Who has the sole discretion to control any litigation involving the Burros Fries Marks?
Burros_Fries Franchise · 2024 FDDAnswer from 2024 FDD Document
o the Marks, or any mark similar thereto.
You must notify us immediately in writing of any apparent infringement of or challenge to your use of any Marks, or claim by any person of any rights in any Mark or any similar trade name, trademark or service mark of which you become aware. We have the sole discretion to take such action as we deem appropriate and the right to exclusively control any litigation, USPTO proceeding (if applicable) or other administrative proceeding.
We are not obligated by the Franchise Agreement to protect any rights granted to you to use the Marks or protect you against claims of infringement or unfair competition with respect to them. The Franchise Agreement does not require that we participate in your defense or indemnify you for expenses or damages if you are a party to a judicial or administrative proceeding involving one of the Marks or if the proceeding gets resolved unfavorably to you. Although we are not contractually obligated to protect the Marks or your right to use them, as a matter of corporate policy, we intend to defend the Marks vigorously (Franchise Agreement Section 15.B).
You may not, without our written consent, in our sole discretion, commence or prosecute, or seek leave to intervene in, any litigation or other proceeding, including any arbitration proceeding, in which you purport to enforce any right or recover any element of damage arising from the use or infringement of any of the Marks or unfair competition.
Source: Item 13 — TRADEMARKS (FDD pages 40–42)
What This Means (2024 FDD)
According to the 2024 Burros Fries Franchise Disclosure Document, Burros Fries retains sole discretion over any litigation involving its trademarks. Specifically, if a franchisee becomes aware of any infringement or challenge to the use of the Burros Fries marks, they must notify Burros Fries immediately. Burros Fries then has the right to take whatever action it deems appropriate, including exclusively controlling any litigation, USPTO proceeding, or other administrative proceeding.
This means that as a Burros Fries franchisee, you cannot independently pursue legal action to protect the brand's trademarks, even if you believe your business is being directly harmed by infringement. Burros Fries maintains complete control over how and whether to respond to any potential trademark issues. This is a fairly common arrangement in franchising, as it allows the franchisor to maintain brand consistency and manage legal risks across the entire system.
However, the FDD also states that Burros Fries is not obligated by the Franchise Agreement to protect the franchisee’s right to use the marks or protect them against claims of infringement or unfair competition. While Burros Fries intends to defend the marks vigorously as a matter of corporate policy, this intention is not a contractual obligation. Furthermore, the franchisee cannot, without written consent from Burros Fries, commence or prosecute any litigation or other proceeding to enforce any right arising from the use or infringement of any of the Marks or unfair competition.
This arrangement carries some risk for franchisees. If Burros Fries chooses not to pursue litigation, a franchisee may have limited recourse against trademark infringers. Prospective franchisees should carefully consider this provision and discuss with Burros Fries what factors would influence their decision to pursue or not pursue legal action in the event of trademark infringement.