If Gold Star's right to use a trademark is challenged, what impact does this have on my franchise?
Gold_Star Franchise · 2025 FDDAnswer from 2025 FDD Document
0,628 | March 5, 1996 | Renewal due March 5, | | | | | 2026. | | | 5,673,572 | February 12, 2019 | Renewal due February | | | | | 12, 2029. | Gold Star is currently in the process of modernizing its trademarks and will be transitioning the System to use the marks in the chart below in the coming months and years. In the United States, Gold Star has filed "intent to use" applications with respect to these trademarks, names, symbols and logos with the United States Patent and Trademark Office, with the intent of ultimately registering them on the principal register. With respect to these marks only, we do not have a federal registration for these marks. Therefore, these marks do not have many legal benefits and
rights as a federally registered trademark. If our right to use these marks are challenged, you may have to change to an alternative trademark, which may increase your expenses.
| Mark | Registration No. | Date Registered | Status | |---|---|---|---| | | 1,338,458 | May 28, 1985 | Renewal due May 29, | | | | | 2029. | | | 1,870,700 | Dec. 27, 1994 | Renewal due June 27, | | | | | 2025. | | GOLD STAR | 1,960,628 | March 5, 1996 | Renewal due March 5, | | | | | 2026. | | GOLD STAR GRILL | 3,099,303 | May 30, 2006 | Renewal due May 30, | | | | | 2026. | | | 3,239,238 | May 08, 2007 | Renewal due May 8, | | | | | 2027. | | | 5,673,572 | February 12, 2019 | Renewal due February | | | | | 12, 2029. | | | 5,808,115 | July 16, 2019 | Affidavit of Use due | | | | | July 16, 2029. | | | 6,364,766 | May 25, 2021 | Affidavit of Use due | | | | | May 25, 2027. | There are no currently effective material determinations of the United States Patent and Trademark Office, trademark trial and appeal board, the trademark administrator of this state or any court, and there are no pending infringement, opposition or cancellation proceedings, nor any pending material litigation, involving the primary trademarks, service marks, names, logos and symbols licensed to, and to be used by, you to identify the Franchise business.
There are no agreements currently in effect that significantly limit the rights of Gold Star to use or license the use of the primary trademarks, service marks, names, logos and symbols licensed to, and to be used by, you to identify the Franchise business, in any manner material to the Franchise.
You must notify Gold Star promptly of any claim, demand or legal action by any third party involving the Marks or any potentially infringing use of the Marks, or any mark, name, logo or symbol identical to or confusingly similar to any of the Marks. Under the Franchise Agreement, Gold Star agrees to take whatever actions it deems reasonably necessary to protect the Marks and the goodwill associated therewith. Gold Star retains the exclusive right, in its sole discretion exercised in good faith, to determine and undertake the actions, if any, that it deems appropriate to prevent the infringement of the Marks or the diminution of the goodwill in the Marks. If a third party brings a legal action against you challenging your right to use the Marks as authorized by the Franchise Agreement, Gold Star may, in its sole discretion, assume your defense utilizing counsel of Gold Star's choice and must indemnify you against all damages for infringement for which you are held liable in that action arising out of your authorized use of the Marks pursuant to and in compliance with the Franchise Agreement, if the following conditions are satisfied: (a) you provide Gold Star with timely notice of the institution of the action, (b) you cooperate fully with Gold Star's counsel in defending against the action and (c) Gold Star retains ultimate control over the strategy involved in defending against and/or resolving the action.
Source: Item 13 — Trademarks (FDD pages 37–40)
What This Means (2025 FDD)
According to the 2025 Gold Star Franchise Disclosure Document, Gold Star has a vested interest in protecting its trademarks, and the franchise agreement outlines specific procedures and responsibilities in the event of a trademark challenge. Gold Star is in the process of modernizing its trademarks and will be transitioning the System to use the marks. With respect to these marks only, Gold Star does not have a federal registration for these marks, therefore, these marks do not have many legal benefits and rights as a federally registered trademark. If Gold Star's right to use these marks are challenged, a franchisee may have to change to an alternative trademark, which may increase expenses.
If a third party brings legal action against a Gold Star franchisee challenging the right to use the Marks, Gold Star may assume the defense, utilizing counsel of its choice. In this case, Gold Star will indemnify the franchisee against all damages for infringement for which the franchisee is held liable in that action arising out of the authorized use of the Marks pursuant to and in compliance with the Franchise Agreement. However, this is conditional on the franchisee providing timely notice of the action, fully cooperating with Gold Star's counsel, and allowing Gold Star to retain ultimate control over the defense strategy. The franchisee must also execute all documents and perform all acts necessary for the defense or prosecution, as determined by Gold Star's counsel.
Gold Star is not responsible for the cost of any independent legal counsel retained by the franchisee in any litigation. Except as specifically outlined, Gold Star will not be liable for any damages, costs, expenses, loss of profits or business opportunities, or incidental or consequential damages related to any action involving the Marks. If the franchisee fails to meet their obligations, Gold Star's obligations and warranties are void, and Gold Star has no liability for costs or damages awarded against the franchisee. The franchisee also agrees not to contest the validity, ownership, or enforceability of any Marks, directly or indirectly.
Furthermore, if Gold Star deems it advisable to modify or discontinue the use of any Marks, or to use additional or substitute marks, the franchisee must comply at their own expense within a reasonable time after receiving written instructions from Gold Star. This could involve changing signage, marketing materials, and other branded items, potentially incurring additional costs for the franchisee.