What right and obligation does 1 800 Packouts grant to franchisees regarding the use of Marks?
1_800_Packouts Franchise · 2025 FDDAnswer from 2025 FDD Document
or territories, but we will consider any requests to obtain additional territories on a case-by-case basis.
ITEM 13 TRADEMARKS
We grant you the right and obligation to use the Marks that we make available to you, for providing products and services at the Franchised Business.
Packout Holdings was assigned the entire interest in of the Marks from Robin Parker on July 2, 2015. The assignment was recorded with the United States Patent and Trademark Office (the "USPTO") on July 16, 2015. All of the Marks are licensed to us pursuant to a License Agreement with Packout Holdings dated as of July 2, 2015 (the "License Agreement"). In the License Agreement, Packout Holdings authorized us to use the Marks in connection with the offer, sale, and support of Franchised Businesses. The License Agreement does not contain any significant limitations on our right to use or license the Marks to you and is perpetual in duration and may be terminated unilaterally by either party only upon a material breach of the License Agreement. Upon termination of the License Agreement, we must immediately discontinue the use of the Marks and assign to Packout Holdings all of our franchise agreements licensing the use of the Marks, and Packout Holdings has agreed to assume all obligations under such agreements arising from and after their assignment.
Packout Holdings owns the following Marks that have been registered on the Principal Register of the USPTO, and intends to renew each registration, including filing all appropriate affidavits for each respective Mark at the times required by law:
| Mark | Registration No. | Registration Date | |---|---|---| | | | | | | 4,642,192 | 11/18/14 | | RECOGNIZE AN OPPORTUNITY WHEN YOU | 4,809,508 | 9/8/15 | | SEE IT | | | | PACKOUTS. CLEANING. STORAGE SUCCESS! | 4,809,509 | 9/8/15 | | 1-800-PACKOUTS | 4,908,139 | 3/1/16 | | | 4,908,822 | 3/1/16 | | Mr. Packouts | 6,964,832 | 1/24/23 | Packout Holdings owns the following Mark that has been registered on the Supplemental Register of the USPTO:
| Mark | Registration No. | Registration Date | |---|---|---| | THE NATIONAL PACKOUT COMPANY | 4,693,604 | 2/24/15 | There are no currently effective material determinations of the USPTO, the Trademark Trial and Appeal Board, or any state trademark administrator or court, and no pending infringement, opposition, or
cancellation proceedings or material federal or state court litigation, involving the Marks. There are no agreements in effect which materially affect our rights to use or license the use of the Marks in a manner material to the franchise. We do not actually know of either superior rights or infringing uses that could materially affect your use of the Marks in any state. We have not renewed or filed any affidavits with respect to the Marks, because none of the Marks have been eligible for renewal or for the filing of affidavits of use.
Your right to use the Marks is derived solely from the Franchise Agreement and is limited to your conduct of business in compliance with the Franchise Agreement and all applicable specifications, standards and operating procedures we prescribe during the term of the franchise. Any unauthorized use of the Marks by you will constitute an infringement of our rights in and to the Marks. Your usage of the Marks and any goodwill established thereby will be for our exclusive benefit and the Franchise Agreement does not confer any goodwill or other interests in the Marks upon you. All provisions of this Agreement applicable to the Marks will apply to any additional proprietary trademarks, service marks, commercial symbols, designs, artwork and logos authorized for use by and licensed to you under the Franchise Agreement. You may not at any time contest, or assist any other person in contesting, the validity or ownership of any of the Marks.
Source: Item 13 — TRADEMARKS (FDD pages 44–45)
What This Means (2025 FDD)
According to 1 800 Packouts's 2025 Franchise Disclosure Document, franchisees have both the right and the obligation to use the Marks that 1 800 Packouts makes available for providing products and services at the Franchised Business. However, this right is not absolute and is contingent upon compliance with the Franchise Agreement, as well as all specifications, standards, and operating procedures prescribed by 1 800 Packouts during the franchise term. Unauthorized use of the Marks constitutes an infringement of 1 800 Packouts's rights. The franchisee's use of the Marks and any resulting goodwill benefit 1 800 Packouts exclusively, and the Franchise Agreement does not grant the franchisee any goodwill or other interests in the Marks. Franchisees cannot contest the validity or ownership of any of the Marks.
The franchisee must use the Marks as the sole identification of the Franchised Business, while also identifying themselves as the independent owner in a prescribed manner. The franchisee is prohibited from using any Mark as part of any corporate or trade name, or with any prefix, suffix, or other modifying elements, or in any modified form, without express written authorization from 1 800 Packouts. The Marks must be prominently displayed on Franchised Business materials, such as posters, displays, service contracts, and stationery, as directed by 1 800 Packouts, including providing necessary notices of trade and service mark registrations and copyrights, and obtaining required fictitious or assumed name registrations.
Furthermore, the franchisee is obligated to immediately notify 1 800 Packouts of any apparent infringement or challenge to the use of any Mark, or any claim by any person of rights in any Mark. The franchisee is not allowed to communicate with anyone other than 1 800 Packouts and its counsel regarding such matters. 1 800 Packouts has the right to take any action it deems appropriate, but is not obligated to protect the franchisee's right to use the Marks or to participate in the franchisee's defense or indemnify them in any legal proceedings involving the Marks. 1 800 Packouts has sole discretion to control any litigation or proceedings related to the Marks, and the franchisee must assist in protecting 1 800 Packouts's interests.
If 1 800 Packouts decides that it is advisable to modify or discontinue the use of any Mark, or to use additional or substitute marks, the franchisee must comply with 1 800 Packouts's directions at their own expense within a reasonable time after receiving notice. This condition highlights the potential for changes in branding and marketing strategies, which the franchisee must adapt to, bearing the associated costs. This is a fairly standard clause in franchise agreements, as franchisors need the flexibility to update their branding to remain competitive and protect their trademarks.