Who owns the principal trademarks licensed to Chocolate Fish Coffee franchisees?
Chocolate_Fish_Coffee Franchise · 2024 FDDAnswer from 2024 FDD Document
[Item 13: TRADEMARKS]
Item 13 TRADEMARKS
Principal Trademark
The following are the principal trademarks that we license to you. This trademarks are owned by our Affiliate, Nzus, Corp. They are registered on the Principal Register of the United States Patent and Trademark Office.
[Item 13: TRADEMARKS]
| Trademark | Registration Date | Registration Number |
|---|---|---|
| 4/28/2020 | 6042416 | |
| Chocolate Fish Coffee Roasters | 4/28/2020 | 6042407 |
[Item 13: TRADEMARKS]
Nzus, Corp, our affiliate, owns the trademarks described in this Item. Under an Intercompany License Agreement between us and Nzus, Corp, we have been granted the exclusive right to sublicense the trademarks to franchisees throughout the United States. The agreement is of perpetual duration. It may be modified only by mutual consent of the parties. It may be canceled by our affiliate only if (1) we materially misuse the trademarks and fail to correct the misuse, or (2) we discontinue commercial use of the trademarks for a continuous period of more than one year. The Intercompany License Agreement specifies that if it is ever terminated, your franchise rights will remain unaffected.
We protect your right to use the principal trademarks listed in this Item, and we protect you against claims of infringement or unfair competition arising out of your use of the trademarks, to the extent described in this section.
The franchise agreement obligates you to notify us of the use of, or claims of rights to, a trademark identical to or confusingly similar to a trademark licensed to you. The franchise agreement does not require us to take affirmative action when notified of these uses or claims. We have the right to control any administrative proceedings or litigation involving a trademark licensed by us to you.
If you use our trademarks in accordance with the franchise agreement, then (i) we will defend you (at our expense) against any legal action by a third-party alleging infringement by your use of the trademark, and (ii) we will indemnify you for expenses and damages if the legal action is resolved unfavorably to you.
[Item 13: TRADEMARKS]
Under the franchise agreement, we may require you to modify or discontinue using a trademark, at your expense.
Superior Prior Rights and Infringing Uses
We do not know of either superior prior rights or infringing uses that could materially affect your use of the principal trademarks.
Source: Item 13 — TRADEMARKS (FDD pages 29–31)
What This Means (2024 FDD)
According to Chocolate Fish Coffee's 2024 Franchise Disclosure Document, the principal trademarks licensed to franchisees are owned by Nzus, Corp, an affiliate of Chocolate Fish Coffee. These trademarks are registered on the Principal Register of the United States Patent and Trademark Office. Chocolate Fish Coffee has been granted the exclusive right to sublicense these trademarks to franchisees throughout the United States through an Intercompany License Agreement with Nzus, Corp. This agreement is of perpetual duration and can only be modified by mutual consent of both parties.
The Intercompany License Agreement can be canceled by Nzus, Corp if Chocolate Fish Coffee materially misuses the trademarks and fails to correct the misuse, or if Chocolate Fish Coffee discontinues commercial use of the trademarks for a continuous period of more than one year. However, the agreement specifies that even if it is terminated, a franchisee's rights will remain unaffected. Chocolate Fish Coffee is obligated to protect a franchisee's right to use the principal trademarks and defend against claims of infringement or unfair competition arising from their use.
Chocolate Fish Coffee will defend a franchisee (at its own expense) against any legal action by a third party alleging trademark infringement, provided the franchisee uses the trademarks in accordance with the franchise agreement. Furthermore, Chocolate Fish Coffee will indemnify the franchisee for expenses and damages if the legal action is resolved unfavorably to the franchisee. The franchise agreement also obligates franchisees to notify Chocolate Fish Coffee of any use of, or claims to, a trademark that is identical or confusingly similar to a trademark licensed to them, although Chocolate Fish Coffee is not required to take affirmative action upon notification. Chocolate Fish Coffee retains the right to control any administrative proceedings or litigation involving a licensed trademark.
Two trademarks are listed in the FDD: "Chocolate Fish Coffee Roasters" and an unnamed trademark. Both were registered on 4/28/2020. The registration numbers are 6042407 and 6042416, respectively. Chocolate Fish Coffee may require franchisees to modify or discontinue using a trademark at the franchisee's expense. Chocolate Fish Coffee states that it is unaware of any superior prior rights or infringing uses that could materially affect a franchisee's use of the principal trademarks.