The opinion of the court was delivered by: ROSENBERG
ROSENBERG, District Judge.
This matter is before me on a motion for a preliminary injunction pursuant to Rule 65 of the Federal Rules of Civil Procedure. The motion was initiated by Best Resume Service, Inc. to attempt to stop the defendant from engaging in any further competitive action, or engaging in any more resume writing after a franchise agreement between the parties had been cancelled.
This court's jurisdiction arises from the fact that this is an action brought under the trademark laws of the United States, 15 U.S.C. §§ 1051-1127, original jurisdiction being conferred in accordance with 15 U.S.C. § 1121 and 28 U.S.C. § 1338. Venue in this court is proper with respect to the claims asserted in the complaint, pursuant to 28 U.S.C. § 1391(b) because such claims arose in the Western District of Pennsylvania.
At the hearing the plaintiff demonstrated that if the defendant is not enjoined from continuing his competitive resume writing, the plaintiff, inter alia, will suffer irreparable harm to its business and goodwill as well as to the business and goodwill of its new Westmoreland County franchise, which has already opened, none of which will be compensable by monetary damages.
From the evidence presented, I have made findings of fact. Best Resume is a Pennsylvania corporation which has been doing business under the name of Best Resume Service since 1962. Ronald Care is a resident of Pennsylvania currently operating a business-styled "Best Resume Service" located in Greensburg, Pennsylvania. On April 12, 1979, Best Resume and Care entered into a franchise agreement pursuant to which Care was granted the exclusive franchise in Westmoreland County, Pennsylvania, excluding only that part of Westmoreland County within a ten mile radius of the City of New Kensington. Thereafter and until approximately October, 1981, Care regularly and routinely furnished royalties and operation reports to Best Resume pursuant to Article IV of the Franchise Agreement.
"Franchisee shall pay to Franchisor a sum representing seven percent (7%) of the gross cash receipts from the operation of Franchisee's business, said sums to be paid on a monthly basis to and received by Franchisor on or before the tenth day of each month for the preceding month, commencing the month following the month in which the Franchisee begins business. In the event Franchisee fails to pay Franchisor the above-mentioned royalty, Franchisor shall have the right to terminate this Franchise Agreement."
At no time since October, 1981 has Care remitted any royalties, furnished operating reports or complied with any other duties of the Best Resume Franchisee, as provided in the Franchise Agreement. Subsequent to the termination of Care's franchise, Best Resume checked the yellow pages' listings and made inquiries at Care's place of business in order to satisfy itself that Care was not continuing to use or advertise by the trade name "Best Resume Service".
Following this, in March of 1984, Best Resume entered into a new Franchise Agreement for the Westmoreland County territory with a franchise which opened in Greensburg, Pennsylvania. The new franchise has alerted Best Resume to the fact that Care had resumed use of the trade name and service mark "Best Resume Service" by advertisements which were placed in the Tribune Review Newspaper in Greensburg on the dates of March 8, 26, 27, 28, 29, 30, 31 and April 1, 2, 3 of 1984 as indicated by exhibits admitted at the hearing.
Additionally, the authorized Best Resume franchise had received correspondence from a local bank which concerns one of Care's customers and which further indicates that Care is wrongfully using the name Best Resume Service. A copy of the Equibank letter and check were admitted into evidence as well.
The defendant, Ronald Care, avers to the contrary that the defendant did not wrongfully appropriate the name, but paid the plaintiff full and complete consideration for the name prior to the time the plaintiff had registered the name as a trademark. Care claims that he acquired the right to use the name by payment to the Franchisor of $12,500 to acquire the franchise. Care thus seems to be proposing the novel theory that the implementation of a franchise agreement involves the irrevocable sale of the name even if the franchisee breaches the contract and terminates the agreement.
The defendant further avers that the name registered by Best Resume Service, Inc. on February 24, 1981 is not the same because the name as registered has an accent mark over the word "resume" and in fact was registered after 1979 when the name was used by Ronald Care in the operation of his business. The evidence demonstrates franchise agreement was terminated by Ronald Care because ...