Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 1 of 19

IN THE UNITED STATES DISTRICT COURT FOR THE

NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
TASTI D-LITE LLC,
Plaintiff,

Case No. 1:14-CV-1672-MHC

v.
MONIQUE
LLC,

STEWART

and

MNS,

Defendants.
AMENDED COMPLAINT FOR INJUNCTIVE RELIEF
Plaintiff, Tasti D-Lite, LLC (Tasti-D-Lite), by its attorneys, for its
Complaint (Complaint) for Preliminary and Permanent Injunctive Relief against
defendants Monica Stewart (Stewart) and MNS, LLC (MNS) (Stewart and
MNS are collectively referred to as Defendants), states as follows:
Nature of the Action
1.

This is an action for trademark infringement under the trademark laws

of the United States, for unfair competition, and for breach of contract. Tasti DLite seeks a preliminary and permanent injunction (i) enjoining Defendants
wrongful and unlawful use of Tasti-D-Lites federally registered trademarks, and
(ii) enforcing certain of the post-termination obligations set forth in the Franchise
Agreement entered into by and between defendant Stewart and Tasti D-Lite.

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 2 of 19

Parties
2.

Tasti D-Lite is a Delaware Limited Liability Company with its

principal place of business in Franklin, Tennessee. None of the owners of Tasti DLite are citizens of the State of Georgia. Tasti D-Lite is engaged in the business of,
among other things, granting franchises to qualified persons to operate Planet
Smoothie stores using a distinctive business format, system of operations and
proprietary names and marks.

Tasti D-Lite is successor-in-interest to Planet

Smoothie, LLC, an entity that engaged in a similar business, which entered into
franchise agreements for the operation of Planet Smoothie stores, including a
franchise agreement with defendant Stewart.
3.

Defendant Stewart is, on information and belief, a resident and citizen

of the State of Georgia. On information and belief, Stewart is, or at all times
relevant was, an officer and owner of MNS, LLC through which she operated a
franchised Planet Smoothie store at 3560 Camp Creek Parkway, East Point,
Georgia.
4.

On information and belief, Defendant MNS is a Georgia limited

liability company, all of whose members are individuals who are citizens and
residents of the State of Georgia, with its principal place of business in Fulton

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 3 of 19

County, Georgia. On information and belief, all of the owners of MNS are citizens
and residents of the State of Georgia.
Jurisdiction and Venue
5.

This action arises under the Lanham Act, 15 U.S.C. 1051 et seq.,

and under the common-law.

6.

This Court has original subject matter jurisdiction of this action under

28 U.S.C. 1331, 1338, and 1367, in that this is a civil action involving claims
arising under the laws of the United States, including an Act of Congress relating
to trademarks, and wherein all other claims are so related to claims within the
Courts original jurisdiction that they form part of the same case or controversy.
This Court also has original subject matter jurisdiction of this action under 28
U.S.C. 1332, in that it is a civil action wherein the matter in controversy exceeds
the sum or value of $75,000, exclusive of interest and costs, and is between
citizens of different states.
7.

Venue and jurisdiction are proper in this Court under 28 U.S.C.

1391, in that (i) Defendants reside in this judicial district, and (ii) a substantial part
of the events or omissions giving rise to the claims asserted herein occurred in this
judicial district, and because under the terms of the parties Franchise Agreement

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 4 of 19

Stewart agreed that all state and federal courts in Georgia shall have personal
jurisdiction as to claims permitted to be judicially resolved under the agreement.
Tasti D-Lites Registered Trademarks and Service Marks
8.

Tasti D-Lite is the sole and exclusive owner of a distinctive and

uniform system (the Planet Smoothie System) relating to the establishment and
operation of Planet Smoothie Stores. Planet Smoothie Stores sell beverages known
as smoothies, made with frozen yogurt, fresh fruits and vegetables, juices, and
related food and beverage products.
9.

To identify the source, origin, and sponsorship of Planet Smoothie

Stores and the products and services they offer, and to distinguish these
restaurants, products, and services from those established, made, offered, and sold
by others, Tasti-D-Lite has extensively used certain trademarks, service marks,
trade names, logos, emblems, and indicia of origin, including, but not limited to,
the name and mark Planet Smoothie (the Planet Smoothie Marks).
10.

The Planet Smoothie Marks are registered on the Principal Register of

the United States Patent and Trademark Office. The registrations of the Planet
Smoothie Marks continue in full force and effect, and all those eligible are
incontestable under Section 15 of the Lanham Act, 15 U.S.C. 1065.

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 5 of 19

11.

Tasti D-Lite has given notice to the public of the registration of the

Planet Smoothie Marks as provided in 15 U.S.C. 1111. Tasti D-Lite has further
complied with all legal requirements to ensure that it remains the exclusive user of
the Planet Smoothie Marks.
12.

Tasti D-Lite and its predecessors-in-interest have continuously used

the Planet Smoothie Marks in interstate commerce in connection with the

promotion, operation, and franchising of Planet Smoothie Stores and the promotion
and sale of the products and services they offer throughout certain portions of the
United States since the dates of their registration.
13.

Tasti D-Lite has the exclusive right to use and license the Planet

Smoothie Marks and derivations thereof, as well as the distinctive Planet Smoothie
System through which franchisees offer Planet Smoothie products to the public
under the Planet Smoothie Marks. Pursuant to Franchise Agreements entered into
by and between Tasti D-Lite (and its predecessors-in-interest) and their authorized
and approved franchisees, Tasti D-Lite grants franchises to qualified persons to
own and operate Planet Smoothie Stores using the Planet Smoothie Marks and the
Planet Smoothie System, but only in such manner and at such locations as are
expressly authorized by Tasti D-Lite.

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 6 of 19

14.

Tasti D-Lite and its franchisees use the Planet Smoothie Marks as the

marks and trade identity by which the products and services offered by Tasti-DLite and its franchisees are distinguished from other food service establishments
and the products and services made and sold by them.
15.

Tasti-D-Lite and its authorized franchisees have extensively

advertised and promoted Planet Smoothie Stores and the products and services
they offer under the Planet Smoothie Marks throughout certain portions of the
United States and through various media. As a result of such efforts and the
considerable money spent in connection therewith, the products and services
offered by Tasti D-Lite and its franchisees under the Planet Smoothie Marks have
met with widespread public approval and have established demand and goodwill
among consumers throughout certain portions of the United States.
The Parties Written Planet Smoothie Franchise Agreement
16.

On or about June 22, 2005, Tasti D-Lites predecessor-in interest

Planet Smoothie Franchises, LLC, a Georgia limited liability company entered into
a written Planet Smoothie Franchise Agreement (the Franchise Agreement) with
Stewart pursuant to which Planet Smoothie granted Stewart a franchise to operate a
Planet Smoothie Store at 3560 Camp Creek Parkway, East Point , Georgia

(the

Store) and to use the Planet Smoothie System and the Planet Smoothie Marks in

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 7 of 19

connection therewith, all as fully set forth in the Franchise Agreement. (A true and
correct copy of the Franchise Agreement is annexed hereto as Exhibit A and
incorporated herein by reference.)
17.

Contemporaneous with the execution of the Franchise Agreement,

defendant Monique Stewart executed a Guaranty of Franchisees Undertakings (the

Guaranty). Under the Guaranty, defendant Monique Stewart guaranteed the
franchisees performance under the Franchise Agreement and agreed to be
personally bound by the restrictive covenants in the Franchise Agreement. (A
copy of the Guaranty is annexed hereto as Exhibit B and incorporated herein by
reference.)
18.

Under Paragraph 9.1 of the Franchise Agreement Stewart agreed to

make bi-weekly reports of gross sales, and under paragraph 4 of the Franchise
Agreement Stewart agreed to make bi-weekly payments of operating fees or
royalties equal to 5% of gross sales and advertising fees equal to 2% of gross sales.
19.

It is an event of default, and grounds for termination of the Franchise

Agreement, if Stewart fails to submit a report of sales and fails to correct that
failure within thirty (30) days after delivery of written notice of default, or if
Stewart fails to pay any operating fee or advertising fee when due and fails to
correct that default within ten (10) days after written notice.

The Franchise

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 8 of 19

Agreement may be terminated without opportunity to cure in the event that Stewart
repeatedly (i.e., three or more times during its term) fails to substantially comply
with any of its requirements.
20.

Defendants agreed that, upon termination of the Franchise Agreement,

they would, among other things: (i) immediately cease operating the Store and
holding themselves out to the public as present or former Planet Smoothie
franchisees, (ii) immediately and permanently cease using any marks, trade secrets,
signs, symbols, confidential methods, or other materials associated with Planet
Smoothie or belonging to Planet Smoothie; (iii) immediately deliver to Planet
Smoothie the all information, documents, and copies thereof which are proprietary
to Planet Smoothie or relate to the operation of the franchised business; (iv)
immediately cease using the proprietary Planet Smoothie System; and (v) assign to
Planet Smoothie all rights telephone numbers utilized in operating the Store.
21.

Under Paragraph 15.8 of the Franchise Agreement, Stewart also

agreed that, if franchisor terminated the Agreement for her default she would be
liable to the franchisor for the royalties which it would have received had Stewart
operated the Store for the balance of the term of the Franchise Agreement, based
on the average sales prior to termination.

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 9 of 19

22.

Paragraph 15.8 of the Franchise Agreement also provides that, if the

franchisor incurs expenses to enforce its rights under the Agreement, Stewart
agrees to pay franchisor any such costs, including reasonable attorneys fees.
23.

On or about November 30, 2011, the Franchise Agreement was

assigned to Tasti D-Lite in connection with its purchase of the assets of the Planet
Smoothie System, and since that date Tasti D-Lite has had the rights and
obligations of franchisor under the Franchise Agreement.

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 10 of 19

Defendants Breach And Tasti-D-Lites Termination

Of The Franchise Agreement
24.

In breach of her obligations under the Franchise Agreement, Stewart

repeatedly failed to comply with her financial reporting and payment obligations
under the Franchise Agreement. In fact, during the entire time that Tasti D-Lite
has owned the Planet Smoothie franchise network, Stewart has never reported her
sales or paid royalties or ad fees, and Tasti D-Lite was forced to estimate the
amounts due based on the numbers used for similar purposes by the prior owner.
25.

By letter dated January 23, 2013, Tasti D-Lite advised Defendants that

as a result of the failure to pay $12,775 in royalty and ad fees the Franchise
Agreement would be terminated unless Defendants took steps to cure the default
within ten days as provided in the Franchise Agreement. (A copy of the January
23, 2013 Notice of Default is annexed hereto as Exhibit C.)
26.

Stewart failed to pay the unpaid royalties and ad fees, or to submit

missing sales reports after she received the default notice. Accordingly, by letter
dated May 8, 2013, Tasti D-Lite advised Defendants that the Franchise Agreement
was terminated, effective immediately. (A copy of the May 8, 2013 Notice of
Termination is annexed hereto as Exhibit D.) The Notice of Termination reminded
Defendants that they were required to comply with the post-termination obligations

10

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 11 of 19

set forth in the Franchise Agreement, including the obligation to cease all use of
the Planet Smoothie Marks.
Defendants Infringement of the Planet Smoothie Marks
27.

Notwithstanding the termination of the Franchise Agreement,

Defendants continue to use the Planet Smoothie Marks and the Planet Smoothie
System in connection with the operation of the Store, to market and promote the
Store through the use of the Planet Smoothie Marks, to hold the Store out to the
public as an authorized Planet Smoothie outlet, and to pass-off the Store and the
unapproved products offered by the Store as being authorized by Tasti D-Lite
when they are not.
28.

Defendants use of the Planet Smoothie Marks is without the license

or consent of Tasti D-Lite and has caused or is likely to cause mistake, confusion,
or deception in the minds of the public as to source, affiliation and sponsorship.
29.

In addition to the fact that both Tasti D-Lite and Defendants offer the

identical products at their Store, the products provided by Defendants using the
Planet Smoothie Marks are offered to the same class of consumers as those who
patronize authorized Planet Smoothie Stores. Upon seeing the familiar Planet
Smoothie Marks through Defendants unauthorized use thereof, consumers will be
deceived into concluding that Defendants Store, and the products and services

11

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 12 of 19

offered and sold in connection therewith, are subject to Tasti D-Lites supervision,
are sponsored or endorsed by Tasti D-Lite, and bear the Planet Smoothie Marks
pursuant to Tasti D-Lites authority and permission.
30.

So long as Defendants continue to use the Planet Smoothie Marks in

connection with the operation of the Store, consumers have no practical way of
knowing that Defendants former Planet Smoothie Store is no longer affiliated
with, or sponsored, authorized, or endorsed by, Tasti D-Lite. As a result, any
consumer dissatisfaction with Defendants Restaurant, or with the products and
services offered in connection therewith, will be attributed to Tasti D-Lite and the
entire Tasti D-Lite network.
31.

Defendants have received actual notice of their violation and

infringement of the Planet Smoothie Marks and have constructive notice of Tasti
D-Lites rights in the Marks and the registrations thereof pursuant to 15 U.S.C.
1072. Defendants continued infringement is willful, malicious, fraudulent, and
deliberate.
32.

Tasti-D-Lite has at all times complied with and fully performed all of

its obligations under the Franchise Agreement.

12

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 13 of 19

COUNT I
LANHAM ACT - TRADEMARK INFRINGEMENT
33.

Tasti D-Lite repeats and realleges 1 through 32 of its Complaint as

and for this 33, as if fully set forth herein.

34.

Defendants acts, practices, and conduct constitute an infringing use

in interstate commerce of a reproduction, counterfeit, copy, or colorable imitation

of the Planet Smoothie Marks, and Defendants sale, offering for sale, distribution,
or advertising of goods and services under the Planet Smoothie Marks, or any
designs similar thereto, is likely to cause confusion or mistake or to deceive the
public in violation of 15 U.S.C. 1114(l).
35.

As a direct and proximate result of Defendants infringement, Tasti-

D-Lite has been and is likely to be substantially injured in its business, including
its goodwill and reputation, resulting in lost revenues and profits and diminished
goodwill.
36.

Tasti-D-Lite has no adequate remedy at law because the Planet

Smoothie Marks are unique and represent to the public Tasti D-Lites identity,
reputation, and goodwill, such that damages alone cannot fully compensate TastiDLite for Defendants misconduct.

13

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 14 of 19

37.

Unless enjoined by the Court, Defendants will continue to use and

infringe the Planet Smoothie Marks, to Tasti D-Lites irreparable injury. This
threat of future injury to Tasti-D-Lites business identity, goodwill, and reputation
requires injunctive relief to prevent Defendants continued use of the Planet
Smoothie Marks and to ameliorate and mitigate Tasti D-Lites injury.
COUNT II
LANHAM ACT - UNFAIR COMPETITION
38.

Tasti-D-Lite repeats and realleges 1 through 32 of its Complaint as

and for this 38, as if fully set forth herein.

39.

Defendants acts, practices, and conduct constitute unfair competition,

false designation of origin, and false or misleading descriptions or representations

of fact, in that they are likely to cause confusion or to cause mistake, to deceive
others as to the affiliation, connection, or association of the parties, and/or to
misrepresent the nature, characteristics, qualities, or geographic origin of the
parties goods, services, and commercial activities, all in violation of 15 U.S.C
1125(a).
40.

As a direct and proximate result of Defendants unfair competition,

Tasti D-Lite has been and is likely to be substantially injured in its business,

14

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 15 of 19

including its goodwill and reputation, resulting in lost revenues and profits and
diminished goodwill.
41.

Tasti D-Lite has no adequate remedy at law because the Planet

Smoothie Marks are unique and represent to the public Tasti D-Lites identity,
reputation, and goodwill, such that damages alone cannot fully compensate Tasti
D-Lite for Defendants misconduct.
42.

Unless enjoined by the Court, Defendants will continue to compete

unfairly with Tasti D-Lite, to Tasti D-Lites irreparable injury. This threat of
future injury to Tasti D-Lites business identity, goodwill, and reputation requires
injunctive relief to prevent Defendants continued unfair competition and to
ameliorate and mitigate Tasti D-Lites injury.
COUNT III
BREACH OF CONTRACT POST TERMINATION OBLIGATIONS
43.

Tasti-D-Lite repeats and realleges 1 through 32 of its Complaint as

and for this 43, as if fully set forth herein.

44.

Stewart has failed and refused to perform her post-termination

obligations under the Franchise Agreement, including their obligations (a) to cease
using the Tasti D-Lite System and the Tasti D-Lite Marks, (b) to de-identify their
former franchised Tasti D-Lite store, (c) to assign to Tasti D-Lite all telephone

15

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 16 of 19

numbers used in connection with the operation of the former Tasti-D-Lite Store,
and (d) to discontinue all use of any confidential and proprietary information of
Tasti- -Lite.
45.

Unless ordered by the Court to perform her post-termination

obligations under the Franchise Agreement, Stewart will continue to breach her
post-termination obligations.
46.

Unless Stewart is ordered to perform her post-termination obligations

under the Franchise Agreement, Tasti D-Lite is likely to be substantially injured in

its business, including its goodwill and reputation, resulting in lost revenues and
profits and diminished goodwill, for which Tasti D-Lite has no adequate remedy at
law.
47.

This threat of future injury to Tasti-D-Lites business identity,

goodwill, and reputation requires that Stewart be ordered to perform her posttermination obligations under the Franchise Agreement to prevent her continued
breach and to ameliorate and mitigate Tasti D-Lites injury.
PRAYER FOR RELIEF
WHEREFORE, Tasti D-Lite respectfully prays for the following relief
against Defendants:
A.

A preliminary and permanent injunction enjoining Defendants, their

16

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 17 of 19

agents, servants, and employees, and those people in active concert or participation
with them, from:
1.

Using the Planet Smoothie Marks or any trademark, service

mark, logo, or trade name that is confusingly similar to the
Tasti D-Lite Marks;

2.

Otherwise infringing the Planet Smoothie Marks or using any

similar designation, alone or in combination with any other
components;

3.

Passing off any of their products or services as those of Tasti DLite or its authorized franchisees;

4.

Causing a likelihood of confusion or misunderstanding as to the

source or sponsorship of their business, products, or services;

5.

Causing a likelihood of confusion or misunderstanding as to

their affiliation, connection, or association with Tasti D-Lite
and its franchisees or any of Tasti D-Lites products or services;
and

6.

Unfairly competing with Tasti D-Lite or its franchisees in any

manner;

B.

An Order directing Defendant Stewart immediately to perform her

17

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 18 of 19

post-termination obligations under the Franchise Agreement, including, without

limitation, her obligations:
1.

To take any and all necessary steps to assign to Tasti D-Lite

any telephone numbers used in connection with the operation of
Defendants former Planet Smoothie Store; and

2.

To return to Tasti D-Lite all Operating Manuals and other

materials provided to Stewart in connection with the operation
of the former Planet Smoothie Store, and all materials bearing
any of the Planet Smoothie Marks;

C.

An Order pursuant to 15 U.S.C. 1118 that all labels, signs, prints,

packages, wrappers, receptacles, uniforms, logo items, and advertisements in the

possession of Defendants, their respective affiliates, subsidiaries, officers, agents,
servants, and employees, and those people in active concert or participation with
them, bearing the Planet Smoothie Marks, and all plates, molds, and other means
of making the same, if any, be delivered to Tasti D-Lite at Defendants cost;
D.

That Defendants be required promptly to eliminate their advertising

under the Planet Smoothie Marks or any other confusingly similar designations
from all media, including, but not limited to, newspapers, flyers, coupons,
promotions, signs, telephone books, telephone directory assistance listings, and

18

Case 1:14-cv-01672-MHC Document 30 Filed 01/20/15 Page 19 of 19

mass mailings, all at Defendants cost;

E.

That Defendants be required to file with the Court and to serve upon

Tasti D-Lites counsel within ten (10) days after entry of any injunction or order
issued herein, a written report, under oath, setting forth in detail the manner in
which they have complied with such injunction or order; and
F.

Such other and further relief as the Court deems just and proper.

Dated: _________, 2015.

TASTI D-LITE, LLC
By: /s/ Zachary M. LeVasseur
Ann M. Byrd
Georgia Bar No. 218871
Zachary M. LeVasseur
Georgia Bar No. 861514
1201 West Peachtree Street, Suite 2800
Atlanta, Georgia 30309
(404) 736-7800
(404) 682-7800 (facsimile)
zachary.levasseur@dlapiper.com

19