Dickey's Barbecue Pit, Inc. et al v. Celebrated Affairs Catering, Inc. et al

Filing 21

MEMORANDUM OPINION AND ORDER - It is therefore ORDERED that Plaintiffs' First Amended Application for Temporary and Preliminary Injunctive Relief (Dkt. 11 ) is hereby GRANTED. It is further ORDERED that Defendants Celebrated Affairs Catering, Inc., David Wirth, and Pamela Wirth, their agents, servants, employees, officers, associates, attorneys, and those in active concert or participation with Defendants, are hereby RESTRAINED from: (1) manufacturing, importing, advertising, marketing, promoting, supplying, distributing, offering for sale, or selling any products which bear the Dickeys trademarks or any marks/designs identical thereto, substantially indistinguishable from, substantially similar thereto, or confusingly similar the reto;(2) engaging in any other activity that will dilute the distinctiveness of the Dickey's trademarks; (3) committing any other act which falsely represents or has the effect of falsely representing that the goods and services of Defendants a re licensed by, authorized by, offered by, produced by, sponsored by, endorsed by, or in any other way associated with Dickey's Barbecue Pit, Inc. or Dickey's Barbecue Restaurants, Inc.; and (4) from using, disposing of, alienating or d oing or failing to do anything that would affect (a) the delivery to Dickeys Barbecue Restaurants, Inc. for destruction or other disposition all remaining inventory of the Dickey's Barbecue Restaurants, Inc. stores Defendants operated, or oth er merchandise bearing the Dickey's trademarks, or any marks confusingly or substantially similar thereto, including all advertisements, promotional and marketing materials therefore, as well as means of making same including signs; and (b) th e preservation of the equipment, furniture, and fixtures at the Dickey's Barbecue Restaurants, Inc. stores operated by Defendants. It is further ORDERED that Defendants Celebrated Affairs Catering, Inc., David Wirth, and Pamela Wirth, their agents, servants, employees, officers, associates, attorneys, and those in active concert or participation with Defendants: (1) Deliver to Plaintiffs for destruction or other disposition all remaining inventory of Defendants' restaurants, or ot her merchandise bearing the Dickey Pit's trademarks, Dickey's Restaurants' system, or any marks confusingly or substantially similar thereto, including all advertisements, promotional and marketing materials therefore, as well as the means of making these items, including signs;(2) To supply Plaintiffs a list of all downstream purchasers of the product from Defendants' restaurants and provide all documents, including correspondence, invoices, and receipts, related to Defend ants purchase of the product for Defendants' restaurants; (3) To file with this Court and serve on Plaintiffs within ten (10) days after entry of the injunction a report in writing, under oath setting forth in detail the manner and form in whic h Defendants have complied with the injunction; and (4) To submit an accounting to Plaintiffs of all of Defendants' gains, profits, and advantages derived from the unauthorized use of Plaintiffs' trademarks, if any. It is further ORDERED t hat this temporary restraining order shall not be effective unless and until Plaintiffs have filed an appropriate bond or cash deposit in lieu thereof in the amount of $500. It is further ORDERED that the hearing on Plaintiff's request for a Preliminary Injunction is set for Tuesday, March 21, 2017 at 12:00 p.m. at the Paul Brown United States Courthouse, 101 E. Pecan Street, Sherman, Texas, 75090. This order will expire on the 20th day of March, 2017, unless extended by order of the Court. Signed by Judge Amos L. Mazzant, III on 3/6/2017. (baf, )

United States District Court
EASTERN DISTRICT OF TEXAS
SHERMAN DIVISION

DICKEY'S BARBECUE PIT, INC.,
DICKEY'S BARBECUE RESTAURANTS,
INC.
v.
CELEBRATED AFFAIRS CATERING,
INC., DAVID WIRTH, PAMELA WIRTH

§
§
§
§
§
§
§
§

Civil Action No. 4:17-CV-00127
Judge Mazzant

MEMORANDUM OPINION AND ORDER
Pending before the Court is Plaintiffs’ First Amended Application for Temporary and
Preliminary Injunctive Relief (Dkt. #11). After considering the complaint, the application, and
the arguments of counsel, the Court finds the motion should be granted.
BACKGROUND
This dispute centers around Defendants’ unauthorized production, manufacture,
distribution, advertisement, promotion, marketing, offering for sale, and sale of Plaintiffs’
trademarked barbeque, sides, rub, and sauce. Plaintiffs are the owners of the following
trademarks:
Reg. Number
1980072
2878761
3205121
3237281
4249206
4249207
4249263
4579035
4631706
5086496
87002549

Trademark
Dickey’s Barbecue Pit A Texas Tradition Since 1941
(Design plus words)
A Texas Tradition Since 1941 Dickey’s Barbecue Pit
(Design plus words)
Dickey’s Barbecue Pit Since 1941 (Design plus words)
Dickey’s
Dickey’s Barbecue Pit Original Barbecue Sauce
Dickey’s Barbecue Pit Original Barbecue Rib Rub
Dickey’s Barbecue Pit
Big Yellow Cup Club
Dickey’s Barbecue Pit (Design plus words)
We Speak Barbecue
Dickey’s Barbecue Pit (Design plus words - pending)

1202218
1183816

Dickey’s Barbecue Pit (Design plus words - international)
Dickey’s (International)

(Dkt. #14, Exhibit D).
On May 22, 2013, and July 23, 2015, Defendants entered into franchise agreements with
Dickey’s Restaurants (collectively, the “Franchise Agreements”). As part of these agreements,
Defendants operated two Dickey’s Barbeque Pit Restaurants at 7850 N. Oracle, Tucson, Arizona
85704 and 5250 E. 22nd Street, Tucson, Arizona 85711.
On February 2, 2017, Defendants terminated the Franchise Agreements. Upon
termination, the “Obligations Upon Termination or Expiration” clause in the Franchise
Agreements prohibit Defendants from (1) reopening the franchise restaurants; (2) opening a
barbeque restaurant within a five-mile radius of the Dickey’s Barbeque franchise restaurants; and
(3) using any of the confidential methods, procedures, and trade secrets associated with the
Dickey’s Restaurants’ System. Termination also required Defendants to immediately and
permanently cease use of all signs, advertising materials, displays, stationary, forms, and any
other articles which display Plaintiff’s marks.
On February 5, 2017, a representative for Plaintiffs visited each of Defendants’ locations
and documented the continued use of Plaintiff’s trademarks.
On February 20, 2017, Plaintiffs filed a complaint (Dkt. #1). That same day, Plaintiffs
filed an Application for Temporary Restraining Order and Temporary Injunctive Relief
(Dkt. #2). The Court denied the application for lack of notice to Defendants (Dkt. #4). On
February 28, 2017, Plaintiffs filed an Amended Complaint and their First Amended Application
for Temporary and Preliminary Injunctive Relief (Dkt. #6; Dkt. #11) and service was made upon
Defendants. The Court held a hearing on March 6, 2017. Defendants David and Pamela Wirth
appeared for the hearing, pro se.
2

As of the date of this order, Defendants continue to operate stores at 7850 N. Oracle,
Tucson, Arizona 85704 and 5250 E. 22nd Street, Tucson, Arizona 85711.
LEGAL STANDARD
Under Rule 65 of the Federal Rules of Civil Procedure, “[e]very order granting an
injunction and every restraining order must: (a) state the reasons why it issued; (b) state its terms
specifically; and describe in reasonable detail . . . the act or acts restrained or required.” Fed. R.
Civ. P. 65(d). A plaintiff seeking a temporary restraining order must show: (1) a substantial
likelihood of success on the merits; (2) a substantial threat that plaintiff will suffer irreparable
harm if the injunction is not granted; (3) the threatened injury outweighs any damage that the
injunction might cause the defendant; and (4) the injunction will not disserve the public interest.
Nichols v. Alcatel USA, Inc., 532 F.3d 364, 372 (5th Cir. 2008).
ANALYSIS
Plaintiffs seek a temporary restraining order to restrain the Defendants from infringing on
Plaintiff’s trademarks. The Court finds that Plaintiffs have established all four elements
necessary for a temporary restraining order on their trademark infringement claim.
Plaintiffs are likely to succeed on their trademark infringement claim. To prevail on a
claim for trademark infringement, the registrant must show: (1) its mark was used in commerce
by the defendant without the registrant’s consent; and (2) the unauthorized use was likely to
cause confusion, or to cause mistake or to deceive. See 15 U.S.C. § 1114(1)(a); Am. Rice, Inc. v.
Producers Rice Mill, Inc., 518 F.3d 321, 329 (5th Cir. 2008). Plaintiffs have provided direct
evidence that Defendants are using marks identical to Plaintiffs’ marks. Plaintiffs terminated the
Franchise Agreements and thus revoked permission to use the marks in its February 2, 2017
termination letter. While the Court reserves judgment on the merits of Plaintiffs’ claims, the

3

Court finds that Plaintiffs have shown a substantial likelihood of success on their trademark
infringement claim.
Plaintiffs are likely to suffer immediate and irreparable harm to their goodwill and
reputation by Defendants’ use of Plaintiffs’ trademarks and systems. Plaintiffs cannot be
adequately compensated for the loss of control over its marks resulting in loss of goodwill,
reputation, or customer confusion.
The threatened injury of loss of goodwill, reputation, and customer confusion to Plaintiffs
greatly outweighs any damage to Defendants.
Finally, the public has an interest in not being deceived or confused and for persons to
comply with federal statutes and regulations regarding trademarks. See S & R Corp. v. Jiffy Lube
Int’l, Inc., 968 F.2d 371, 379 (3d Cir. 1992); TGI Friday’s Inc. v. Great Nw. Rests., Inc.,
652 F. Supp. 2d 763, 773 (N.D. Tex. 2009).
CONCLUSION
It is therefore ORDERED that Plaintiffs’ First Amended Application for Temporary and
Preliminary Injunctive Relief (Dkt. #11) is hereby GRANTED.
It is further ORDERED that Defendants Celebrated Affairs Catering, Inc., David Wirth,
and Pamela Wirth, their agents, servants, employees, officers, associates, attorneys, and those in
active concert or participation with Defendants, are hereby RESTRAINED from:
(1) manufacturing, importing, advertising, marketing, promoting, supplying, distributing,
offering for sale, or selling any products which bear the Dickey’s trademarks or any
marks/designs identical thereto, substantially indistinguishable from, substantially similar
thereto, or confusingly similar thereto;

4

(2) engaging in any other activity that will dilute the distinctiveness of the Dickey’s
trademarks;
(3) committing any other act which falsely represents or has the effect of falsely
representing that the goods and services of Defendants are licensed by, authorized by, offered by,
produced by, sponsored by, endorsed by, or in any other way associated with Dickey’s Barbecue
Pit, Inc. or Dickey’s Barbecue Restaurants, Inc.; and
(4) from using, disposing of, alienating or doing or failing to do anything that would
affect (a) the delivery to Dickey’s Barbecue Restaurants, Inc. for destruction or other disposition
all remaining inventory of the Dickey’s Barbecue Restaurants, Inc. stores Defendants operated,
or other merchandise bearing the Dickey’s trademarks, or any marks confusingly or substantially
similar thereto, including all advertisements, promotional and marketing materials therefore, as
well as means of making same including signs; and (b) the preservation of the equipment,
furniture, and fixtures at the Dickey’s Barbecue Restaurants, Inc. stores operated by Defendants.
It is further ORDERED that Defendants Celebrated Affairs Catering, Inc., David Wirth,
and Pamela Wirth, their agents, servants, employees, officers, associates, attorneys, and those in
active concert or participation with Defendants:
(1) Deliver to Plaintiffs for destruction or other disposition all remaining inventory of
Defendants’ restaurants, or other merchandise bearing the Dickey’s Pit’s trademarks,
Dickey’s Restaurants’ system, or any marks confusingly or substantially similar
thereto, including all advertisements, promotional and marketing materials therefore,
as well as the means of making these items, including signs;
(2) To supply Plaintiffs a list of all downstream purchasers of the product from
Defendants’ restaurants and provide all documents, including correspondence,

5

invoices, and receipts, related to Defendants purchase of the product for Defendants’
restaurants;
(3) To file with this Court and serve on Plaintiffs within ten (10) days after entry of the
injunction a report in writing, under oath setting forth in detail the manner and form
in which Defendants have complied with the injunction; and
(4) To submit an accounting to Plaintiffs of all of Defendants’ gains, profits, and
advantages derived from the unauthorized use of Plaintiffs’ trademarks, if any.
It is further ORDERED that this temporary restraining order shall not be effective unless
and until Plaintiffs have filed an appropriate bond or cash deposit in lieu thereof in the amount of
$500.
It is further ORDERED that the hearing on Plaintiff’s request for a Preliminary
Injunction is set for Tuesday, March 21, 2017 at 12:00 p.m. at the Paul Brown United States

.

Courthouse, 101 E. Pecan Street, Sherman, Texas, 75090.
This order will expire on the 20th day of March, 2017, unless extended by order of the
Court.
IT IS SO ORDERED.

SIGNED this 6th day of March, 2017.

___________________________________
AMOS L. MAZZANT
UNITED STATES DISTRICT JUDGE

6