What rights has CTG IP LLC granted regarding the Cilantro Taco Grill trademarks?
Cilantro_Taco_Grill Franchise · 2024 FDDAnswer from 2024 FDD Document
may extend beyond your Territory.
ITEM 13: TRADEMARKS
CTG IP LLC is the owner of the Marks and has granted us the exclusive right to use the Marks and license to others the right to use the Marks in the operation of a Cilantro Taco Grill outlet in accordance with the system. The Franchise Agreement will license to you the right to operate your Cilantro Taco Grill outlet under the following Cilantro Taco Grillservice mark, as well as any additional principal marks that we designate ("Principal Marks"):
| Mark | Filing Number | Filing Date | Registration Number | Registration Date | Register |
|---|---|---|---|---|---|
| 88046940 | 07/20/2018 | 6132986 | 08/25/2020 | Principal |
We expect and intend to work with our affiliate, CTG IP LLC to file all required affidavits with the USPTO for the Principal Marks above, as and when they become due and have filed all required affidavits to date. Presently, there are no agreements in effect that significantly limit our rights to use or license the use of the Principal Marks listed in this Item in a manner material to the franchise – other than our license agreement with CTG IP LLC. Our license agreement with CTG IP LLC ("Licensor") gives us broad rights to use the Marks in connection with the operation of the Cilantro Taco Grill franchise System, and to sublicense to franchisees the right to use the Marks, in strict accordance with our Franchise Agreement. The term of our license agreement is for 5 years, commencing May 23, 2023, and will automatically renew every 5 years. The license agreement will terminate only upon (i) our bankruptcy or (ii) our election to terminate by providing 180 days' prior notice to the Licensor. A termination of the license agreement will have no effect on sublicenses granted to franchisees prior to the date of termination. We are not aware of any infringing use of our primary Principal Marks that could materially affect your use.
You must notify us immediately when you learn about an infringement of or challenge to your use of the Principal Marks or other Marks. Our affiliate and we will take any action we think appropriate and, if you have given us timely notice and are in full compliance with the Franchise Agreement, we will indemnify you for all expenses and damages arising from any claim challenging your authorized use of the Principal Marks or other Marks. Our affiliate and we have the right to control any administrative proceedings or litigation involving the Principal Marks or other Marks licensed by us to you. You must cooperate fully with our affiliate and us in defending and/or settling the litigation.
Source: Item 13 — TRADEMARKS (FDD pages 35–36)
What This Means (2024 FDD)
According to Cilantro Taco Grill's 2024 Franchise Disclosure Document, CTG IP LLC owns the trademarks (referred to as "Marks") associated with the Cilantro Taco Grill system. CTG IP LLC has granted the franchisor the exclusive right to use these Marks and to license them to franchisees for operating a Cilantro Taco Grill outlet, provided it's done in accordance with the established system. The Franchise Agreement includes a license for franchisees to operate under the specified Cilantro Taco Grill service mark and any additional principal marks designated by the franchisor.
The franchisor has a license agreement with CTG IP LLC, the Licensor, which grants them broad rights to use the Marks for the Cilantro Taco Grill franchise system and to sublicense these rights to franchisees, adhering strictly to the Franchise Agreement. This license agreement is for a term of 5 years, commencing on May 23, 2023, and it automatically renews every 5 years. The agreement can only be terminated if the franchisor declares bankruptcy or elects to terminate by providing 180 days' prior notice to CTG IP LLC. Importantly, the termination of this license agreement will not affect any sublicenses already granted to franchisees before the termination date.
The FDD also states that franchisees must immediately notify the franchisor upon learning of any infringement or challenges to the use of the Principal Marks. The franchisor and its affiliate will then take appropriate action. If the franchisee has provided timely notice and is in full compliance with the Franchise Agreement, they will be indemnified for expenses and damages arising from claims challenging their authorized use of the Marks. However, the franchisor reserves the right to substitute different Marks if the current ones can no longer be used or if a substitution is deemed beneficial to the system. In such cases, franchisees may be required to modify or stop using any Mark at their own expense.