investment of time, money and other resources into its Marks and Business System.

(Complaint, ¶¶ 30-32); 2) Honest Abe has developed goodwill over the years in the Georgia

market, including in and around Columbus and Macon, Georgia, through advertising and operation

of Honest Abe Franchise Stores, including those granted to Defendants; 3) Honest Abe intends to

refranchise in the Columbus area, and will have a difficult time doing so while the Defendants are

competing in the same area using a business system they learned from Honest Abe (Complaint, ¶

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122); 4) Defendants are willfully and misleadingly using Honest Abe’s Business System and

Marks in connection with Defendants’ competing roofing and home improvement business, even

to the extent of using Honest Abe’s Marks in their corporate name in direct defiance of Honest

Abe’s specific instructions to change their name, and instructing Honest Abe’s Investigator (who

Defendants believed to be a prospective roofing customer) to refer to them as “Honest Abe;” 5)

Honest Abe’s franchisees, including Honest Abe’s new franchisee in Macon, Georgia, expect that

Honest Abe will successfully enforce these restrictive covenants against rogue former franchisees

like Defendants to preserve the franchise system and Marks; 6) Honest Abe’s confidential and

proprietary information, trade secrets, and methods will continue to be used against Honest Abe

such as, without limitation, the contents of Honest Abe’s training programs, operations manual,

pricing information, supplier and customer contacts, and methods; and 7) Honest Abe and its

franchisees will be forced to compete with a business that possess and has been trained to use

Honest Abe’s Confidential Information.

If the Court does not grant injunctive relief, Defendants will continue operating their

directly competitive roofing business and infringing Honest Abe’s Marks. Honest Abe will be

forced to compete with a former franchisee using “inside information” as to how Honest Abe

operates. (Complaint., ¶ 117). Therefore, a preliminary injunction is necessary to protect Honest

Abe’s legitimate business interests. See South Bend Consumers Club, 572 F. Supp., at 213 ;

McCart, 470 N.E.2d, at 764; Tutor Time Learning Centers, 2007 WL 2025214, at *12.

b. Time and Geographic Scope

The non-compete provisions of both Franchise Agreements and the Noncompete

Agreements executed in connection thereto are reasonable in time and geographic scope. The time

period for each covenant not to compete is two (2) years and the geographic scope is within fifty

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(50) miles from Defendants’ former Franchise Locations, respectively. Similar limitations have

been enforced by Indiana courts in the franchise context. See, McCart, 470 N.E.2d, at 765

(upholding a franchisee’s covenant not to compete within a 50-mile radius of the franchisee’s

location); Tutor Time, 2007 WL 2025214, at *12 (finding a franchisee’s two-year time period in

the covenant not to compete post franchise agreement reasonable). Moreover, Mr. and Mrs. Harris

agreed and acknowledged, as “Owner” of HAR of Macon and DCH, that “[t]he covenants not to

compete set forth in [the Noncompete Agreements] are fair and reasonable, and will not impose

any undue hardship on Owner, since Owner has other considerable skills, experience and education

which afford Owner the opportunity to derive income from other endeavors.” (See Section 7 of

Exhibits C and G to Complaint). Accordingly, Mr. and Mrs. Harris specifically agreed that the

time and geographic scope of the Noncompete Agreements are reasonable.

Based on the foregoing, the restrictive covenants contained in the Noncompete Agreements

and Franchise Agreements are valid, reasonable, and fully enforceable under Indiana law, and

Honest Abe is highly likely to succeed on the merits of its breach of contract claims, namely here,

breach of the parties’ post-termination obligations and restrictive covenants.

Lanham Act and Common Law Unfair Competition Claims

The Franchise Agreements and the Defendants’ rights to use the Marks expired upon

termination of the Franchise Agreements. Defendants specifically agreed that their rights to use

the Marks ceased upon termination of their respective Franchise Agreements. (Franchise

Agreement, ¶ 28). Despite such termination, Defendants continue to maintain a business entity

under the name “Honest Abe of Macon Georgia, LLC,” and have verbally represented themselves

to prospective customers as “Honest Abe” and instructed such potential customers to refer to them

as “Honest Abe.” (See Complaint ¶¶ 80, 82-83, Exhibit M to Complaint). Courts have held that a

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terminated franchisee violates the Lanham Act by continuing to use the franchise marks after the

franchise agreement has been terminated. Re/Max North Cent. v. Cook, 272 F.3d 424, 432 (7th

Cir. 2001) (upholding the District Court’s preliminary injunction for trademark infringement under

the Lanham Act prohibiting a former franchisee’s use of franchisor’s marks after termination of

the franchise agreement ); Gorenstein Enterprises, Inc., v. Quality Care-USA, Inc., 874 F.2d 431,

435 (7th Cir. 1989) (“Once a franchise has been terminated, the franchisee cannot be allowed to

keep on using the trademark”); Manpower Inc. v. Mason, 405 F.Supp.2d 959, 974 (E.D. Wis. 2005)

(“If a franchisor lawfully rescinds a franchise agreement, the former franchisee may no longer use

the franchisor's name or mark without violating the Lanham Act”).

Honest Abe is likely to succeed on the merits with respect to its claim for trademark

infringement under 43(a) of the Lanham Act. To establish a violation of the Lanham Act, Honest

Abe need only demonstrate a likelihood of confusion, mistake, or deception from the Defendants’

use of its trademarks. 15 U.S.C. § 1114(1); Meridian Mut. Ins. Co. v. Meridian Ins. Group, Inc.,

128 F.3d 1111, 44 U.S.P.Q.2d 1545 (7th Cir. 1997). Courts have also held that “[t]he analysis

under the Lanham Act for trademark infringement and unfair competition also applies to claims of

unfair competition under Indiana common law.” CFM Majestic v. NHC, Inc., 93 F. Supp. 2d 942,

fn 20 (N.D. Ind. 2000); Indiana Cheer Elite, Inc. v. Champion Cheering Organization, LLC, 2005

WL 2219467 (N.D. Ind. September 13, 2005); Hammons Mobile Homes, Inc. v. Laser Mobile

Home Transport, Inc., 501 N.E.2d 458, 461 (“[F]ederal courts have interpreted Indiana's law on

unfair competition as an attempt to create confusion as to the source of the unfair competitor's

goods”).

Under the Lanham Act, a multi-factor analysis is used to determine whether confusion

would be likely to result from the simultaneous use of two marks. These factors include: 1) strength

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of the plaintiff’s mark; 2) relatedness of the goods or services; 3) the similarity of the marks; 4)

evidence of actual confusion; 5) the area and manner of the parties’ concurrent use of the marks;

6) the degree of care likely to be exercised by the purchaser; and 7) the defendant’s bad faith intent

in selecting the mark. Meridian Mut. Ins. Co., 128 F.3d at 1115. Here, Defendants’ continued use

of Honest Abe’s exact Marks in Defendant HAR of Macon’s corporate name, Mr. Harris’s verbal

instruction to potential customers to refer to them as “Honest Abe,” and Defendants’ deliberate

efforts to conceal their business’s identity from the public on the Authority Home Service

Professionals website are very likely to confuse consumers as to the source or origin of

Defendants’ goods and services.

a. The Strength of Honest Abe’s Marks

Honest Abe possesses, and has possessed for years, federal trademark registrations for each

of its principal trademarks: HONEST ABE ROOFING (standard character mark) (Registration

No. 5,417,968) and HONEST ABE ROOFING THE RELIABLE ROOFER (design plus words,

letters, and/or numbers) (Registration No. 3,690,665). Such registrations evidence the strength of

Honest Abe’s Marks and its exclusive use of each Mark in connection with its roofing services.

b. Relatedness of the Goods or Services

Defendants continue to offer goods and services identical to those that Defendants offered

as authorized Honest Abe franchisees. Namely, Defendants provide consumers in and around

Macon and Columbus, Georgia, roofing repair, installation, and maintenance, gutter services, and

related home improvement services. The consumer base of the Defendants’ competitive business

is identical to when Defendants operated as authorized Honest Abe franchisees, as admitted by

Mr. Harris who stated that Defendants service the entire State of Georgia while visiting who

Defendants believed was a potential customer in Macon. They offer the exact same type of services

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as they did as a Honest Abe franchisees, all in the exact same Columbus and Macon markets. From

the consuming public’s perspective, the Defendants are performing the exact same services as, and

are, “Honest Abe.” (Complaint, ¶ 120).

c. Similarity of the Marks

Defendants HAR of Macon and Mr. and Mrs. Harris continue to include Honest Abe’s

Marks in their corporate name and have actually instructed prospective customers to refer to them

as “Honest Abe.” (Complaint ¶¶ 80, 83). When there is direct competition of goods or services,

courts have recognized that confusion is likely if the marks are sufficiently similar. Maui Jim, Inc.

v. SmartBuy Guru Enterprises, 459 F.Supp.3d 1058, 1093 (N.D. Ill. 2020) (“Consumers are likely

to attribute similar products to a single source when the parties compete in the same market,

targeting similar consumers”).

Here, not only are Defendants using Honest Abe’s exact Marks, but the services that

Defendants are offering under the Marks are exactly the same as, and directly competitive with,

Honest Abe’s services. Because the marks are identical, and the services are identical, there is a

likelihood of confusion.

d. Evidence of Actual Confusion

Honest Abe is not required to provide evidence of actual confusion. CAE, Inc. v. Clean Air

Engineering, Inc., 267 F.3d 660, 685 (7th Cir. 2001) (“Although evidence of actual confusion, if

available, is entitled to substantial weight in the likelihood of confusion analysis, . . . this evidence

is not required to prove that a likelihood of confusion exists.”); See also, Eli Lilly and Company v.

Arla Foods, Inc. 893 F.3d 375, 379 (7th Cir. 2018) (stating that evidence of actual consumer

confusion is unnecessary at the preliminary-injunction stage).

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Here, Defendants have shown that they have every intent of misrepresenting to actual

customers that they are Honest Abe. While Honest Abe does not have evidence of actual consumer

confusion at this preliminary stage of litigation, absent an injunction from this Court, it is highly

likely that Defendants will cause actual consumer confusion by continuing to misrepresent that

they are Honest Abe. Accordingly, since evidence of actual consumer confusion is not required to

prove that a likelihood of confusion exits, this factor is neutral.

e. The Area and Manner of the Parties’ Concurrent Use of the Marks

Defendants and Honest Abe clearly have a relationship in the area and manner of the

concurrent uses of Honest Abe’s Marks. See Forum Corp. of North America v. Forum, Ltd., 903

F.2d 434, 442 (7th Cir. 1990) (stating that this factor “requires us to consider whether there is a

relationship in use, promotion, distribution, or sales between the goods or services of the parties.”).

Honest Abe has five (5) franchise locations in Georgia, including in Macon where Defendants are

operating. Honest Abe and Defendants also use similar marketing procedures and target the same

consumers, namely owners of real estate in need of roofing repair services. See Ty, Inc. v. Jones

Group, Inc. 237 F.3d 891, 901 (7th Cir. 2001) (holding that the area of concurrent use overlapped

when the parties sold their products in the same locations and targeted the same general audience).

Based on the foregoing, it is clear that the parties are using Honest Abe’s Marks in the same

manner, in the same channels of commerce, and to market to the same consumers, all of which

support that confusion is likely. Accordingly, this factor weights in favor of Honest Abe.

f. The Degree of Consumer Care

Both Honest Abe’s and Defendants’ purchasers, given their degree of care and

sophistication, are likely to be confused as to the source of the infringing services. CAE, Inc. v.

Clean Air Engineering, Inc., 267 F.3d at 682 (to assess the degree of consumer care, the court must

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consider both parties’ potential customers). Even when there is a high level of technical

sophistication by potential customers, that does not mean that the customer is likely to have a high

degree of trademark sophistication or knowledge of the business’s corporate structure. Id. at 683.

(The Court considered both a potential customer’s trademark sophistication and knowledge of the

business’s corporate structure when analyzing this factor.).

Here, Honest Abe and Defendants provide identical roofing services to identical customers.

These customers include the average homeowner that does not possess technical knowledge on

how to repair a roof let alone Honest Abe’s corporate and franchise structure. Accordingly, when

a former franchisee like Defendant misrepresents that they are “Honest Abe,” even a sophisticated

customer exercising a high degree of care is unlikely to decipher that Honest Abe and Defendants

are different. Accordingly, this factor weighs in favor of Honest Abe and supports a finding that

confusion is likely.

g. Bad Faith Intent

Defendants’ continued use of Honest Abe’s Marks, despite termination of the Franchise

Agreements, demonstrate a clear intent to “palm off” the goodwill that Honest Abe has

accumulated in its Marks. See AutoZone, Inc. v. Strick, 543 F.3d 923, 929 (7th Cir. 2008) (stating

that while no single factor of likelihood of confusion is dispositive, “similarity of the marks, the

defendant's intent, and actual confusion are particularly important”); Sorenson v. WD-40 Co., 792

F.3d 712, 731 (7th Cir. 2015) (“This factor focuses on evidence that the defendant is attempting to

pass off its product as having come from the plaintiff’). While “mere knowledge of someone else’s

mark” is not enough by itself to show the requisite intent, courts have noted additional relevant

considerations, including the geographic proximity of the infringer to the mark owner, use of the

exact same mark for the exact same goods, and use of a fake address for a storefront. Barbecue

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Marx, Inc. v.551 Ogden, Inc., 235 F.3d 1041 (7th Cir. 2000); Flagstar Bank, FSB v. Freestar Bank,

N.A., 687 F.Supp.2d 811 (C.D. Ill. 2009); Delta Faucet Company v. Iakovlev, 2022 WL 900159

(S.D. Ind. March 28, 2022) (Slip Copy).

Here, Defendants clearly intend to “palm off” Honest Abe’s customer goodwill.

Defendants agreed and acknowledged when signing the Franchise Agreements that upon

termination of the Franchise Agreements, Defendants must cease all use of Honest Abe’s Marks

and would no longer have any right to identify themselves as, or portray any affiliation with,

Honest Abe or its services. (Complaint ¶ 44, Section 16 of Exhibits A and E of Complaint). Honest

Abe reiterated and put Defendants on notice of such obligations in the Notices of Termination of

the Franchise Agreements. Despite Defendants’ knowledge of Honest Abe’s ownership of the

Marks and the termination of their rights to use the Marks or identify themselves as affiliated with

Honest Abe, Defendants chose to maintain a business name bearing Honest Abe’s Marks, instruct

potential customers to refer to their competitive business as “Honest Abe,” misrepresent their

relationship to Honest Abe and their franchise termination, and copy Honest Abe’s website’s

Privacy Policy for use on the AHSP Website, except of course for inserting a nonexistent street

address and inoperative telephone number for the clear purpose of avoiding detection. All of such

facts, together, show Defendants’ bad faith and clear intent to “palm off” Honest Abe’s goodwill.

In this case, the Defendants’ unauthorized use of the Marks can only cause confusion

among consumers. Alpha Tau Omega Fraternity, Inc. v. Pure Country, Inc., 2004 WL 3391781,

at *4 (S.D. Ind. Oct. 26, 2004) (stating that while typically determining likelihood of confusion

rests upon a seven-factor test, “[c]ontinued use of a trademark by a former licensee, after it decides

to drop the licensing arrangement, constitutes an unauthorized use likely to cause confusion as a

matter of law”). Defendants have no right to use Honest Abe’s Marks, yet refuse to discontinue

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use or cease representing themselves as “Honest Abe.” Therefore, Honest Abe is entitled to a

preliminary injunction preventing the Defendants from continuing to infringe on Honest Abe’s

registered Marks.

Honest Abe is also likely to succeed on the merits with respect to its claim for unfair

competition under 43(a)(1)(A) of the Lanham Act. In the Seventh Circuit, the same likelihood of

confusion test is used to determine whether there has been unfair competition under the Lanham

Act. Meridian Mut. Ins. Co., 128 F.3d at 1114-15 (“In the trademark/service mark/unfair

competition field, the movant shows a likelihood of success by establishing that 1) he has a

protectable mark, and 2) that a ‘likelihood of confusion’ exists between the marks or products of

the parties”). As previously discussed, even without going through the multi-factor analysis on the

likelihood of confusion, Courts have found violations of Lanham Act when a licensed franchisee

continues to use a trademark after its rights have been terminated. Gorenstein Enterprises, Inc., v.

Quality Care-USA, Inc., 874 F.2d 431, 435 (7th Cir. 1989); Re/Max North Cent. v. Cook, 272 F.3d

424, 432 (7th Cir. 2001); Manpower Inc. v. Mason, 405 F.Supp.2d 959, 974 (E.D. Wis. 2005). In

this case, Defendants rights to use the Marks were terminated, yet they willfully continue to use

Honest Abe’s Marks, refer to themselves as Honest Abe to potential customers, and mislead

customers as to their franchise relationship with Honest Abe. Because this situation creates a high

likelihood of confusion, Honest Abe is likely to succeed on the merits of its claims for trademark

infringement and unfair competition under the Lanham Act and Indiana common law.

2. Honest Abe Will Be Irreparably Harmed Without a Preliminary Injunction

1. The Post-Termination and Non-Compete Claim

Absent a preliminary injunction enforcing the post-termination obligations under the

Franchise Agreements and the restrictive covenants under the Noncompete Agreements, Honest

Abe will be irreparably harmed in three separate ways: 1) Honest Abe will suffer irreparable harm

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to its reputation and goodwill; 2) the Honest Abe franchise system as a whole will be harmed; and

3) Honest Abe’s relationship with its franchisees will be harmed.

a. Irreparable harm to Honest Abe’s goodwill

There can be no dispute that Honest Abe’s reputation and goodwill are being unfairly and

irreparably harmed by Defendants’ unauthorized use of Honest Abe’s Marks in connection with

their operation of a competing business, especially when such use is occurring in the same markets

as Defendants’ former Honest Abe franchised businesses, and Honest Abe’s current franchisees.

Defendants continue to maintain a business entity containing the Honest Abe’ Marks registered in

the State of Georgia and have verbally represented themselves to potential customers as “Honest

Abe,” irreparably harming the goodwill associated with Honest Abe’s Marks and the goodwill

associated with Honest Abe’s other franchisees authorized operations in the Georgia market.

(Complaint ¶ 118). The Marks have developed significant goodwill in the Georgia market based

on their presence there. (Complaint, ¶¶ 21, 32). This goodwill is associated with the Marks and

belongs exclusively to Honest Abe, as Defendants acknowledged in the Franchise Agreements.

(Complaint ¶ 120). (See South Bend Consumers Club, Inc. v. United Consumers Club, Inc., 572 F.

Supp. 209 (N.D. Ind. 1983) (holding that the goodwill associated with a franchise is a protectible

interest of the franchisor). Accordingly, the irreparable harm to Honest Abe’s goodwill will

continue until such time as Defendants are ordered to cease their infringing conduct of representing

themselves as Honest Abe and maintaining a competitive business named “Honest Abe of Macon

Georgia,” all in violation of the contractual obligations to Honest Abe.

b. Irreparable harm to the Honest Abe system as a whole

The entire franchise system suffers when an ex-franchisee refuses to play by the rules.

Honest Abe has invested substantial money, time and effort in the development of its franchise

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Business System. (Complaint, ¶¶ 30, 31). Honest Abe seeks to protect that investment by

preventing ex-franchisees from diverting customers, contacts, goodwill, and Honest Abe’s

proprietary methods and System developed under the Honest Abe name to a competitive business.

The Defendants’ conduct jeopardizes Honest Abe’s ability to continue doing business in and

around Macon and Columbus, Georgia. (Complaint, ¶¶ 117, 122). Honest Abe’s established

franchise system is a substantial business interest that is protectable by enforcement of the non-

compete provisions of the Franchise Agreements and Noncompete Agreements. See South Bend

Consumers Club, Inc. v. United Consumers Club, Inc., 572 F. Supp. 209 (N.D. Ind. 1983) (stating

that a protectible interest exists in a franchise itself and in customer contacts and goodwill with the

franchise); McCart v. H&R Block, Inc., 470 N.E.2d 756 (Ind. Ct. App. 1984); Tutor Time Learning

Centers, LLC v. Larzak, Inc., 2007 WL 2025214, at *11 (N.D. Ind. 2007) (holding that a franchisor

had a legitimate, protectible interest in its system, the goodwill of its business, and the confidential

materials and information associated with its franchise system); Economou v. Physicians Weight

Loss Center of America, 756 F. Supp 1024, 1032 (N.D. Ohio 1991) (stating that [a franchisor] not

only has a valid interest in protecting the goodwill it has developed over the years by having its

franchisee do business at the [franchisee’s] location, but it also has an interest in being able to

place a new franchisee at or near the same location where this goodwill has been created.); In re

Talmage, 758 F.2d 162 (6th Cir. 1985) (Enforcing noncompete to protect the goodwill of licensor’s

business and confidentiality of information valuable to licensor’s business).

Defendants’ wrongful conduct forces Honest Abe franchisees, including its franchisee in

Macon, to compete against businesses with “inside knowledge” of their business, training,

customer and supplier contacts, pricing information, and other Confidential Information, giving

Defendants an unfair competitive advantage. (Complaint ¶ 117). Recognizing the legitimate need

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for a franchisor to protect its name, confidential information, and franchise system, courts have

upheld post-term restrictive covenants in franchise agreements. See South Bend Consumers Club,

Inc. v. United Consumers Club, Inc., 572 F. Supp. 209 (N.D. Ind. 1983); McCart v. H&R Block,

Inc., 470 N.E.2d 756 (Ind. Ct. App. 1984). Accordingly, this Court should enforce Defendants’

post-term restrictive covenants to prevent further irreparable harm to Honest Abe.

c. Irreparable harm to Honest Abe’s other franchisee relationships

If the Court does not enforce the Franchise Agreements and Noncompete Agreements and

enjoin Defendants from its conduct in violation thereof, other Honest Abe franchisees may believe

they could learn the Honest Abe Business System, build a business using the Marks, terminate

their franchise agreements, and immediately convert their franchises into independent, competing

businesses. Economu v. Physicians Weight Loss Centers of America, 756 F. Supp. 1024, 1039

(N.D. Ohio) (Referring to the potential harm to a franchisor’s goodwill when former franchisees

immediately begin operating competing businesses: “the franchisee has gained knowledge and

experience from the franchisor, and to allow the franchisee to use this knowledge and experience

to serve former or potential customers of the franchisor would work a hardship and prejudice to

the latter”).

If Defendants’ conduct is allowed to proceed, Honest Abe’s other franchisees, in particular

its new franchisee in Macon, and any future franchisee to be placed in Columbus, will be subject

to competition from an out-of-system competitor armed with Honest Abe’s Marks, customer

contacts, training, Business System and other confidential and proprietary information. See Barnes

Group, Inc. v. Rinehart, 2001 WL 301433 at 22 (S.D. Ind. February 26, 2001) (Holding that

irreparable harm to former employer resulted from the loss of customer goodwill and competitive

advantage obtained by former salesperson’s new employer through salesperson’s knowledge of

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confidential information, customer contacts, pricing strategy, and other trade secrets). Honest Abe

and its other franchisees are inequitably harmed by not enforcing Defendants’ post-termination

obligations and restrictive covenants. Moreover, the actual loss to the Honest Abe Franchise

System cannot be quantified by any means, warranting injunctive relief. Gateway Eastern Ry. Co.

v. Terminal R.R. Ass’n. of St. Louse, 35 F.3d 1134 (7th Cir. 1994) (“[I]njury to goodwill can

constitute irreparable harm that is not compensable by an award of money damages”).

2. The Lanham Act and Common Law Unfair Competition Claims

Irreparable harm is just as clear on Honest Abe’s Lanham Act and common law unfair

competition claims. A finding of irreparable injury ordinarily follows when a likelihood of

confusion as to the party’s identity is involved. Processed Plastic Co. v. Warner Communications,

Inc., 675 F.2d 852, 858 (7th Cir. 1982) (“This and many other Courts have often recognized that

the damages occasioned by trademark infringement are by their very nature irreparable and not

susceptible of adequate measurement for remedy at law”); Hammons Mobile Homes, 501 N.E.2d

at 463 (“In instances of unfair competition, a complete injunction is normally an appropriate

remedy”).

It is well settled that a likelihood of confusion constitutes irreparable injury as a matter of

law. Id. Irreparable harm exists when consumers are likely to purchase goods or services from the

infringer instead of those sold by the trademark holder. So long as the infringer continues to

operate, there is potential for future harm to an entire franchise or licensing system and no adequate

remedy at law. Id. (stating that the likelihood of confusion caused by the infringing manufacture

of “‘Rebel cars’ could vitiate Warner Bros.’ entire licensing program and damage the good will

associated with Warner Bros.’ television series. It is apparent that such damage cannot be measured

in monetary terms”).

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In this case, the evidence is clear that Defendants’ conduct is likely to cause consumer

confusion. Defendants are operating the exact same type of business, in the same markets they

served or were granted prior to termination of the Franchise Agreements, continue to use Honest

Abe’s Marks in their corporate name, and have actually referred to themselves as “Honest Abe.”

Consequently, because there exists a great likelihood of confusion, Honest Abe meets the

irreparable injury requirement.

3. The Balance of Equities Favors Granting an Injunction Because An

Injunction Will Not Cause Harm to the Defendants

An injunction requiring the Defendants to comply with the obligations they bargained for

when they signed the Franchise Agreements will not cause them undue harm. Defendants knew

that they would have to stop using Honest Abe’s Marks and Business System, and not operate a

competitive business upon termination of the Franchise Agreements. They expressly agreed to the

post-termination non-compete restrictions, and that those restrictions were reasonable, in order to

protect Honest Abe from unfair competition, and Mr. and Mrs. Harris personally guaranteed both

Franchisees’ obligations under the Franchise Agreements and executed the Noncompete

Agreements in their personal capacities. By entering into the Franchise Agreements, including the

Personal Guarantees and Noncompete Agreements, the Defendants agreed to accept the benefits

and comply with the requirements therein. Further, Mrs. Harris possesses an active real estate

license in the State of Georgia, providing Defendants a lucrative alternative source of income if,

as they have freely agreed, they were required to cease operating a competitive roofing business.

Any hardship suffered by the Defendants is a direct result of their deliberate decision to

not comply with the terms and conditions of the Franchise Agreements and Noncompete

Agreements. Certainly, to the extent an injunction would result in any harm to Defendants, any

such harm is clearly outweighed by the harm to Honest Abe, its franchise system, and its

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franchisees should the injunction be denied. Accordingly, the balance of equities favors granting

the restraining order and preliminary injunction.

4. An Injunction is in the Public Interest

The public interest is served by enforcing the post-termination and non-compete provisions

of the Franchise Agreement and Noncompete Agreements and preventing trademark infringement

and unfair competition. There is no policy in favor of allowing Defendants to violate Indiana or

Federal law, or allowing Defendants breach their agreements with Honest Abe. Further, past courts

have found the terms of Defendants’ restrictive covenants reasonable, and thus their enforcement

is consistent with public policy. Granting injunctive relief is necessary to prevent Honest Abe from

being irreparably harmed by Defendants and was only made necessary because of Defendants’

own actions.

III. CONCLUSION

For the reasons set forth above, Honest Abe requests that this Court grant its Motion for

Temporary Restraining Order and Preliminary Injunction enforcing the post-termination

provisions and covenants not to compete of the Franchise Agreements and Noncompete

Agreements and requiring Defendants to cease their infringing activities, including without

limitation immediately canceling the registration of Honest Abe of Macon Georgia, LLC.

Respectfully submitted,

WILKINSON GOELLER MODESITT

WILKINSON & DRUMMY LLP
333 Ohio Street
Terre Haute, IN 47807
Telephone: (812) 232-4311
Facsimile: (812) 235-5107
E-mail: wwdrummy@wilkinsonlaw.com

By: s / William W. Drummy

William W. Drummy, #4607-84

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