Noble Roman's Answer

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

FOR THE SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
N OBLE R OMAN ’ S , I NC .,
Plaintiff and Counterclaim

Defendant,
CASE NO. 1:21-CV-00307-JPH-TAB
v.
G ATEWAY T RIANGLE C ORP ., 7405

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

Plaintiffs.
v.
PAUL MOBLEY AND TROY BRANSON,
Counterclaim Defendants.
DEFENDANTS’ ANSWER TO PLAINTIFF’S COMPLAINT,

AFFIRMATIVE DEFENSES AND COUNTERCLAIM
PARTIES
1. Noble Roman’s is an Indiana corporation with its principal place of
business located in Indianapolis, Marion County, Indiana.
ANSWER: Defendants admit the material allegations of Paragraph 1.
2. Gateway, 7405 and 850 are corporations incorporated and existing
under the laws of the State of Indiana with a principal office address of 3592 North
Hobart Road, Hobart, County of Lake, Indiana 46342. The Registered Agent for
1
Gateway, 7405 and 850 is Mr. Collins and their Registered Agent’s Address is 3592
North Hobart Road, Hobart, County of Lake, Indiana 46342.
3. Northlake is a limited liability company organized and existing under
the laws of the State of Indiana with a principal office address of 3592 North Hobart
Road, Hobart, County of Lake, Indiana 46342. The Registered Agent for Northlake
is Jared R. Tauber and its Registered Agent’s address is 1415 Eagle Ridge Drive,
Schererville, Indiana 46375.
4. Gateway, 7405, 850, and Northlake shall be referred to hereafter as
the “Entity Defendant(s)”.
ANSWER: Defendants admit that Gateway, 7405, 850, and Northlake are
referred to in the complaint as “Entity Defendant(s).”
5. Mr. Collins is an Indiana citizen believed to be residing in Hobart,
Indiana.
ANSWER: Defendants admit that Mr. Collins is an Indiana citizen and
deny the remaining material allegations of Paragraph 5.
6. Mr. Collins is believed to be a principal officer and owner of each of the
Entity Defendants.
ANSWER: Defendants admit that Mr. Collins is a principal officer and
owner of Gateway, 7405 and 850, and defendants deny the remaining material
allegations of Paragraph 6.
2
7. Mr. Collins and the Entity Defendants shall hereinafter be referred to
as the “Defendant(s)”.
ANSWER: Defendants admit that “the Entity Defendants” and Mr. Collins
are referred to in the complaint as the “Defendant(s).”
8. Defendants own a diversity of businesses in various industries operating
throughout the State of Indiana under the tradename LUKE’S OIL a.k.a. LUKE.
ANSWER: Defendants admit that one of more of the defendants’ own
convenience stores operating throughout the State of Indiana under the tradename
LUKE’s OIL. Defendants deny the remaining material allegations of paragraph 8.
COMMON ALLEGATIONS
9. Noble Roman’s incorporates all preceding allegations.
ANSWER: Defendants incorporate their responses to the preceding
paragraphs.
10. Noble Roman’s is in the business of franchising the operation of Noble
Roman’s pizza franchises that feature pizza, breadsticks, and other related food items
to various franchisees throughout the world.
ANSWER: Defendants admit that Noble Roman’s is in the business of
franchising the operation of Noble Roman’s pizza franchises that feature pizza,
breadsticks, and other related food items. Defendants are without knowledge as to
the remaining material allegations of Paragraph 10 and therefore deny the same.
11. Noble Roman’s is the exclusive holder of licensing and franchising
rights relating to the Noble Roman’s brand, including, without limitation,
3
products, services, names, logos, images, media, goodwill, trademarks, and trade
dress (the “Intellectual Property").
ANSWER: Defendants are without knowledge of the material allegations
of Paragraph 11 and therefore deny the same.
12. Noble Roman’s is also the owner of certain property rights,
including the valuable privilege to exclusively use, license, and/or franchise
Noble Roman’s Intellectual Property in connection with the Noble Roman’s
franchise system (the “Property Rights”).
ANSWER: Defendants are without knowledge of the material
allegations of Paragraph 12 and therefore deny the same,
13. Noble Roman’s 1 has expended significant amounts of money and
resources on its Property Rights, including, without limitation, costs incurred
in the research, development, and marketing of its products, services, and
brand, and, as a result of Noble Roman’s efforts, Noble Roman’s Property
Rights are highly valuable.
ANSWER: Defendants are without knowledge of the material
allegations of Paragraph 13 and therefore deny the same.
14. Defendants own a diversity of businesses in various industries,
including, without limitation, over thirty (30) convenience stores operating
throughout the State of Indiana under the tradename LUKE’S OIL a.k.a. LUKE.
1Plaintiff’s name (Noble Roman’s) is misspelled 19 times is the complaint by

omitting the “ ‘s ”. The misspellings have been corrected in this answer.
4
ANSWER: Defendants admit that Gateway owns fewer than thirty
convenience stores operating throughout the State of Indiana under the
tradename LUKE’s OIL a.k.a. LUKE. Defendants deny that the remaining
Defendants operate any convenience stores and deny any additional allegations
of Paragraph 14.
15. On or about June 30, 2013, Noble Roman’s and Gateway entered into
that certain NOBLE ROMAN’S INC. MASTER FRANCHISE AGREEMENT
(NOBLE ROMAN’S PIZZA), as amended by that certain AMENDMENT #1
NOBLE ROMAN’S MASTER FRANCHISE AGREEMENT as of June 22, 2016,
AMENDMENT #2 NOBLE ROMAN’S MASTER FRANCHISE AGREEMENT as
of December 21, 2016, and AMENDMENT #3 NOBLE ROMAN’S MASTER
FRANCHISE AGREEMENT as of October 18, 2017, (collectively, the “Franchise
Agreement”) (see Ex. “1”) pursuant to which Gateway was licensed and
authorized to sell “Noble Roman’s” branded food products using Noble Roman’s
Intellectual Property at the following fifteen (15) LUKE’S Locations (the
“Franchised Locations”) only:
LOC.# BUSINESS ADDRESS CITY STATE

NAME
1 Luke’s 216 1600 E. 81st Ave. Merrillville IN
2 Luke’s 265 3550 Sheffield Ave. Hammond IN
3 Luke’s 270 2299 US Hwy 30 Schererville IN
4 Luke’s 293 9297 Taft St. Merrillville IN
5 Luke’s 241 7101 W. 133rd Ave. Cedar Lake IN
6 Luke’s 273 7277 Taft St. Merrillville IN
7 Luke’s 249 6259 Melton Rd. Portage IN
8 Luke’s 242 2121 US Hwy 41 Schererville IN
5
9 Luke’s 251 1224 E. Ridge Rd. Griffith IN

10 Luke’s 298 298 Melton Rd. Chesterton IN
11 Luke’s 231 3211 W. 37th Ave. Hobart IN
12 Luke’s 220 5695 Indpls. Blvd. East Chicago IN
13 Luke’s 224 3 E. US Hwy6 Valparaiso IN
14 Luke’s 226 4333 S. St. Lafayette IN
15 Luke’s 232 500 E. 37th Ave. Hobart IN
ANSWER: Defendants state that the documents speak for themselves.
Defendants further state that, following the parties’ prior settlement agreement,
only locations one through 14 were under the Franchise Agreement as amended.
Defendants deny any remaining allegations of Paragraph 15.
16. On information and belief, Franchise Locations 1-15 are owned
and/or operated by 7405 and/or Gateway, Franchised Locations 1 and 12 are also
owned and/or operated by Northlake, and Franchised Location 2 is also owned
and/or operated by 850.
ANSWER: Defendants admit that locations 1-14 are operated by
Gateway. Defendants denying the remaining allegations of Paragraph 16.
17. The Franchise Agreement between Noble Roman’s and Gateway
terminated on December 31, 2019.
COUNT I:
CIVIL ACTION UNDER INDIANA CODE§ 34-24-3-1
FOR RECOVERY OF DAMAGES, COSTS AND FEES ARISING
FROM DEFENDANTS’ CONVERSION OF NOBLE ROMAN’S
PROPERTY RIGHTS IN VIOLATION OF INDIANA CODE§ 35-43-4-3
18. Noble Roman’s incorporates by reference all preceding allegations.
6
paragraphs.
19. Defendants have willfully and intentionally used Noble Roman’s
Intellectual Property with knowledge that Noble Roman’s owns the Property
Rights.
ANSWER: Defendants deny the material allegations of Paragraph 19.
20. Defendants have encumbered Noble Roman’s Property Rights in
connection with the sale of unauthorized products and/or services bearing Noble
Roman’s Intellectual Property without authorization and with knowledge that the
Property Rights were owned by Noble Roman’s.
21. Defendants advertised and sold unauthorized products utilizing
Noble Roman’s Intellectual Property without the authorization of Noble Roman’s.
22. Defendants sold unauthorized products utilizing Noble Roman’s
Intellectual Property at (at least) one (1) non-Franchised Location without the
authorization of Noble Roman’s.
23. After the termination of the Franchise Agreement, Defendants
continued to utilize Noble Roman’s Intellectual Property to advertise and sale their
products and services.
7
24. Noble Roman’s lost value in its Property Rights when Defendants
advertised and sold unauthorized products in connection with Noble Roman’s
Intellectual Property.
25. By using Noble Roman’s Intellectual Property in connection with
Defendants’ products, Defendants have attempted to profit by encumbering Noble
Roman’s Property Rights.
26. In connection with its unlawful activities, Defendants 2 knowingly or
intentionally exerted unauthorized control over Noble Roman’s Property Rights
in connection with the advertisement, distribution, sale, and use of unauthorized
products and/or services.
27. As the owner of the Property Rights, Noble Roman’s alone has the
right to control and authorize the use of Noble Roman’s Intellectual Property in
connection with the sale of products and/or services.
ANSWER: Defendants are without knowledge as to the truth of the
28. The Property Rights constitutes valuable property.
2Plaintiff erroneously uses the singular “defendant” to refer to the plural

“defendants” four times in the complaint. These errors are corrected in this answer.
8
29. Defendants obtained, took, sold, conveyed, encumbered, possessed
and/or transferred all or a valuable part of Noble Roman’s Property Rights
through the advertisement and sale of products and/or services utilizing Noble
Roman’s Intellectual Property.
30. In connection with their unlawful activities, Defendants obtained,
took, sold, conveyed, encumbered, possessed and/or transferred all or a valuable
part of Noble Roman’s Property Rights for Defendants’ own use and benefit and
in exclusion and defiance of Noble Roman’s rights in its Property Rights.
31. Defendants sold products in connection with Noble Roman’s
Intellectual Property without Noble Roman’s consent and in a manner or to an
extent other than that to which Noble Roman’s had consented.
32. Gateway sold products in connection with Noble Roman’s
Intellectual Property in a manner or to an extent other than that to which Noble
Roman’s had consented.
33. In connection with their unlawful activities, Defendants
encumbered Noble Roman’s Property Rights for their own use and benefit.
9
34. As a result of Defendants’ conversion, Noble Roman’s was damaged
in an amount to be determined and seeks its statutory remedies under the
Indiana Crime Victim’s Act, Indiana Code § 34-24-3-1, for Defendant’s violation
of Indiana Code § 35-43-4-3, including, but not limited to treble damages, costs,
and attorney’s fees.
COUNT II:
CIVIL ACTION UNDER INDIANA CODE§ 34-24-3-1
FOR RECOVERY OF DAMAGES, COSTS AND FEES ARISING FROM
DEFENDANTS’ THEFT OF NOBLE ROMAN’S PROPERTY RIGHTS IN
VIOLATION OF INDIANA CODE § 35-43-4-2
paragraphs.
36. Defendants have willfully and intentionally used Noble Roman’s
Intellectual Property with knowledge that Noble Roman’s owns the Property Rights.
ANSWER: Assuming that this allegation refers to unauthorized use,
Defendants deny the material allegations of Paragraph 36.
37. Defendants have encumbered Noble Roman’s Property Rights in
connection with the sale of unauthorized products and/or services bearing Noble
Roman’s Intellectual Property without authorization and with knowledge that the
Property Rights were owned by Noble Roman’s.
10
38. Defendants advertised and sold unauthorized products utilizing Noble
Roman’s Intellectual Property without the authorization of Noble Roman’s.
39. Defendants sold unauthorized products utilizing Noble Roman’s
Intellectual Property at (at least) one (1) non-Franchised Location without the
authorization of Noble Roman’s.
40. After the termination of the Franchise Agreement, Defendants
continued to utilize Noble Roman’s Intellectual Property to advertise and sale their
products and services.
41. Noble Roman’s lost value in its Property Rights when Defendants
advertised and sold unauthorized products in connection with Noble Roman’s
Intellectual Property.
42. By using Noble Roman’s Intellectual Property in connection with
Defendants’ products, Defendants have attempted to profit by encumbering Noble
Roman’s Property Rights.
43. In connection with its unlawful activities, Defendant knowingly or
intentionally exerted unauthorized control over Noble Roman’s Property Rights
11
in connection with the advertisement, distribution, sale, and use of unauthorized
products and/or services.
44. As the owner of the Property Rights, Noble Roman’s alone has the
right to control and authorize the use of Noble Roman’s Intellectual Property in
connection with the sale of products and/or services.
45. The Property Rights constitute valuable property.
46. Defendant obtained, took, sold, conveyed, encumbered, possessed
and/or transferred all or a valuable part of Noble Roman’s Property Rights
through the advertisement and sale of products and/or services utilizing Noble
Roman’s Intellectual Property.
47. In connection with their unlawful activities, Defendants obtained,
took, sold, conveyed, encumbered, possessed and/or transferred all or a valuable
part of Noble Roman’s Property Rights for Defendants’ own use and benefit and
in exclusion and defiance of Noble Roman’s rights in its Property Rights.
12
48. Defendants sold products in connection with Noble Roman’s
Intellectual Property without Noble Roman’s consent and in a manner or to an
extent other than that to which Noble Roman’s had consented.
49. Gateway sold products in connection with Noble Roman’s Intellectual
Property in a manner or to an extent other than that to which Noble Roman’s had
consented.
50. In connection with their unlawful activities, Defendants encumbered
Noble Roman’s Property Rights for their own use and benefit.
51. As a result of Defendants’ theft, Noble Roman’s was damaged and seeks
an award of actual damages resulting from Defendants’ violations of Indiana Code §
35-43-4-2, treble damages, costs and attorney’s fees pursuant to the Indiana Crime
Victim’s Act, Ind. Code§ 34-24-3-1.
COUNT III:
BREACH OF FRANCHISE AGREEMENT
paragraphs.
13
53. All conditions precedent to the commencement of this action including
but not limited to any requirements for notice of default or demand have occurred or
been waived or otherwise excused.
54. The Franchise Agreement is a valid and enforceable contract between
Noble Roman’s and Gateway.
ANSWER: The allegations of Paragraph 54 call for a legal conclusion to
which no responses is required. Defendants further state that the document
speaks for itself. Defendants admit that the Franchise Agreement was a valid and
enforceable contract between Noble Roman’s and Gateway and further state that
the contract has terminated. Defendants deny any remaining allegations of
Paragraph 54 and specifically deny that they are liable for any alleged breach of the
agreement.
55. Gateway has breached the Franchise Agreement in connection with the
sale of unauthorized products and/or services.
56. In violation of the Franchise Agreement, Gateway advertised and sold
unauthorized products and/or services utilizing Noble Roman’s Intellectual Property
at Franchised Locations.
14
57. After the termination of the Franchise Agreement, Gateway continued
to utilize Noble Roman’s Intellectual Property in violation of the Franchise
Agreement.
58. After the termination of the Franchise Agreement, Gateway continued
to utilize Noble Roman’s Intellectual Property to advertise and sale unauthorized
products and/or services in violation of the Franchise Agreement.
59. In violation of the Franchise Agreement, Gateway advertised and sold
unauthorized products and/or services utilizing Noble Roman’s Intellectual
Property at non-Franchised Locations.
60. As a result of Gateway’s breaches, Noble Roman’s has been damaged
in an amount to be determined.
61. Noble Roman’s is entitled to recover any and all damages as a result
of Gateway’s breach of the Franchise Agreement, plus prejudgment and post
judgment interest at the statutory rate, plus attorneys’ fees, collection fees and
costs.
15
COUNT IV:
TRADEMARK INFRINGEMENT
paragraphs.
63. Noble Roman’s registered the Noble Roman’s® word mark on the
Principal Register of the United States Patent and Trademark Office in 1974 under
Registration No. 987,069, THE BETTER PIZZA PEOPLE® word mark in 1995
under Registration No.1,920,428, and the design mark on the Principal
Register of the United States Patent and Trademark Office in 1992 under
Registration No. 1682308 (hereinafter, collectively, the "Marks").
64. The registrations of the Marks are valid and incontestable and enjoy
the statutory presumptions of validity and ownership.
ANSWER: The allegations of Paragraph 64 call for legal conclusions to
which no responses are required.
65. Noble Roman’s has used the Marks in commerce continuously since
1972 in connection with marketing, identifying, and promoting its franchises.
16
66. Defendants traded unfairly upon Noble Roman’s well-established
goodwill and reputation by confusing the public as to the origin of its products,
including the sale of non-conforming items at Defendants’ Franchised Locations
and non-Franchised Locations while holding themselves out to the public as a
vendor of Noble Roman’s products and/or in connection with Noble Roman’s Marks.
67. Defendants’ use [sic] Noble Roman’s Marks was without the
authorization or consent of Noble Roman’s.
68. Gateway’s use [sic] Noble Roman’s Marks was without the authorization
or consent of Noble Roman’s and/or outside the scope of permission granted in the
Franchise Agreement.
69. Defendants’ acts constitute trademark infringement, a violation of 15
U.S.C. § 1114(1), as well as a false designation of origin in violation of 15 U.S.C. §
1125.
70. Defendants’ acts also violate Indiana’s Trademark Act, Indiana Code
Chapter 24-2-1.
71. Noble Roman’s has been damaged by Defendants’ willful infringement
and false designation of origin.
17
72. Noble Roman’s is entitled to recover any and all damages, treble
damages, plus attorneys’ fees, collection fees and costs, as a result of the trademark
infringement, false designation of origin and violation of the Lanham Act and
Indiana’s Trademark Act.
COUNT V:
UNJUST ENRICHMENT
paragraphs.
74. Defendants’ use of Noble Roman’s Intellectual Property was without the
authorization or consent of Noble Roman’s.
75. Defendants have been unjustly enriched by knowingly utilizing and
benefiting from Noble Roman’s Property Rights and Intellectual Property without
authorization and without paying for the same.
76. Noble Roman’s is entitled to recover any and all damages and other
amounts available at law and/or in equity as a result of such unjust enrichment.
18
AFFIRMATIVE DEFENSES
1. Plaintiff’s claims fail to state a claim upon which relief can be granted.
2. Plaintiff’s trademark claims are barred due to Plaintiff’s acquiescence
or estoppel.
3. Plaintiff’s state law trademark claims are barred due to its failure to
continue to register its mark with the Indiana Secretary of State as required by
Indiana law.
4. Plaintiff’s claims are barred, in whole or in part, by the equitable
doctrine of unclean hands.
5. Plaintiff may not recover any damage which it has unreasonably failed
to mitigate or avoid.
6. Defendants continue to investigate the facts related to Plaintiff’s
complaint and reserve the right to add additional affirmative defenses.
WHEREFORE, Defendants request judgment in their favor on Plaintiff’s
complaint, and for all other relief, legal or equitable, to which they are entitled.
COUNTERCLAIM
THE PARTIES
1. Counterclaim Plaintiffs, Gateway, 7405 and 850 are corporations
incorporated and existing under the laws of the State of Indiana with a principal
office address of 3592 North Hobart Road, Hobart, Lake County, Indiana 46342.
19
2. Counterclaim Plaintiff Northlake is a limited liability company
organized and existing under the laws of the State of Indiana with a principal office
address of 3592 North Hobart Road, Hobart, County of Lake, Indiana 46342.
3. Counterclaim Plaintiff Thomas M. Collins, II is an Indiana citizen
residing in Valparaiso, Indiana and is a principal officer and owner of Gateway,
7405 and 850.
4. Counterclaim Defendant Noble Roman’s, Inc. is an Indiana
corporation with its principal place of business located in Indianapolis, Marion
County, Indiana.
5. Counterclaim Defendant Paul Mobley is the Executive Chairman of
Noble Roman’s, Inc. and resides in Indianapolis, Indiana.
6. Counterclaim Defendant Troy Branson is the Executive Vice President
of Noble Roman’s, Inc. and resides in Indianapolis, Indiana.
JURISDICTION
1. This counterclaim arises under the laws of the State of Indiana. The
jurisdiction of this Court is proper through the Court’s supplemental jurisdiction
under 28 U.S.C. §1367.
2. This Court has personal jurisdiction over plaintiff Noble Roman’s, Inc.
by, inter alia, plaintiff’s filing of its Complaint. The Court has personal jurisdiction
over Counterclaim Defendants Paul Mobley and Troy Branson because they reside
in Indiana.
20
3. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b)(1)
because Counterclaim Defendants Paul Mobley and Troy Branson reside in this
district and Counterclaim Defendant Noble Roman’s has its principal place of
business in this district.
FACTS
4. In June 2013, Gateway entered into a Master Franchise Agreement
with Noble Roman’s, pursuant to which Gateway was licensed and authorized to
sell “Noble Roman’s” branded food products using Noble Roman’s Intellectual
Property at certain convenience stores owned and operated by Gateway.
5. The Agreement was amended twice, and the term was extended
through December 31, 2019.
6. On July 8, 2019, Troy Branson contacted Tom Collins regarding
alleged “critical issues.”
7. On July 9, 2019, Branson advised Collins of “some very serious issues
to discuss and I am reaching out to you so that we can avert a time and monetary
consuming situation.” (Emphasis added).
8. On July 15, 2019, Paul Mobley sent a letter with a cover email to
Collins advising him of purported “major violations of your Franchise Agreement
and the Federal Lanham Act, among other things.” In the letter, Mobley identified
two issues.
9. First, Mobley accused Defendants of displaying on a television a few
Noble Roman’s photographs at a convenience store location that did not have a
21
Noble Roman’s franchise. The photographs did not contain Noble Roman’s name or
trademark.
10. Second, Mobley complained that at Noble Roman’s franchised
locations, Defendants had placed sandwiches that had not been approved by Noble
Roman’s in a warmer with Noble Roman’s warmer wrap. The sandwiches at issue
were marked with Defendants’ brand name, “Luke.”
11. In his July 15, 2019 letter, Mobley offered to settle these issues if
Defendants would agree to extend the Master Franchise Agreement by four years,
from the then-existing termination date of December 31, 2019 to December 31,
2023. Mobley also threatened that if the settlement offer was not accepted “Noble
Roman’s will pursue all legal remedies available to it, which includes any legal fees
for pursuing its rights and protecting its franchise.” (Emphasis added).
12. On August 21, 2019, Branson told Collins that he needed to know
whether Gateway was going to accept Noble Roman’s offer, agreeing to a four-year
extension of the term of the Franchise Agreement, or “if we need to pursue this
legally” and “start running up the bill.” Branson further advised that “it’s going to
be costly” and that under both the Franchise Agreement and the Lanham Act it’s
“very clear in that you’ll pay our legal fees.” (Emphasis added).
13. Under the circumstances, however, Defendants would not be
responsible for paying Noble Roman’s legal fees under either the Franchise
Agreement or the Lanham Act.
22
14. Section 1117(a) of the Lanham Act provides that “[t]he court in
exceptional cases may award reasonable attorney fees to the prevailing party.” 15
U.S.C. § 1117(a). District courts may determine whether a case is “exceptional” in
the case-by-case exercise of their discretion, considering the totality of the
circumstances.
15. The Franchise Agreement provides that the franchisee shall pay the
franchisor’s attorney fees in certain circumstances, such as when the franchisor
incurs fees as a “a result of any default by Franchisee,” but there was no default
here.
16. Section XVII(3)(n) of the Franchise Agreement provides: “If Franchisee
misuses or makes any unauthorized use of the Marks or otherwise materially
impairs the goodwill associated therewith or Franchisor’s rights therein; provided
that, notwithstanding the above, Franchisee shall be entitled to notice of such event
of default and shall have five days to cure such default.” (Emphasis added).
17. As confirmed in a letter dated August 26, 2019 from Gateway’s in-
house counsel to Mobley, Gateway ceased use of the alleged Noble Roman’s photos
within 5 days of the July 15 notice.
18. Regarding the food warmer issue, Gateway’s counsel’s August 26 letter
explained that Branson was aware of this practice and, on behalf of Noble Roman’s,
he approved the selling of non-Noble Roman’s brand sandwiches in the counter
warmer due to space limitations at the stores, on the condition that the sandwiches
23
were clearly identified as Luke’s and did not use any of Noble Roman’s marks or
packages. These two conditions were satisfied at all franchised locations.
19. Thus, to the extent that these minor issues (i.e., photos lacking any
Noble Roman’s mark and warmers containing clearly marked Luke products) might
be regarded as contract violations, the first (the photos) was cured pursuant to
Section XVII(3)(n) of the Franchise Agreement within five days of notice and as to
the second (warmers), Noble Roman’s had consented and acquiesced as long as
certain conditions were met and they were.
20. Notwithstanding the lack of any valid claims against Defendants,
Mobley wrote a letter on August 29, 2019 in which he threatened to engage in
abusive litigation practices:
If we are forced to file a lawsuit we will have a significantly

long period of discovery as we will subpoena all accounting
records, sales records, purchase records and any other
financial information to determine our ultimate damages.
In addition, we will conduct interrogatories of everyone in
your organization with knowledge of its activities in order to
determine all of the facts. [Emphasis added].
21. Noble Roman’s complaint in this case is facially deficient, setting forth
no specific facts as to Defendants’ alleged wrongful conduct.
22. In its complaint, Noble Roman’s asserts multiple unwarranted claims
including claims for treble damages under the Indiana Crime Victims Relief Act for
allegedly committing the crimes of conversion (Count I) and theft (Count II). These
claims have no substantial basis in law or fact.
23. The Noble Roman’s counsel who prepared the complaint is currently
24
the subject of a disciplinary complaint for filing a similar trademark lawsuit with
multiple unwarranted claims, “not for the purpose of obtaining a judgment but
instead, increasing costs … by pleading facially deficient counts such as …
violations of the Indiana Crime Victims Act.” Verified Complaint for Disciplinary
Action, In the Matter of P. Adam Davis, Ind. S. Ct., Cause No. 21S-DI-00088 (Filed
2/26/2021).
CLAIM FOR ABUSE OF PROCESS
24. Counterclaim Plaintiffs repeat the allegations of paragraphs 1 - 23 of
the Counterclaim above as if fully set forth herein.
25. Noble Roman’s claims are objectively unreasonable under the
circumstances.
26. The purpose of Noble Roman’s and its agents in prosecuting this action
is not to obtain a judgment on the merits but to cause the Defendants to incur costs.
27. Noble Roman’s uses abusive litigation practices in this and other cases
to induce the franchisee to extend its franchise agreements or, failing that, to make
the franchisee an example so that other franchisees will extend their franchise
agreements rather than face similar adverse consequences.
28. The prosecution of Noble Roman’s claims for these ulterior purposes is
not proper in the normal course of litigation and constitutes an abuse of process.
29. The persons responsible for causing this abuse of process are the
Plaintiff, Noble Roman’s, Inc., and the Counterclaim Defendants Paul Mobley and
Troy Branson.
25
30. Defendants have been damaged by incurring attorney fees and other
costs as a result of this abuse of process by Noble Roman’s, Mobley, and Branson.
PRAYER FOR RELIEF
WHEREFORE, Counterclaimants pray for judgment as follows:
Entering judgment in favor of Defendants dismissing Plaintiff’s

complaint with prejudice;
Entering judgment on the Counterclaim against Noble Roman’s,

Branson, and Mobley, including both compensatory and punitive
damages;
Awarding Defendants their costs, including attorneys’ fees, incurred in

defending this action under 15 U.S.C. § 1117(a); and
Awarding Defendants such other relief as the Court deems just and
proper.
JURY DEMAND
Defendants respectfully request a trial by jury.
Respectfully submitted,
PRICE WAICUKAUSKI JOVEN & CATLIN, LLC
/s/ Ronald J. Waicukauski

Ronald J. Waicukauski, Atty. No. 1089-53
Carol Nemeth Joven, Atty. No. 18091-53A
PRICE WAICUKAUSKI JOVEN & CATLIN, LLC
The Hammond Block Building
301 Massachusetts Avenue, 2nd Floor
Indianapolis, Indiana 46204
Telephone: (317) 633-8787
Facsimile: (317) 633-8797
[email protected]
[email protected]
ATTORNEYS FOR DEFENDANTS
26
CERTIFICATE OF SERVICE
I certify that on the 8th day of March 2021, the foregoing was filed
electronically and served upon counsel of record via the Court’s ECF filing system.
/s/ Ronald J. Waicukauski
27

Noble Roman's Answer

Uploaded by

Copyright:

Available Formats

Noble Roman's Answer

Uploaded by

Document Information

Original Description:

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Noble Roman's Answer

Uploaded by

Copyright:

Available Formats

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

UNITED STATES DISTRICT COURT

Plaintiff and Counterclaim

G ATEWAY T RIANGLE C ORP ., 7405

Defendants and Counterclaim

PAUL MOBLEY AND TROY BRANSON,

DEFENDANTS’ ANSWER TO PLAINTIFF’S COMPLAINT,

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

business located in Indianapolis, Marion County, Indiana.

ANSWER: Defendants admit the material allegations of Paragraph 1.

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

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

ANSWER: Defendants admit the material allegations of Paragraph 2.

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

Schererville, Indiana 46375.

ANSWER: Defendants admit the material allegations of Paragraph 3.

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

the “Entity Defendant(s)”.

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

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

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

deny the remaining material allegations of Paragraph 5.

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

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

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

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

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

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

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

9. Noble Roman’s incorporates all preceding allegations.

ANSWER: Defendants incorporate their responses to the preceding

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

to various franchisees throughout the world.

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

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

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

dress (the “Intellectual Property").

ANSWER: Defendants are without knowledge of the material allegations

of Paragraph 11 and therefore deny the same.

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

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

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

franchise system (the “Property Rights”).

ANSWER: Defendants are without knowledge of the material

allegations of Paragraph 12 and therefore deny the same,

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

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

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

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

Rights are highly valuable.

ANSWER: Defendants are without knowledge of the material

allegations of Paragraph 13 and therefore deny the same.

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

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

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

ANSWER: Defendants admit that Gateway owns fewer than thirty

convenience stores operating throughout the State of Indiana under the

that certain NOBLE ROMAN’S INC. MASTER FRANCHISE AGREEMENT

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