Who owns the trademarks described in Item 13 for Ella Cafe franchises?
Ella_Cafe Franchise · 2024 FDDAnswer from 2024 FDD Document
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:
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. 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.
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.
Source: Item 13 — TRADEMARKS (FDD pages 35–38)
What This Means (2024 FDD)
According to Ella Cafe's 2024 Franchise Disclosure Document, the trademarks described in Item 13 are owned by Cool Coffee Holdings, LLC, which is an affiliate of Ella Cafe. Cool Coffee Holdings, LLC, a Delaware corporation, has registered these marks on the Principal Register of 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 materially misuses the trademarks and fails to correct the misuse, or if Ella Cafe discontinues commercial use of the trademarks for over a year.
The Intercompany License Agreement ensures that even if the agreement is terminated, the franchisee's rights will remain unaffected. This arrangement provides a level of security for franchisees, as their right to use the trademarks is protected even if the licensing agreement between Ella Cafe and its affiliate changes.
It is important to note that Cool Coffee does not have federal registration for all listed marks, which could mean those trademarks do not have the same legal protections as federally registered trademarks. If the right to use these marks is challenged, franchisees may have to switch to alternative trademarks, potentially increasing their expenses.