What action can Black Bear Diner take if there is an infringement of their trademark?
Black_Bear_Diner Franchise · 2025 FDDAnswer from 2025 FDD Document
You must immediately notify us of any apparent infringement of or challenge to your use of any Mark, or claim by any person of any rights in any Marks, and you may not communicate with any person other than us and our counsel regarding any infringements, challenges or claims, unless you are legally required to do so. We may take whatever action we deem appropriate in these situations, and have the right to control exclusively any settlement, litigation or PTO or other proceeding arising out of any alleged infringement, challenge or claim or otherwise concerning any Mark. You must execute any instruments and documents, render assistance, take actions which in the opinion of our counsel, may be necessary or advisable to protect and maintain our interests in any litigation or other proceeding or to otherwise protect and maintain our interests in the Marks.
We can require you to modify or discontinue use of any Mark and/or to use one or more additional or substitute trademarks or service marks. We will not be required to reimburse you for your expenses to modify or discontinue the use of a Mark or to substitute a trademark or service
mark for a discontinued Mark. The modification or substitution by us of a discontinued mark will be your sole and exclusive remedy against us if a Mark must be modified in our sole judgment or as a result of an involuntary loss of any one or more of the Marks by us.
Source: Item 13 — TRADEMARKS (FDD pages 37–39)
What This Means (2025 FDD)
According to Black Bear Diner's 2025 Franchise Disclosure Document, if a franchisee discovers any potential infringement or challenges to the use of Black Bear Diner's trademarks, the franchisee is obligated to immediately notify Black Bear Diner. The franchisee is not allowed to communicate with anyone other than Black Bear Diner and their counsel regarding these infringements, challenges, or claims, unless legally required to do so.
Black Bear Diner retains the authority to take any action they deem appropriate in response to trademark infringements. This includes the exclusive right to control any settlement, litigation, or proceedings before the PTO (United States Patent and Trademark Office) or other legal actions related to alleged infringement, challenges, claims, or any other matter concerning their trademarks. The franchisee is required to assist Black Bear Diner by executing necessary documents and taking actions deemed necessary by Black Bear Diner's counsel to protect their interests in any litigation or proceeding related to the trademarks.
Black Bear Diner also has the right to require a franchisee to modify or discontinue the use of any trademark and/or use additional or substitute trademarks or service marks. Black Bear Diner is not obligated to reimburse the franchisee for any expenses incurred in modifying or discontinuing the use of a mark or substituting it with another. The FDD states that the modification or substitution of a discontinued mark by Black Bear Diner will be the franchisee's sole and exclusive remedy against Black Bear Diner if a mark must be modified in Black Bear Diner's judgment or due to an involuntary loss of the mark.
This arrangement is typical in franchising, as the franchisor needs to maintain tight control over its brand and trademarks. The franchisee's role is primarily to report any potential issues, while Black Bear Diner manages the legal and strategic response. The franchisee bears the cost of changes to signage or materials if a trademark needs to be updated or discontinued, which is a potential financial risk to consider.