Under the Fly Fitness Franchise Agreement, what right is licensed to the franchisee regarding trademarks?
Fly_Fitness Franchise · 2024 FDDAnswer from 2024 FDD Document
Fitness products or services through Alternate Distribution Channels.
ITEM 13: TRADEMARKS
Fly | A Fitness Revolution, LLC, or its successor, ("Licensor") 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 Fly Fitness outlet in accordance with the System. The Franchise Agreement will license to you the right to operate your Franchised Business under the Fly Fitness trademarks, for which Licensor has filed for registration on the Principal Register of the United States Patent and Trademark Office, as described below ("Principal Marks"):
| Mark | Registration Number | Registration Date | Register | |---|---|---|---| | FLY METHOD | 5968947 | January 21, 2020 | Principal | | WINGS OUT | 5800478 | July 9. 2019 | Principal | Licensor has applied for registration of the following Mark on the Principal Register of the USPTO:
| Mark | Serial Number | Filing Date | Register | |---|---|---|---| | FLY FITNESS | 97289129 | March 1, 2022 | Principal | 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.
Source: Item 13 — TRADEMARKS (FDD pages 31–32)
What This Means (2024 FDD)
According to Fly Fitness's 2024 Franchise Disclosure Document, franchisees are granted the right to operate their franchised business under the Fly Fitness trademarks. These trademarks, for which the Licensor has filed for registration with the United States Patent and Trademark Office, are referred to as "Principal Marks."
Specifically, Fly Fitness has filed for registration of the FLY FITNESS mark (Serial Number 97289129) on the Principal Register of the USPTO with a filing date of March 1, 2022. The FDD also lists the marks FLY METHOD (Registration Number 5968947, Registration Date January 21, 2020) and WINGS OUT (Registration Number 5800478, Registration Date July 9, 2019) which are registered on the Principal Register.
It is important to note that while Fly Fitness licenses the use of its trademarks, the franchisor retains 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. In such cases, franchisees may be required to modify or stop using any mark, including the Principal Marks, at their own expense, or to use one or more additional or substitute marks. Franchisees are also prohibited from contesting the Licensor's or Fly Fitness's right to the Principal Marks or other trademarks.