United States District Court, W.D. North Carolina, Charlotte Division
COGBURN .JR. UNITED STALES DISTRICT JUDGE
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.
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
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
Bojangles' alleges that defendants (collectively
“Hardee's”) infringed on its protected
trademarks by labeling a fried chicken filet 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. (#1) at 7.
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.
for issuance of a TRO are governed by Fed.R.Civ.P. 65(b)(1),
which provides as follows:
The court may issue a temporary restraining order without
written or oral notice to the adverse party or its attorney
(A) 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
(B) the movant's attorney certifies in writing any
efforts made to give notice and the reasons why it should not
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.).
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-CV-00147-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)).
court has closely reviewed the Verified Complaint (#1) and
the parties' Motions (#5 and #13). The court will review
the appropriate factors seriatim.
Likelihood of Success on the Merits
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.
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. ...