Who initiated a cancellation proceeding against Aw's 'Papa Ray's Pizza & Wings' trademark?
Aw Franchise · 2025 FDDAnswer from 2025 FDD Document
On July 26, 2011, our affiliate Papa Ray's Pizza 1, Inc. obtained a service mark registration on the Principal Register of the United States Patent and Trademark Office ("PTO") for "Papa Ray's Pizza & Wings" (Registration No. 4001654) and an associated logo (Registration No. 4001655). Subsequently a cancellation proceeding was initiated by U.S.A. Famous Original Ray's Licensing Corp. for cancellation of these marks based on its ownership and use of the mark Famous Original Ray's Pizza. On November 26, 2013, our affiliate's registrations for the Papa Ray's Pizza & Wings mark and logo was cancelled by the PTO. We do not have a federal registration for our principal trademark. Therefore, our trademark does not have many legal benefits and rights as a federally registered trademark. If our right to use the trademark is challenged, you may have to change to an alternative trademark, which may increase your expenses. Currently, the mark Famous Original Ray's Pizza owned by U.S.A Famous Original Ray's Licensing Corp. is only in use in New York. We do not intend to offer and sell franchises in New York.
Source: Item 13 — TRADEMARKS (FDD pages 30–32)
What This Means (2025 FDD)
According to Aw's 2025 Franchise Disclosure Document, U.S.A. Famous Original Ray's Licensing Corp. initiated a cancellation proceeding against Aw's affiliate, Papa Ray's Pizza 1, Inc., regarding the 'Papa Ray's Pizza & Wings' trademark. This proceeding was based on U.S.A. Famous Original Ray's Licensing Corp.'s ownership and use of the mark 'Famous Original Ray's Pizza'.
This is a significant issue for prospective Aw franchisees because the cancellation proceeding resulted in the cancellation of Aw's affiliate's registrations for the 'Papa Ray's Pizza & Wings' mark and logo on November 26, 2013. As a result, Aw does not have a federal registration for its principal trademark, which means the trademark lacks many legal benefits and rights typically associated with federally registered trademarks. This exposes franchisees to the risk that Aw's right to use the trademark could be challenged.
If the trademark is challenged, Aw franchisees may be required to change to an alternative trademark, which could increase their expenses. However, the FDD states that the 'Famous Original Ray's Pizza' mark is currently only in use in New York, and Aw does not intend to offer and sell franchises in New York, which may mitigate the risk for franchisees operating outside of New York. Aw states that other than the described cancellation proceeding, there are no currently effective material determinations of the PTO, the Trademark Trial and Appeal Board, or any state trademark administrator or court, nor are there any pending infringement, opposition or cancellation proceedings or material litigation involving the Marks.
It is important for potential Aw franchisees to understand the risks associated with using a trademark that is not federally registered and to consider the potential costs and disruptions that could arise if the trademark is challenged in the future. Prospective franchisees should inquire about any ongoing or potential trademark disputes and the steps Aw is taking to protect its trademark rights.