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IN THE UNITED STATES DISTRICT COURT 

FOR THE SOUTHERN DISTRICT OF OHIO 

EASTERN DIVISION 

RED ROOF FRANCHISING, LLC, : 

 : Case No. 2:18-cv-16 

 Plaintiff, : 

 : JUDGE ALGENON L. MARBLEY 

 v. : 

 : Magistrate Judge Vascura 

RIVERSIDE MACON GROUP, LLC, et al., : 

 : 

 Defendants. : 

OPINION AND ORDER GRANTING PLAINTIFF’S MOTION FOR 

PRELIMINARY INJUNCTION 

I. INTRODUCTION 

This matter is before the Court on Plaintiff Red Roof Franchising, LLC’s (RRF) Motion 

for Preliminary Injunctive Relief (ECF No. 2-1). RRF seeks an order enjoining Defendant 

Riverside Macon Group, LLC (Riverside) from using RRF’s proprietary marks, including the 

“Red Roof Inn” signs posted on and around its building. (Id. at 1). Having considered the 

Motion, as well as the arguments of counsel and testimony of Red Roof Inn General Counsel 

George Limbert at the Preliminary Injunction hearing on January 24, 2018, the Court hereby 

GRANTS the Motion. 

II. BACKGROUND 

Red Roof Inn alleges the following facts, none of which has been challenged by 

Defendants: Red Roof Inn is a hotel chain that grants to its franchisees the use of the “Red Roof 

System.” (Id. at 1-2). The Red Roof System includes use of the Red Roof Inn logo, as well as 

other trademarks and trade symbols, signs, and slogans. (Id. at 2). 

 In February 2014, RRF entered a Franchise Agreement with Riverside for the operation 

of a Red Roof Inn in Macon, Georgia. (Id.). Under the Agreement, Riverside was to make 
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payments to RRF and make certain improvements to the property. (Id. at 2-3). RRF claims that 

Riverside became past-due in required payments and failed to make property improvements; it 

therefore advised Riverside that it had five days to resolve the monetary default and thirty days 

to resolve the issues related to improving the property. (Id. at 3). After Riverside failed to cure 

either issue within the allotted time, RRF terminated the Franchise Agreement effective 

September 1, 2017. (Id., Exh. 3). 

 By the terms of the Franchise Agreement, upon termination, Riverside was required to 

“immediately cease to operate the Inn under the System and shall not thereafter, directly or 

indirectly, represent to the public or hold itself out as a present or former Red Roof Inn 

franchisee.” (Id. at 3). Riverside apparently did not do so. The parties attempted to mediate this 

matter on December 13, 2017, to no avail. (Id. at 4). 

On December 18, 2017, RRF took photographs of the property showing that the 

distinctive “Red Roof Inn” signs still were being used on the property. (Id. at 4-5). That same 

day, RRF sent a cease and desist letter warning Riverside that it was in violation of the Franchise 

Agreement, the Lanham Act 15 U.S.C. §§ 1114, 1116, and 1125, and state and common law 

prohibitions on trademark infringement and unfair competition. (Id. at 6). According to RRF, 

Riverside did not respond to the cease and desist letter and continued to use the Red Roof Inn 

sign and logo. (Id.). 

Riverside’s failure to cease using Red Roof Inn identifying marks appears to have created 

actual confusion in the marketplace. Evidence presented at the Preliminary Injunction hearing 

reveals that aggrieved customers contacted Red Roof Inn Guest Relations Specialist following 

sub-par hospitality experiences at Riverside. (Exh. P-5). Even after Red Roof Inn clarified that 
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3950 River Place Drive in Macon, Georgia, is no longer a Red Roof Inn property, customers 

remained confused. Id. 

It remains unclear the extent to which Riverside has followed the Order this Court issued 

on January 10, 2018, following the Rule 65.1 Conference. 

III. LAW AND ANALYSIS 

The “purpose of a preliminary injunction is merely to preserve the relative positions of 

the parties until a trial on the merits can be held.” Univ. of Tex. v. Camenisch, 451 U.S. 390, 395 

(1981). In light of its “limited purpose,” a preliminary injunction is “customarily granted on the 

basis of procedures that are less formal and evidence that is less complete than in a trial on the 

merits.” Certified Restoration Dry Cleaning Network, L.L.C. v. Tenke Corp., 511 F.3d 535, 542 

(6th Cir. 2007). Accordingly, a party need not prove her case in full at a preliminary injunction 

hearing. Id. 

When considering a motion for preliminary injunction, a district court must balance four 

factors: (1) whether the movant has a strong likelihood of success on the merits; (2) whether the 

movant would suffer irreparable injury without the injunction; (3) whether issuance of the 

injunction would cause substantial harm to others; and (4) whether the public interest would be 

served by the issuance of the injunction. Ne. Ohio Coal. for the Homeless v. Husted, 696 F.3d 

580, 590–91 (6th Cir. 2012). These four considerations are “factors to be balanced, not 

prerequisites that must be met.” Certified Restoration, 511 F.3d at 542. Whether the 

combination of the factors weighs in favor of issuing injunctive relief in a particular case is left 

to the discretion of the district court. See Leary v. Daeschner, 228 F.3d 729, 739 (6th Cir. 2000). 

All four factors lead this Court to conclude that a preliminary injunction is warranted and 

just. First, there is a strong likelihood of Red Roof Inn’s success on the merits: In a trademark 

case, the question of irreparability of harm hinges on the likelihood of consumer confusion: “trademark 
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infringement by nature is generally irreparable and the showing of a high probability of confusion almost 

invariably gives rise to irreparable harm.” Cent. Benefits Mut. Ins. Co. v. Blue Cross & Blue Shield Ass’n, 

711 F. Supp. 1423, 1434 (S.D. Ohio 1989); see also Dolphin Seafoods, Inc. v. Zartic, Inc., No. 

CIV.A.C82-1613, 1983 WL 187917, at *6 (N.D. Ohio Dec. 5, 1983) (“A high probability of confusion 

makes irreparable injury almost inevitable.”). The Sixth Circuit has promulgated eight factors to guide 

courts in ascertaining whether a likelihood of confusion exists: 

1. strength of the senior mark; 

2. relatedness of the goods or services; 

3. similarity of the marks; 

4. evidence of actual confusion; 

5. marketing channels used; 

6. likely degree of purchaser care; 

7. the intent of defendant in selecting the mark; and 

8. likelihood of expansion of the product lines. 

Daddy’s Junky Music Stores, Inc. v. Big Daddy’s Family Music Ctr., 109 F.3d 275, 280 (6th Cir. 

1997) (citing Frisch’s Restaurants, Inc. v. Elby’s Big Boy, Inc., 670 F.2d 642, 648 (6th Cir. 

1982). Here, a high probability of confusion exists because the marks are not merely similar, 

they are identical. The Red Roof System, including the Red Roof logo, is a valuable asset. 

Indeed, it is the primary asset that RRF, as a franchisor, possesses. Yet, Riverside may be 

continuing to use the Red Roof System, apparently in contravention of the Franchise Agreement, 

to market its own independent hotel. Not only is the potential for consumer confusion with a 

mislabeled hotel manifest, RRF has presented actual evidence to this Court that such confusion 

has arisen. (Exh. 5). Indeed, a disgruntled customer contacted Red Roof Inn advising of subpar 

service and conditions in the hotel. The customer thought the hotel was a Red Roof Inn property 

because the signage so indicated and because she was billed on Red Roof Inn stationary. 

 Second, irreparable injury would accrue to RRF immediately in the absence of a 

preliminary injunction. As a threshold matter, irreparable injury is presumed as a result of a 
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finding of a likelihood of confusion for purposes of the Lanham Act. Abercrombie & Fitch v. 

Fashion Shops of Ky., Inc., 363 F. Supp. 2d 952, 966 (S.D. Ohio 2005). As the Sixth Circuit has 

held, “no particular finding of likelihood of . . . irreparable harm is necessary for injunctive relief 

in trademark infringement or unfair competition cases.” Id. (citing Circuit City Stores, Inc. v. 

CarMax, Inc., 165 F.3d 1047, 1056 (6th Cir. 1999)). RRF has no control over a former 

franchisee, and as long as Riverside maintains Red Roof signage on its property while operating 

a location that fails to meet RRF standards, Red Roof Inn would continue to suffer financial 

harm from the non-exclusivity of the Red Roof Inn trademark in Georgia. There is also a direct 

financial impact: RRF has conveyed that, in order to compensate customers who through no fault 

of RRF’s have been dissatisfied with the hospitality at the Riverside location, RRF has awarded 

aggrieved consumers with loyalty points and free stays. 

 Third, to award a preliminary injunction would not cause substantial harm to others: RRF 

is not objecting to Riverside’s continued operation as a hotel, but merely to Riverside’s use of 

RRF marks. 

 Fourth, there is a strong public interest in avoiding confusion in the marketplace. 

Worthington Foods, Inc., 732 F. Supp. 1417, 1463 (S.D. Ohio 1990) (“If the movant shows a 

likelihood of success on the merits of [a trademark action] . . . it has thereby shown a likelihood 

of confusion concerning the source, affiliation, connection, or sponsorship of the goods. 

Avoiding confusion by issuing an injunction would be in the public interest.”) (citing Central 

Benefits Mutual Ins. Co. v. Blue Cross and Blue Shield Ass’n, 711 F. Supp. 1423, 1435 (S.D. 

Ohio 1989)). The fact that public confusion exists is uncontroverted. The Court therefore finds 

that this factor, too, favors granting a preliminary injunction. 
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IV. CONCLUSION 

 For the reasons set forth above, the Court GRANTS Plaintiff’s Motion for Preliminary 

Injunction and ORDERS that the Defendants, Deba Shyam and Riverside Macon Group, LLC, 

its shareholders, agents, servants, employees, and all persons acting in concert with them shall be 

enjoined from: 

a) Using the words and/or terms “Red Roof” or any combination of “Red” and “Roof” or 

any other name, word designation, or mark with confusingly similar colors or similar 

lettering or logo (the “Red Roof Marks”) in marketing, advertising, or promotional 

materials, via the Internet or otherwise, in connection with hospitality services or any 

other budget; 

b) Otherwise infringing the Red Roof Marks and/or Proprietary Marks as defined in the 

Franchise Agreement. 

It is further ORDERED that Defendants abide by the Red Roof Franchising, LLC, Franchise DeIdentification Procedures articulated in Plaintiff’s Exhibit 3 (ECF No. 1-4). 

IT IS SO ORDERED. 

 s/Algenon L. Marbley ___________ 

 ALGENON L. MARBLEY 

 UNITED STATES DISTRICT JUDGE 

 

DATED: January 25, 2018