What are the potential consequences if Bang Cookies' right to use its unregistered trademarks is challenged?
Bang_Cookies Franchise · 2024 FDDAnswer from 2024 FDD Document
Trademarks Not Registered with the United States Patent and Trademark Office
The following principal trademarks identified in the schedule below are a part of the Licensed Marks, our System, and will be used by you in the operations of the Franchised Business but are not registered with the United States Patent and Trademark Office ("USPTO"). As to each of these principal trademarks:
We do not have a federal registration for each of these principal trademarks. Therefore, the trademarks identified below do not have many legal benefits and rights that are afforded to federally registered trademarks. If our right to use the trademarks (identified below) is challenged, you may have to change to an alternative trademark, which may increase your expenses.
| Mark | Serial Number for | Application Type | Application Date | |---|---|---|---| | | Registration Application Filed with USPTO Application | | | | N/A | | N/A | N/A | As to our principal trademarks there are no currently effective material determinations by the USPTO, the Trademark Trial and Appeal Board, any court, or the trademark administrator of any state. There are no pending infringement, opposition or cancellation proceedings and no pending litigation involving our principal marks. We know of no superior rights or infringing uses that could materially affect your use of our principal marks or other related rights in any state.
You are required to provide us with written notice of any claims that you may become aware of respecting the Licensed Marks, including your use of the Licensed Marks and/or any claim associated with a third party's use of a trademark that is identical or confusingly similar to the Licensed Marks. We maintain the exclusive discretion to take any and all actions, or to refrain from any action, that we believe to be appropriate in response to any trademark infringement, challenge or claim. As between us, we possess the sole right to exclusively control any and all litigation, legal proceedings, administrative proceedings and/or settlement(s) involving any actual or alleged infringement, challenge or claim relating to the Licensed Marks. You must sign all documents, instruments and agreements and undertake the actions that we, with
the advice of our legal counsel, determine to be necessary or advisable for the protection and/or maintenance of our interests in the Licensed Marks in any legal proceeding, administrative proceeding or as may be otherwise determined by us. As to the foregoing, we will reimburse you for the reasonable out-of-pocket administrative expenses that you incur and pay in complying with our written instructions.
Source: Item 13 — TRADEMARKS (FDD pages 38–39)
What This Means (2024 FDD)
According to Bang Cookies's 2024 Franchise Disclosure Document, some of its principal trademarks are not registered with the United States Patent and Trademark Office (USPTO). As a result, these unregistered trademarks lack many of the legal protections afforded to federally registered trademarks. If Bang Cookies' right to use these unregistered trademarks is challenged, franchisees may be required to switch to an alternative trademark. This change could lead to increased expenses for the franchisee.
Bang Cookies retains the right to modify or replace the Licensed Marks if a third party establishes superior rights to them. In such cases, franchisees must use the substituted or modified marks designated by Bang Cookies. The FDD states that Bang Cookies' sole obligation in this event is to reimburse franchisees for the direct out-of-pocket costs of complying with the required changes. These costs, which the franchisee must document to Bang Cookies' satisfaction, may include alterations to signage and replacement of marketing materials.
Bang Cookies will protect a franchisee's right to use the Licensed Marks against claims of infringement and unfair competition, provided the franchisee uses the marks according to the Franchise Agreement, manuals, and Bang Cookies' instructions. Franchisees must notify Bang Cookies of any claims and allow Bang Cookies to control the defense and settlement of the claim. If these conditions are met, Bang Cookies will indemnify the franchisee against direct damages for trademark infringement. However, Bang Cookies is not obligated to cover the fees or disbursements of any attorney retained by the franchisee if Bang Cookies defends the claim.