Who has the right to exclusively control any litigation or USPTO proceeding arising out of any infringement, challenge, or claim concerning any of the Cicis Marks?
Cicis Franchise · 2025 FDDAnswer from 2025 FDD Document
You must immediately notify us of any infringement of the Marks or of any challenge to the use of any of the Marks or claim by any person of any rights in any of the Marks. You and your Controlling Principals must agree not to communicate with any person other than us and our counsel about any such infringement, challenge or claim. We have sole discretion to take any action we deem appropriate and the right to exclusively control any litigation or USPTO (or other) proceeding arising out of any infringement, challenge, or claim concerning any of the Marks. You must execute all instruments and documents and give us any assistance that in our counsel's opinion may be necessary or advisable to protect and maintain our interests in any such litigation or proceeding or to otherwise protect and maintain our interest in the Marks.
You may not use any of the Marks as part of your corporate or other legal name. You must also follow our instructions for identifying yourself as a franchisee and for filing and maintaining the requisite trade name or fictitious name registrations. You must execute any documents we or our counsel determine are necessary to obtain protection for the Marks or to maintain their continued validity and enforceability. Neither you nor your Controlling Principals may take any action that would prejudice or interfere with the validity of our rights in the Marks. You may not contest the validity of our interest in the Marks or assist anyone else to do so.
Source: Item 13 — TRADEMARKS (FDD pages 41–42)
What This Means (2025 FDD)
According to Cicis's 2025 Franchise Disclosure Document, Cicis retains sole discretion to take action it deems appropriate regarding any infringement, challenge, or claim concerning its trademarks. Specifically, Cicis has the exclusive right to control any litigation or USPTO (United States Patent and Trademark Office) proceeding arising from such issues. This means that if someone infringes on the Cicis trademarks, or if there's a challenge to the use of the trademarks, Cicis, not the franchisee, decides how to handle the legal matters.
This arrangement has significant implications for a prospective Cicis franchisee. While franchisees are required to notify Cicis immediately of any potential trademark issues and must not communicate with anyone other than Cicis and its counsel about such matters, they do not have the authority to independently pursue legal action to protect the brand's trademarks. Instead, they must rely on Cicis to take appropriate action.
Furthermore, franchisees are obligated to assist Cicis in any litigation or proceeding by executing necessary documents and providing assistance as required by Cicis's counsel. This ensures that Cicis can effectively protect and maintain its interests in the trademarks. Franchisees also cannot take any actions that could harm the validity of Cicis's rights in the trademarks or contest the validity of Cicis's interest in the marks.
While Cicis will indemnify franchisees against damages they are held liable for in any proceeding resulting from their use of the Marks, this is conditional on the franchisee's full compliance with the terms of the Franchise Agreement. Outside of this indemnity, Cicis is not obligated to protect the franchisee's rights to use the Marks or protect them against claims of infringement or unfair competition.