What potential consequence might Aw franchisees face if the right to use the trademark is challenged?
Aw Franchise · 2025 FDDAnswer from 2025 FDD Document
ivery of written notice to you.
Item 13 TRADEMARKS
We grant to you the right to use certain trademarks, service marks, and other commercial symbols in operating your Papa Ray's Pizza Restaurant. The principal service mark to be used by you is "Papa Ray's Pizza & Wings" and associated logos.
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.
Your right to use the Marks is limited by the terms and conditions of the Franchise Agreement. You must comply with our rules when you use the Marks.
You may not make any representation that any of the Marks is invalid or infringes the rights of any person or is otherwise open to any other form of attack. You may not contest or assist any other person in contesting the validity or ownership of the Marks, or take any action adverse to our and our affiliate's claimed rights in and to the Marks.
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You must use the Marks to identify your Papa Ray's Pizza Restaurant, but you must also identify yourself as the independent owner of your Papa Ray's Pizza Restaurant. You may not use or register any Mark as part of any entity or with any prefix, suffix or other modifying words, terms, designs or symbols (except for those we license to you ) or in any modified form. You may not use any Mark in connection with the sale of any unauthorized product or service or in any other manner we have not expressly authorized in writing.
You must not obtain or register any domain names incorporating the Marks. You must not use the Marks in a website or in any other manner on the Internet without our prior written consent. You must not use any of the Marks on the Internet in any directory listing or advertising without our prior written consent. You must not make any reference to or any association with the Marks on any social media site, social network, blog, or other on-line venue or in any other manner on the Internet without our prior written consent. If any use of the Marks on the Internet is specifically permitted in the Operations Manual, you must conform your use completely to all of the applicable standards and procedures in the Operations Manual.
Source: Item 13 — TRADEMARKS (FDD pages 30–32)
What This Means (2025 FDD)
According to Aw's 2025 Franchise Disclosure Document, if the right to use the trademark "Papa Ray's Pizza & Wings" is challenged, franchisees may have to change to an alternative trademark. This potential change could lead to increased expenses for the franchisee. This is due to the fact that Aw does not have a federal registration for their principal trademark, which means the trademark does not have as many legal benefits and rights as a federally registered trademark.
Notably, Aw's affiliate, Papa Ray's Pizza 1, Inc., previously had a service mark registration for "Papa Ray's Pizza & Wings" and an associated logo, but these registrations were canceled by the PTO in 2013 following a cancellation proceeding initiated by U.S.A. Famous Original Ray's Licensing Corp. This cancellation was based on U.S.A. Famous Original Ray's Licensing Corp.'s ownership and use of the mark Famous Original Ray's Pizza. Currently, the mark Famous Original Ray's Pizza is only in use in New York, and Aw states that they do not intend to offer and sell franchises in New York.
Aw is not required to protect the franchisee's use of the marks or defend them against claims, although they have the right to do so. However, Aw will indemnify franchisees against damages and costs resulting from claims arising from the franchisee's use of the marks, provided the franchisee complied with the Franchise Agreement and notified Aw of the claim. Aw also retains the sole discretion to modify or discontinue the use of any mark, and franchisees must comply with Aw's directions to change or discontinue using a mark at the franchisee's expense.