What are the legal limitations of the Fly Fitness 'FLY FITNESS' mark due to the lack of federal registration?
Fly_Fitness Franchise · 2024 FDDAnswer from 2024 FDD Document
With regards to the FLY FITNESS mark, we do not have a federal registration. Therefore, our FLY FITNESS mark does not have many legal benefits and rights as a federally registered trademark. If our right to use any of these trademarks is challenged, you may have to change to an alternative trademark, which may increase your expenses.
You must notify us immediately when you learn about an infringement of or challenge to your use of the Principal Marks or other trademarks. Licensor 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 trademarks. Licensor and we have the right to control any administrative proceedings or litigation involving the Principal Marks or other trademarkslicensed by us to you. You must cooperate fully with Licensor and us in defending and/or settling the litigation.
We reserve the right to substitute different Marks if we can no longer use the current Mark, or if we determine that substitution of different Marks will be beneficial to the System. In such event, we may require you, at your expense, to modify or stop using any Mark, including the Principal Marks, or to use one or more additional or substitute Marks.
Source: Item 13 — TRADEMARKS (FDD pages 31–32)
What This Means (2024 FDD)
According to Fly Fitness's 2024 Franchise Disclosure Document, the 'FLY FITNESS' mark does not have a federal registration, which limits its legal benefits and rights compared to a federally registered trademark. While Fly Fitness has filed for registration of the FLY FITNESS mark with serial number 97289129 on March 1, 2022, it is not yet registered. Other marks like 'FLY METHOD' and 'WINGS OUT' are registered on the Principal Register.
This lack of federal registration for the 'FLY FITNESS' mark means that Fly Fitness has less legal protection against potential infringers. If another business starts using a similar name or logo, Fly Fitness may have a more difficult time legally challenging them. For a franchisee, this could mean that the brand's recognition and reputation in their territory are more vulnerable to dilution by competitors.
Furthermore, if the right to use the 'FLY FITNESS' trademark is challenged, franchisees may be required to switch to an alternative trademark, potentially increasing their expenses. However, Fly Fitness states that if a franchisee provides timely notice of any infringement or challenge and is in full compliance with the Franchise Agreement, Fly Fitness will indemnify them for all expenses and damages arising from the claim. Fly Fitness also reserves the right to substitute different marks if they can no longer use the current mark or if they determine that a substitution would benefit the system, and may require franchisees to modify or stop using any mark at the franchisee's expense.