Omni Associates, LTD v. Omni Commercial, LLC
5:24-cv-00149
E.D. Ky.Jul 8, 2025Background
- Plaintiff Omni Associates, Ltd (an architectural firm) sued Defendant Omni Commercial, LLC (a design-build contractor) for trademark infringement and unfair competition under the Lanham Act and Kentucky law.
- Plaintiff alleged harm to its goodwill due to Defendant’s "poor reputation," claiming confusion and damage to its business.
- Plaintiff requested Defendant produce all documents relating to customer dissatisfaction and complaints (RFP No. 14), later attempting to limit to documents concerning Eastern Kentucky University.
- Defendant responded by producing only positive customer feedback and argued that broad customer satisfaction or dissatisfaction was not relevant to trademark infringement claims, especially under the likelihood of confusion test.
- After failed negotiations, Plaintiff filed a motion to compel further production, leading to this ruling.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Relevance of customer dissatisfaction docs (RFP No. 14) | Docs are relevant to show harm to plaintiff's goodwill and confusion under the Lanham Act | Customer dissatisfaction is not relevant to confusion; producing all such docs is overly broad and burdensome | Denied; customer dissatisfaction not relevant to likelihood of confusion |
| Use of Frisch’s factors vs. alternative tests for likelihood of confusion | Court may consider factors beyond Frisch’s, citing Sunless | Frisch’s factors are controlling 6th Cir. law | Court will follow Frisch’s; customer dissatisfaction not among the factors |
| Customer dissatisfaction relevant to defendant’s affirmative defenses (laches, waiver, positive reputation) | Customer complaints refute claims of goodwill raised by defendant as defenses | Defenses only mention own brand reputation, not confusion or key defenses | Not relevant; goodwill not connected to laches/waiver |
| Customer dissatisfaction relevant to damages or injunction (irreparable harm) | Such docs relevant for damages and irreparable harm (per Max Rack) | Not directly relevant; Plaintiffs have ways to seek actual confusion evidence | Overly broad and too attenuated; not compelled |
Key Cases Cited
- Homeowners Group, Inc. v. Home Marketing Specialists, Inc., 931 F.2d 1100 (6th Cir. 1991) (sets out the Frisch’s factors for likelihood of confusion in trademark law)
- Frisch’s Restaurants, Inc. v. Elby’s Big Boy of Steubenville, Inc., 670 F.2d 642 (6th Cir. 1982) (origin of the Frisch’s factors)
- Wynn Oil Co. v. Thomas, 839 F.2d 1183 (6th Cir. 1988) (actual confusion is the best evidence of likelihood of confusion)
- Max Rack, Inc. v. Core Health & Fitness, LLC, 40 F.4th 454 (6th Cir. 2022) (addresses damages for lost goodwill due to inferior infringer’s products)