Is Punch King Fitness required to defend the Punch King Fitness Marks in litigation?
Punch_King_Fitness Franchise · 2024 FDDAnswer from 2024 FDD Document
Your use of the Punch King Fitness Marks is limited to use in connection with the operation of your Punch King Fitness Franchised Business as described in the Franchise Agreement and as outlined in the Punch King Fitness Operating Manual. You must promptly notify us of any use of the Punch King Fitness Marks or any colorable variation by any person or legal entity or any litigation instituted by any person or legal entity against you or us involving the Punch King Fitness Marks. We will control any litigation or proceeding. We are not required to defend the Punch King Fitness Marks. If we undertake the defense, prosecution, or
settlement of any litigation relating to the Punch King Fitness Marks, you agree to assist as necessary to carry out such defense, prosecution, or settlement. We retain the right to modify or discontinue the Mark(s). We are not required to indemnify you for expenses or damages if you are a party to an administrative or judicial proceeding involving a trademark licensed by us or if the proceeding is resolved unfavorably. You shall, upon demand by us, modify or discontinue the use of Punch King Fitness Mark(s), at your sole cost and expense, any Mark(s), as directed by us. We are not required to reimburse or compensate you for any modification or discontinuation of the Marks.
Source: Item 13 — TRADEMARKS (FDD pages 38–39)
What This Means (2024 FDD)
According to Punch King Fitness's 2024 Franchise Disclosure Document, Punch King Fitness is not required to defend the Punch King Fitness Marks. However, franchisees must promptly notify Punch King Fitness of any use of the Punch King Fitness Marks or any variation of them by another party, as well as any litigation against the franchisee or Punch King Fitness involving the Marks. Punch King Fitness will control any litigation or proceeding. If Punch King Fitness undertakes the defense, prosecution, or settlement of any litigation relating to the Punch King Fitness Marks, the franchisee must assist as necessary.
This means that while Punch King Fitness retains control over trademark litigation, they are not obligated to take action. This could leave franchisees vulnerable if a third party challenges their right to use the Punch King Fitness Marks. Franchisees are responsible for assisting Punch King Fitness if they choose to defend the marks.
Furthermore, franchisees are responsible for the costs associated with modifying or discontinuing the use of any Punch King Fitness Mark if directed by Punch King Fitness. Punch King Fitness is not required to reimburse or compensate franchisees for any modification or discontinuation of the Marks. This could create a financial burden for franchisees if they are forced to rebrand due to a trademark dispute.
In the event that another party demonstrates a superior right to use the Punch King Fitness Marks, franchisees must discontinue using those marks and adopt any replacement marks selected by Punch King Fitness at their own expense. This highlights the importance of Punch King Fitness conducting thorough trademark searches and due diligence to minimize the risk of such disputes arising.