Who owns the registered trademarks for Ella Cafe?
Ella_Cafe Franchise · 2024 FDDAnswer from 2024 FDD Document
the services.
ITEM 13 TRADEMARKS
Principal Trademark
Our affiliate Cool Coffee Holdings, LLC ("Cool Coffee"), a Delaware corporation, owns the following Marks which are registered on the on the Principal Register of the U.S. Patent and Trademark Office ("USPTO") and all required affidavits have been filed:
| Trademark | Registration Date | Registration Number | International Class |
|---|---|---|---|
| December 12, | 5353656 | 043 | |
| 2017 | |||
| July 11, 2023 | 7106828 | 021 |
Cool Coffee has applied to register the following trademarks on the Principal Register of the USPTO:
| Trademark | Application Date | Serial Number | International Class |
|---|---|---|---|
| ELLA | June 06, 2022 | 97444517 | 043 |
| ELLA COFFEE HOUSE | June 06, 2022 | 97444527 | 043 |
Cool Coffee, does not have a federal registration for the marks listed in the second chart above. Therefore, these trademarks do not have many legal benefits and rights as a federally registered trademark. If our right to use the marks in the second chart are challenged, you may have to change to alternative trademarks, which may increase your expense.
Determinations
There are no currently effective material determinations of the United States Patent and Trademark Office, the Trademark Trial and Appeal Board, or any state trademark administrator or court. Other than as stated below there are no pending infringement, opposition, or cancellation proceedings.
Opposition
There is currently an opposition pending with the Trademark Trial and Appeal Board. We dispute the validity of this opposition and find the filing has no merit. We will respond timely in defense of our position. Other than as disclosed, there is no pending material federal or state court litigation regarding our use or ownership rights in a trademark.
We do not know of either superior prior rights or infringing uses that could materially affect your use of the principal trademarks.
Agreements
Cool Coffee, our affiliate, owns the trademarks described in this Item. Under an Intercompany License Agreement between us and Cool Coffee, 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.
Source: Item 13 — TRADEMARKS (FDD pages 35–38)
What This Means (2024 FDD)
According to Ella Cafe's 2024 Franchise Disclosure Document, the registered trademarks are owned by Cool Coffee Holdings, LLC, which is identified as an affiliate of Ella Cafe. Cool Coffee Holdings, LLC, a Delaware corporation, owns the marks registered with the U.S. Patent and Trademark Office. Ella Cafe has been granted the exclusive right to sublicense these trademarks to franchisees throughout the United States through an Intercompany License Agreement with Cool Coffee. This agreement is perpetual and can only be modified by mutual consent. Cool Coffee can only cancel the agreement if Ella Cafe misuses the trademarks and fails to correct the misuse, or if Ella Cafe discontinues commercial use of the trademarks for over a year. However, the agreement specifies that termination will not affect the franchisee's rights.
While Cool Coffee Holdings, LLC owns the primary registered trademarks, Ella Cafe also uses other trademarks for which federal registration is not held. These include "ELLA" and "ELLA COFFEE HOUSE". The FDD indicates that because these trademarks lack federal registration, they do not have the same legal protections. If Ella Cafe's right to use these marks is challenged, franchisees may be required to switch to alternative trademarks, potentially increasing their expenses.
Ella Cafe is not obligated to protect a franchisee's right to use the trademarks or defend against infringement claims, but may do so at its discretion for the principal trademarks. Franchisees must notify Ella Cafe of any trademark infringements or challenges and follow Ella Cafe's instructions on trademark usage, including using the appropriate symbols (®, ™, or SM). Franchisees cannot use the trademarks in their corporate name or on the Internet without express written permission. Ella Cafe retains the right to substitute different trademarks if the current ones become unusable or if a substitution benefits the system, and franchisees must comply with any changes at their own expense.