Why was the 'Papa Ray's Pizza & Wings' trademark registration cancelled for Aw?
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.
Other than as described above, 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. There are no agreements currently in effect that significantly limit our right to use or license the use of the Marks in any manner material to you.
Source: Item 13 — TRADEMARKS (FDD pages 30–32)
What This Means (2025 FDD)
According to Aw's 2025 Franchise Disclosure Document, the trademark registration for "Papa Ray's Pizza & Wings" and its associated logo were cancelled on November 26, 2013. The cancellation was initiated by U.S.A. Famous Original Ray's Licensing Corp., who claimed ownership and prior use of the trademark "Famous Original Ray's Pizza." As a result, Aw does not have a federal registration for its primary trademark. This means that Aw's trademark lacks the legal protections and benefits typically associated with federally registered trademarks.
This situation poses potential risks for prospective Aw franchisees. Without federal trademark protection, Aw's right to use the "Papa Ray's Pizza & Wings" trademark could be challenged. If such a challenge were successful, franchisees might be required to adopt an alternative trademark, potentially incurring additional expenses for rebranding and marketing. While the FDD states that U.S.A Famous Original Ray's Licensing Corp. only uses its mark in New York and Aw does not intend to offer franchises in New York, trademark disputes can be complex and unpredictable.
Aw states that they are not aware of any existing or possible superior prior rights or infringing uses that could materially affect a franchisee's use of the marks in their state. However, Aw is not required to protect a franchisee's use of the marks or defend them against claims. Although Aw has the right to defend the claim if they choose to do so. Franchisees should be aware of this risk and consider seeking legal advice to assess the potential implications for their specific location and business operations. Despite the lack of federal registration, Aw will indemnify franchisees against damages and costs incurred in defending against third-party claims arising from the use of the marks, provided the franchisee complied with the Franchise Agreement and notified Aw in a timely manner.
In the event that Aw deems it advisable to modify or discontinue the use of any mark, franchisees must comply with Aw's directions at their own expense. This highlights the importance of ongoing communication and collaboration between Aw and its franchisees to navigate any potential trademark-related challenges. Prospective franchisees should carefully review the terms and conditions of the Franchise Agreement related to trademark usage and protection to fully understand their rights and obligations.