Bojangles' International, LLC v. Hardees' Restaurants, LLC et al

Filing 17

ORDER denying 5 Motion for TRO; deferring ruling on 5 Motion for Preliminary Injunction with hearing to be scheduled within 30 days; granting in part and denying in part 13 Motion for Discovery with limited expedited discovery permitted in preparation for preliminary injunction hearing.. Signed by District Judge Max O. Cogburn, Jr on 07/19/2017. (ttl)

UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF NORTH CAROLINA
CHARLOTTE DIVISION
DOCKET NO. 3:17-cv-00398-MOC-DSC
BOJANGLES' INTERNATIONAL, LLC,

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Plaintiff,
v.
CKE RESTAURANTS HOLDINGS, INC.
HARDEES' RESTAURANTS, LLCS,
Defendants.

ORDER

THIS MATTER is before the court upon initial review of plaintiff’s Motion for
Temporary Restraining Order (TRO) and Preliminary Injunction (#5) and defendants’ responsive
Motion (#13) for Discovery and Entry of a Scheduling Order. Having considered the Motions and
reviewed the pleadings, the court enters the following Order.
I.

Background

Both plaintiff and defendants operate quick-service restaurants around the country. The
court is familiar with the products of both companies, especially given the number of locations of
both chains within this District and long hours spent on the road.
On the court’s menu today is a case about fried chicken, biscuits, and Cajun spices. Plaintiff
asks the court to institute the extraordinary remedy of injunctive relief related to the purported
infringement of its trademarks related to its fried chicken products. The trademarks involved in
this case include CAJUN FILET BISCUIT and the wordmark or phrase GOTTA WANNA
NEEDA GETTA HAVA (hereinafter “Gotta”).

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Plaintiff Bojangles’1 alleges that defendants (collectively “Hardee’s”) infringed on its
protected trademarks by labeling a fried chicken filet2 with Cajun spices with a name close to
“Cajun Chicken Fillet Biscuit.” (#6) at 8. In connection with the advertising of this product and its
placement on Hardee’s menus, the word or words “Gotta Wanna Needa Hava” were allegedly
used.3 (#1) at 7.
Plaintiff Bojangles’ now seeks a temporary restraining order (TRO), preliminary
injunction, and expedited hearing in order to enjoin Hardee’s from using the purported infringing
marks. See (#5). Defendants object to this injunctive relief and have filed a Motion for Discovery
and a Scheduling Order, see (#13), and plaintiff has objected. (#15). For the reasons that follows,
the emergency relief of a TRO will be denied, limited discovery will be allowed, and a hearing on
the plaintiff’s request for a preliminary injunction will be set not less than 30 days from entry of
this Order.
II.

Applicable Standards

Applications for issuance of a TRO are governed by Fed. R. Civ. P. 65(b)(1), which
provides as follows:

1

The court recognizes that these national companies may also have other trademarks not at issue in this case,
particularly in the names of their businesses and restaurants (e.g. Bojangles’® and Hardee’s®). Acknowledging the
existence of other marks, the court will dispense with any “™” or “®” marks in this opinion or further capitalization
of such marks.
The court acknowledges that “filet” and “fillet” are alternate spellings, with the Bojangles’ mark a “Cajun Filet
Biscuit” and the Hardee’s product a “Cajun Chicken Fillet Biscuit.” While the court takes no sides as to the proper
spelling of the meat cutlet, others may disagree. See Jan Freeman, Fillet or Filet? The Strange, Edible Landscape of
Food Words. BOSTON GLOBE. 22 May 2011.
2

The court is aware of Plaintiff’s contention the “Gotta” trademark may be substantially similar with or without
spaces, as in “Gottawannaneedagettahava” and “Gotta Wanna Needa Getta Hava.” Compare Verified Complaint
(#1) at 6 with (#1) at 14. While the breathlessness of using this phrase without spaces may emphasize the sense of
urgency in this call to action, the court acknowledges that both companies would want more customers to want,
need, get, or have their respective fried chicken products.
3

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The court may issue a temporary restraining order without written or oral notice to
the adverse party or its attorney only if:
(A)

(B)

specific facts in an affidavit or a verified complaint clearly show that
immediate and irreparable injury, loss, or damage will result to the
movant before the adverse party can be heard in opposition; and
the movant's attorney certifies in writing any efforts made to give
notice and the reasons why it should not be required.

Id. The Court notes that “the issuance of an ex parte temporary restraining order [here, parte,
inasmuch as defendant has responded] is an emergency procedure and is appropriate only when
the applicant is in need of immediate relief.” Wright and Miller, 11A FED. PRAC. & PROC. CIV. §
2951 (3d ed.).
In evaluating a request for a TRO, the court considers the same factors applied for a
preliminary injunction. Pettis v. Law Office of Hutchens, Senter, Kellam & Pettit, No. 3:13-CV00147-FDW, 2014 WL 526105, at *1 (W.D.N.C. Feb. 7, 2014) (citing Hoechst Diafoil Co. v. Nan
Ya Plastics Corp., 174 F. 3d 411 (4th Cir. 1999)). In assessing such factors, plaintiff must
demonstrate that: (1) it is likely to succeed on the merits; (2) it will likely suffer irreparable harm
absent an injunction; (3) the balance of hardships weighs in its favor; and (4) the injunction is in
the public interest. League of Women Voters of N. Carolina v. N. Carolina, 769 F.3d 224, 236 (4th
Cir. 2014), cert. denied, 135 S. Ct. 1735, 191 L. Ed. 2d 702 (2015) (citing Winter v. Natural Res.
Def. Council, Inc., 555 U.S. 7, 20 (2008)).
II.

Discussion

The court has closely reviewed the Verified Complaint (#1) and the parties’ Motions (#5
and #13). The court will review the appropriate factors seriatim.
i. Likelihood of Success on the Merits

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Much like the flavors of a good chicken biscuit, the issues in this case operate on multiple
levels. The court must make a determination as to whether plaintiff is likely to succeed on the
underlying Lanham Act claim of trademark infringement. Before doing so, the court must ascertain
the nature of the marks at issue.
Plaintiff alleges two classes of trademarks that were allegedly infringed. The first set of
trademarks involves a family of items labeled “Cajun,” including spiced chicken, chicken fillet
biscuit, beans, and other “Cajun spiced” food products. (#1) at 4-6. The second trademark category
involves the “Gotta” mark, an arbitrary made-up word or phrase. Plaintiff’s marks are registered,
which create a rebuttable presumption that the marks are valid and enforceable.
As the name would suggest, rebuttable presumptions can be rebutted. The burden is on the
defendant to provide sufficient evidence to rebut a presumption of exclusive use. Plaintiff claims
that certain trademarks, including those related to its Cajun spices, spiced chicken, and pinto beans
are incontestable. (#1) at 4-5; (#6) at 2. Importantly, the claimed “Cajun Filet Biscuit” mark is not
incontestable. (#6) at 2. The Cajun Filet Biscuit mark is the operative mark involved in this case.
In the end, this is not a case about beans—it’s about biscuits.
While an incontestable mark may not be challenged as merely descriptive, Park 'N Fly, Inc.
v. Dollar Park & Fly, Inc., 469 U.S. 189, 196 (1985), a mark that is not “incontestable” may indeed
be contested. Such is the case here with the Cajun spiced chicken biscuit. At this preliminary stage
the court cannot agree with the contention that Bojangles’ trademark encompasses all possible
combinations of Cajun spices, biscuits, and fried chicken. The court is aware that other quickservice restaurants offer spiced chicken products, including Zaxby’s, Popeye’s, and Church’s,

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among others. See also (#14-1) at 1 & 4. As an aside, the court is also aware that its colleagues on
the federal bench in Louisiana may have much to say about Cajun fried chicken products.
The “Gotta” mark is more abstract, as a made-up word or phrase unrelated to the product
it is used to promote. This distinctive mark receives greater protection against infringement. See
Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996). The court is familiar with
other distinctive marks in the fried chicken market, such as “Finger Lickin’ Good,” and appreciates
how important it can be for fried chicken purveyors to point customers’ to their regional delicacies
through use of distinctive and catchy made up words. In apparent recognition of it used, the filings
indicate that Hardee’s has agreed to remove all branding related to “Cajun” by September 20, 2017
and has already removed the allegedly infringing “Gotta” phrase from all of its promotional
materials. (#14) at 1. Mentioning without deciding, the fact that the “Gotta” mark has already been
removed raises a potential justiciability issue as to that mark that the parties are invited to address
in briefing the preliminary injunction issue.
As for the “Cajun” family of marks, the court appreciates the need for further evidence as
to the potential of consumer confusion between one Cajun chicken fillet biscuit and another. Even
with Bojangles’ incontestable marks as to its Cajun spices, pinto beans, and Cajun spiced chicken,
the operative mark at issue here is that of the Cajun Filet Biscuit. At this point – which is without
the benefit of discovery -- the court is not prepared to conclude that Bojangles’ is likely to succeed
on the merits as to that operative mark.
The Lanham Act places the burden on the plaintiff to prove (1) that it owns a valid mark;
(2) that the defendant used the mark “in commerce” and without plaintiff's authorization; (3) that
the defendant used the mark (or an imitation of it) “in connection with the sale, offering for sale,
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distribution, or advertising” of goods or services; and (4) that the defendant's use of the mark is
likely to confuse consumers. 15 U.S.C. § 1114(a); Rosetta Stone Ltd. v. Google, Inc., 676 F.3d
144, 152 (4th Cir. 2012). In analyzing the likelihood of consumer confusion, courts examine at
least nine factors, including:
(1) the strength or distinctiveness of the plaintiff's mark as actually used in the
marketplace; (2) the similarity of the two marks to consumers; (3) the similarity of
the goods or services that the marks identify; (4) the similarity of the facilities used
by the markholders; (5) the similarity of advertising used by the markholders; (6)
the defendant's intent; (7) actual confusion; (8) the quality of the defendant's
product; and (9) the sophistication of the consuming public.
George & Co., LLC v. Imagination Entm't Ltd., 575 F.3d 383, 393 (4th Cir.2009).
Mindful that the court is operating without the benefit of discovery, the limited record
before the court suggests that the plaintiff is likely to succeed on the first prong inasmuch as it has
registered marks. While the plaintiff has a strong case regarding the “Gotta” mark, its arguments
related to Cajun spiced biscuits appear more problematic. The “Gotta” mark is distinctive, and a
jury could reasonably find that defendants’ use of a phrase similar or nearly identical to “Gotta”
was an imitation of the protected mark; indeed, a reasonable jury could find that such use was
outright lifting unless some evidence exists showing Hardee’s prior use. Even without the benefit
of discovery, the court could reasonably find that the defendants’ use of a phrase similar to “Gotta”
would confuse consumers. The court will not speculate as to whether Hardees’ removed this
promotion knowing its Lanham Act position was unfavorable, but the court appreciates and
encourages amicable resolution.
Assuming the strength of plaintiff’s Lanham Act arguments regarding the “Gotta” mark,
Hardee’s, as mentioned, already removed this offending promotion. (#14) at 1. To that end, the
court’s injunctive relief (if granted) would be simply to enjoin Hardees’ from doing what it has
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already done and has ceased to do. As discussed below, a TRO shall issue when the movant is in
need of immediate relief. Any relief the court could issue would not be “immediate relief” as to
the “Gotta” mark, especially with the understanding that the offending promotion will not be
reintroduced during the pendency of this lawsuit. (#14) at 7.
The plaintiff’s Lanham Act arguments regarding its chicken biscuit with Cajun spices are
more in doubt. While Bojangles’ unique blend of Cajun spices, its buttery biscuit, and fried chicken
are well known to the court, its mark is not arbitrary—it describes what the product is: a fried
chicken filet (or fillet) with Cajun spices within a biscuit. Even if another quick-service restaurant
were to use a phrase similar to “Cajun Chicken Filet Biscuit,” it simply is what it is—a description
of the product. The court is, however, mindful of other marks denoting a regional flavor or
supposed origin, such as “Kentucky Fried Chicken.” Assuming that plaintiff could prove the
second and third prongs of the Lanham Act inquiry, its position on the fourth prong—the
“likelihood of confusion” test—is unlikely to succeed. The court could, however, be convinced
otherwise with the benefit of discovery and further evidence. In reviewing the nine factors
regarding “likelihood of confusion,” some factors are in plaintiff’s favor, such as the similarity of
the two quick-service restaurants, but a plurality of factors, namely the strength or distinctiveness
of plaintiff’s mark, militate toward an unfavorable decision for plaintiff as this early stage.
Plaintiff may argue that the Cajun family of marks related to its spices and beans are also
in contention in this action. The Lanham Act case against the Cajun family of marks outside the
biscuit sandwich is also unlikely to succeed. Plaintiff does have valid marks, even uncontestable
marks, related to “Bojangles’ Cajun Spiced Chicken,” “Cajun Pintos,” and “It’s Cajun Spiced”
(#6) at 2, and contends that Hardee’s use has also put these marks at issue. Assuming that the first
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Lanham Act prong is satisfied, the plaintiff has not yet shown that these marks were infringed by
defendants. The offending product was a chicken biscuit sandwich with Cajun spices. Bojangles’
does not have a monopoly on all Cajun spices. The closest marks are “Bojangles’ Cajun Spiced
Chicken” (#1-B) and “It’s Cajun Spiced” (#1-D). In examining these marks, the court concludes
that the second and third prongs on the Lanham Act test are not satisfied. The mark in (#1-B) is
for “Bojangles’ Cajun Spiced Chicken,” not all Cajun spiced chicken that may exist, which, if it
were not so, would certainly be news to the inhabitants of the Louisiana intrastate region of
Acadiana.
Put differently, Bojangles’ alleges that Hardees’ marketed and sold a chicken biscuit with
Cajun spices. Bojangles’ does not allege that Hardees’ sold a Bojangles’ Cajun Spiced Chicken
biscuit or used the phrase “It’s Cajun Spiced” in marketing the product. Moreover, the offending
product does not contain beans, so the registered mark on “Cajun Pintos” is irrelevant.
Accordingly, there was no infringing use related to marks other than “Gotta” and “Cajun Filet
Biscuit.”
Plaintiff also alleges claims for unfair trade practices and vicarious and contributory
infringement. (#6) at 13-14. Such claims are predicated on a finding of trademark infringement or
a finding that the products were deceptively similar. It simply cannot be that a single company has
a monopoly on putting a piece of Cajun spiced chicken between two sides of a biscuit. Further
inquiry is needed as to whether the products were deceptively similar and the ultimate issue of
whether one or more trademarks were infringed. Before the court gets a bite at this further
evidence, it cannot conclude that the plaintiff is likely to prevail in this chicken biscuit suit.

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ii. Likelihood of Irreparable Harm
The second factor asks whether the movant is likely to suffer irreparable harm if injunctive
relief is not granted. The court cannot so find, especially as the defendants have agreed to stop
marketing the offending product within two months and has already stopped using the allegedly
infringing “Gotta” statement. (#14) at 1.
Even if “irreparable injury regularly folllows from trademark infringement,” adequate
evidence of irreparable injury would aid the court. See Lone Star Steakhouse & Saloon, Inc. v.
Alpha of Virginia, Inc., 43 F.3d 922, 939 (4th Cir. 1995). Other than the presumption that
trademark infringement leads inevitably to irreparable injury, the plaintiff has not provided further
evidence of injury. (#6) at 15.On the other hand, defendants have shown that any harm is likely
not irreparable. It will no longer use one of the offending marks and additional use of the allegedly
infringing mark will cease in a few weeks, without court involvement. Additionally, the actual
infringement is questionable, as discussed above, as the showing of trademark infringement—the
necessary predicate for the plaintiff’s presumption—may be lacking.
Accordingly, the court finds that the plaintiff cannot show a likelihood of irreparable harm
if a TRO is not granted.
iii. Balance of Hardships
According to its filings, plaintiff does not want the defendants to stop selling any and all
spiced chicken biscuits but instead asks the court to enjoin the defendants from using the allegedly
infringing marks to identify or promote the biscuit. (#6) at 16. As noted above, the defendants have
agreed to remove the product from the market altogether and have already ceased use of the
offensive “Gotta” phrase. (#14) at 1.

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The court appreciates the importance of the Cajun chicken sandwich to the business model
of Bojangles’. A cursory glance at the menus of these quick-service restaurants indicates that
biscuits with Cajun spiced chicken are quite important at Bojangles’ restaurants. Plaintiff further
asserts that it “has been using the Cajun marks every hour of every day for at least the past 30
years and specifically selling the Cajun Filet Biscuit, one of its most popular menu items,
continuously during those years.” (#15) at 7.
Even so, the offending product is likely to leave the market within weeks. The advertising
of the offending biscuit will end within days. (#14) at 5. Further, defendant is willing to refrain
from reintroducing the product during the pendency of this lawsuit, effectively instituting the relief
sought through the TRO without the involvement of the court. (#14) at 7. Further, the removal of
the offending “Gotta” phrase and biscuit product suggests that injunctive relief is unnecessary but
does not preclude a potential finding of monetary damages. The court reserves future decision in
the unlikely event defendants revoke any commitments related to the offending products. If that
were to occur, plaintiff may make an appropriate motion for the court’s review.
In the end, injunctive relief would have the practical effect of stopping sales of this product
before September 2017. It is currently late July 2017. A denial of immediate injunctive relief would
mean approximately two additional months of sale of a competitor’s chicken biscuit product. The
immediate nature of plaintiff’s harm is unclear to the court, other than a presumed harm from
presumed infringement. As noted earlier, the “Gotta” phrase has already been removed.
Understanding that the supply chain for food products has longer logistical lines than promotional
materials, the practical nature of the remaining risk is low here as the offending product will be
leaving the market within weeks.

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iv. Public Interest
The public interest is served in denying the TRO. While the public has an interest in fair
competition and the avoidance of consumer confusion, there are no indicia that confusion actually
exists in the marketplace. It would be folly to think that anyone would go to Hardee’s expecting
to purchase a biscuit product identical to that served at Bojangles’. The public also has an interest
in efficient and effective use of judicial resources. Each of these parties are sophisticated, national
businesses, and this dispute appears to have already been handled to a certain extent without the
involvement of the court. Imposing the exceptional relief of a TRO in the absence of specific
evidence of harm would not be in the public’s best interest.
v. Conclusion
Upon review of the appropriate Rule 65 factors, the court finds that immediate injunctive
relief is unwarranted. The plaintiff has not demonstrated the need for immediate relief. At this
point, which is without the benefit of discovery, the plaintiff is also unlikely to succeed on the
merits of its claim, particularly with regard to the “Cajun Filet Biscuit” mark.
III.

Motion for Discovery and Scheduling Order

As noted above, further evidence is necessary to demonstrate whether an infringement has
occurred and its resultant harm. To that end, additional discovery would be beneficial for the
efficient resolution of this dispute. Defendants have proposed a timeline for expedited discovery.
(#14) at 3-4. Plaintiff objects. See (#15)
Given the timeline of the product’s removal from the marketplace, a speedy discovery
process would be helpful for the prompt resolution of this dispute. The public and the parties
themselves would be served if these two quick-service restaurants were able to expeditiously move

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through the discovery process and especially if they could resolve this matter without trial. The
court acknowledges that certain information related to this dispute may require a protective order.
(#15) at 7 n. 4.
Given that plaintiff alleges that the limited time promotion of this product until September
2017 will cause it irreparable harm, an expeditious discovery process would be useful. Requests
for expedited discovery are evaluated in a number of ways, including the assessment of factors
such as
“the procedural posture of the case, whether the discovery requested is narrowly tailored,
whether the party seeking the information would be irreparably harmed by waiting until
after the parties conduct their Rule 26(f) conference, and whether the information sought
would be unavailable or subject to destruction in the absence of expedited production.”
Me2 Prods., Inc. v. Does 1-16, No. 4:16-CV-279-FL, 2016 WL 7017268, at *1 (E.D.N.C. Dec. 1,
2016) (citing Chryso, Inc. v. Innovative Concrete Sols. of the Carolinas, LLC, No. 5:15-CV-115BR, 2015 WL 12600175, at *3 (E.D.N.C. 30 June 2015)).
Plaintiff argues that injunctive relief should not be delayed by discovery. (#15) at 6. It
asserts that expedited discovery would “merely provide[] Defendants with the full opportunity to
complete its [limited time offer] sales period while causing continued irreparable harm to Plaintiff.”
Further, plaintiff argues that “delay due to expedited discovery will permit Defendants to realize the
full value of [its] infringing acts and deny Plaintiff an opportunity to stop resulting the irreparable
harm.” These arguments are not persuasive for the same reasons discussed above in regards to the
TRO.

Rule 26 allows for expedited discovery and indicates that expedited discovery may be
appropriate when a party requests preliminary injunctive relief. See F.R.C.P. 26(d) and comments
thereto. Understanding the nature of trademark infringement suits, tools such as consumer surveys

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take time. The court appreciates that plaintiff does not want the defendants to stop selling any and
all spiced chicken biscuits, but instead asks the court to enjoin the defendants from using the
allegedly infringing marks to identify or promote the spicy biscuit. (#6) at 16. The court is
unconvinced that the potential harm resulting from continued sale of a “Cajun Chicken Biscuit”
during the time it will take for discovery and resolution of the request for preliminary injunction
outweighs the need for discovery.
The court will permit limited expedited discovery as to “Cajun Chicken Biscuit” mark for
the purposes of a hearing on a preliminary injunction as to the labeling of this product. The
permitted discovery shall be limited to the chicken biscuit mark and to potential utility of injunctive
relief. As the parties are now engaged, plaintiff has the opportunity to constructively propose
identification for this allegedly infringing menu item. Defendants have already switched the name
of this product and dropped the offending “Gotta” phrase from its promotion. A hearing within
thirty days will allow the parties some time for expedited limited discovery and an opportunity to
review further proposed name changes for the offending item.
IV.

Conclusion

Ultimately, a TRO is an extraordinary remedy. The court is no chicken when it comes to
imposing such relief when it is necessary. Upon review of the applicable factors, the court cannot
find that a TRO is appropriate at this point. While injunctive relief may become appropriate as the
case progress, there is neither sufficient evidence of the breach of the operative mark related to
Cajun spiced chicken biscuits nor the attendant harm suffered from the purported infringement.
Even so, the court will allow the opportunity for limited expedited discovery for thirty (30)
days in preparation for a hearing on a preliminary injunction. This discovery shall be limited to

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the chicken biscuit mark, the utility of a preliminary injunction, and proposed changes to the
“Cajun Chicken Biscuit” name.
ORDER
IT IS, THEREFORE, ORDERED that plaintiff’s Motion for a Temporary Restraining
Order (#5) is DENIED and defendants’ Motion for Discovery and Scheduling Order (#13) is
GRANTED, in part, and DENIED, in part, as limited expedited discovery shall be permitted in
preparation for a hearing on the Motion for Preliminary Injunction (#5). The discovery shall be
limited to the “Cajun Filet Biscuit” mark, proposed menu name changes for the Cajun chicken
biscuit, and the utility of a preliminary injunction.
FURTHER, IT IS ORDERED that a hearing shall be CALENDARED in no less than
thirty (30) days on plaintiff’s Motion for Preliminary Injunction (#5).

Signed: July 19, 2017

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