Are there any agreements that limit Burros Fries' right to sublicense the Marks to franchisees?
Burros_Fries Franchise · 2024 FDDAnswer from 2024 FDD Document
There are no agreements that limit our right to sublicense you the Marks.
Under the Franchise Agreement, we grant you the nonexclusive right to use the Marks in connection with the operation of your Franchise. Our principal trademark is "Burros & Fries" and the logos as they appear on the first page of this Disclosure Document. We have the right to use and to license others to use the Marks, including sublicensing it to you, and under any other trade name, trademarks, service marks and logos currently used or that may hereafter be used in the operation of the Business. You must use the Marks only for the operation of your Franchise and in the manner authorized by us.
All your usage of the Marks granted under the Franchise Agreement is nonexclusive, and we retain the right, among others: (a) to use the Marks in connection with selling of products and services; (b) to grant other licenses for the Marks, in addition to those licenses already granted to existing franchisees; (c) to develop and establish other systems using the same or similar Marks, or any other proprietary marks, and to grant licenses or franchises in those systems without providing any rights to you as described in Item 12.
Our principal trademarks have been filed with the United States Patent and Trademark Office (referred to as "USPTO"), and became effective as follows: "BURROS & FRIESEST. 2009 X X", was registered on April 30, 2019, bearing the registration number 5738890 owned by Ruiz Fernando, licensed to us and sublicensed to you; the service mark "X X BURROS & FRIES EST. 2009" bearing the registration numbers 7284698 and 7284696 respectively, both registered on January 23, 2024, licensed to us and sublicensed to you; the service mark and logo "BURROS & FRIES X X EST. 2009" was registered on January 23, 2024, bearing the registration number 7284697, licensed to us and sublicensed to you; the service mark "BURROS & FRIES" filed with the Supplemental United States Patent and Trademark Office, registered on July 10, 2012 bearing the registration number 4173239, owned by Ruiz Fernando, licensed to us and sublicensed to you. We also claim common law rights in our trademarks based on our prior use. The trademark "BURROS & FRIES" is pending registration on the Principal Register of the United States Patent and Trademark Office (referred to as "USPTO") bearing the serial number 97718321 dated December 14, 2022, owned by us and sublicensed to you. The service mark "BURROS & FRIES X X B&F EST. 2009" is pending registration on the Principal Register of the United States Patent and Trademark Office (referred to as "USPTO") bearing the serial number 97718323 also dated December 14, 2022, owned by us and sublicensed to you. We do not have a federal registration for some of our trademarks. Therefore, some of our trademarks do not have many of the legal benefits and rights as federally registered trademarks. If our right to use any of our Marks is successfully challenged, you may have to change to an alternative trademark, which may increase your expenses.
Source: Item 13 — TRADEMARKS (FDD pages 40–42)
What This Means (2024 FDD)
According to Burros Fries' 2024 Franchise Disclosure Document, there are no agreements that limit their right to sublicense the Marks to franchisees. Burros Fries grants franchisees the nonexclusive right to use the Marks in connection with the operation of their franchise. The principal trademark is "Burros & Fries" along with the logos displayed in the FDD. Burros Fries retains the right to use and license others to use the Marks, including sublicensing it to franchisees, under any other trade name, trademarks, service marks, and logos currently used or that may be used in the operation of the Business. Franchisees must use the Marks only for the operation of their franchise and in the manner authorized by Burros Fries.
Burros Fries also states that all usage of the Marks granted under the Franchise Agreement is nonexclusive, and they retain the right to use the Marks in connection with selling products and services, grant other licenses for the Marks, and develop and establish other systems using the same or similar Marks. This means that Burros Fries can license the trademarks to others, even those that may be similar to the franchisee's business, without providing any rights to the franchisee as described in Item 12. All usage of the Marks and any goodwill established by the franchisee are to Burros Fries' exclusive benefit, and the franchisee retains no rights in the Marks upon termination or expiration of the Franchise Agreement.
Several trademarks associated with Burros Fries have been registered with the United States Patent and Trademark Office (USPTO). For example, "BURROS & FRIESEST. 2009 X X" was registered on April 30, 2019, with registration number 5738890. Additionally, the service mark "X X BURROS & FRIES EST. 2009" was registered on January 23, 2024, with registration numbers 7284698 and 7284696. The service mark and logo "BURROS & FRIES X X EST. 2009" was registered on the same date with registration number 7284697. The service mark "BURROS & FRIES" was registered on July 10, 2012, with registration number 4173239. However, the trademark "BURROS & FRIES" is pending registration with serial number 97718321 dated December 14, 2022, as is the service mark "BURROS & FRIES X X B&F EST. 2009" with serial number 97718323, also dated December 14, 2022. Burros Fries also claims common law rights in their trademarks based on prior use. Because some trademarks do not have federal registration, they may not have the same legal benefits as federally registered trademarks. If the right to use any of the Marks is successfully challenged, franchisees may have to change to an alternative trademark, which may increase their expenses.