Does Buff City Soap have an affirmative duty to protect a franchisee's right to use the Marks?
Buff_City_Soap Franchise · 2025 FDDAnswer from 2025 FDD Document
We have no affirmative duty to protect your right to use the Marks but intend to take appropriate actions if the need arises. You must notify us immediately of any apparent infringement or challenge to its use of any Mark or other intellectual property, or of any claim by any person of any rights in any Mark or other intellectual property and will not communicate with any person other than us and our attorneys, and your attorneys, in connection with any such infringement, challenge or claim. We have the sole right and option to take such action as we deem appropriate and the right to control exclusively any litigation arising out of any such infringement, challenge or claim or otherwise relating to any Mark or other intellectual property, including the taking of such legal steps as may be available to us under applicable law to prevent infringement of the rights granted under the Franchise Agreement. You will sign any and all instruments and documents, render such assistance and do such acts and things as, in the opinion of our attorneys, may be necessary or advisable to protect and maintain our interests in the Marks or other intellectual property.
We do not have any obligation to take any affirmative action, participate in your defense, or indemnify you for expenses or damages if you become a party to an administrative or judicial proceeding involving a Mark we license to you or if the proceeding is resolved unfavorably to you. We may, at any time, at our sole option, require you to use any additional or alternative Marks or other intellectual property. If we deem it advisable to modify or discontinue the use of any Mark or other intellectual property and/or use one or more additional, alternative or substitute trade or service marks, you will comply with our directions within a reasonable time after receiving notice from us. You will be responsible for all costs and expenses relating to the modification or discontinuance of the use of any Mark, other intellectual property and/or the use of one or more additional, alternative or substitute trade or service marks. You do not have any rights under the franchise agreement if we require you to modify or discontinue using a trademark.
Source: Item 13 — TRADEMARKS (FDD pages 46–48)
What This Means (2025 FDD)
According to the 2025 Buff City Soap Franchise Disclosure Document, Buff City Soap does not have an affirmative duty to protect a franchisee's right to use the Marks. However, Buff City Soap states that it intends to take appropriate actions if the need arises. If there is any apparent infringement or challenge to the use of any Mark or other intellectual property, the franchisee must notify Buff City Soap immediately. The franchisee must not communicate with anyone other than Buff City Soap, their attorneys, and the franchisee's attorneys regarding the infringement, challenge, or claim. Buff City Soap has the sole right to take action it deems appropriate and the right to control any litigation arising out of any infringement, challenge, or claim relating to any Mark or other intellectual property. The franchisee must sign any documents and provide assistance to protect and maintain Buff City Soap's interests in the Marks or other intellectual property.
Buff City Soap is not obligated to take any affirmative action, participate in the franchisee's defense, or indemnify the franchisee for expenses or damages if the franchisee becomes a party to an administrative or judicial proceeding involving a Mark licensed to them or if the proceeding is resolved unfavorably to the franchisee. Buff City Soap may require the franchisee to use additional or alternative Marks or other intellectual property at any time. If Buff City Soap deems it advisable to modify or discontinue the use of any Mark or other intellectual property, the franchisee must comply with Buff City Soap's directions within a reasonable time after receiving notice. The franchisee is responsible for all costs and expenses relating to the modification or discontinuance of the use of any Mark, other intellectual property, or the use of additional, alternative, or substitute trade or service marks. The franchisee does not have any rights under the franchise agreement if Buff City Soap requires them to modify or discontinue using a trademark.
This arrangement is typical in franchising, where the franchisor retains control over the brand's trademarks and legal defense. While Buff City Soap does not have an affirmative duty to protect the Marks, they do retain the right to take action if they deem it necessary. This protects the overall brand and its reputation, which benefits all franchisees. However, it also means that franchisees have limited control over the defense of the Marks and must rely on Buff City Soap to take appropriate action. Franchisees bear the costs associated with changes to the marks.
Prospective franchisees should consider the implications of this arrangement and ensure they are comfortable with Buff City Soap's level of control over the Marks. It is important to understand the potential costs associated with modifying or discontinuing the use of any Mark and to assess the risk of becoming involved in an administrative or judicial proceeding involving a Mark. Franchisees should also evaluate Buff City Soap's history of protecting its trademarks and its willingness to take action against infringers.