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Martin A Mansfield Jr.

Martin Mansfield’s Answers

170 total


  • Trademark Question: Should I disclaim it?

    Martin’s Answer

    If the only issue is that you need a disclaimer, the trademark examiner will permit you to do that after reviewing your mark. This will be the case even if an initial refusal is issued. If there is an initial refusal, the examiner will put all of the issues in that refusal, and you will have an opportunity to respond to all of them.

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  • My franchisor selectively enforces rules based on their favorite locations. Could this be grounds for terminating our agreement?

    Martin’s Answer

    The first issue is if the franchise agreement you signed does or does not contain a clause permitting termination by the franchisee based on franchisor default or other franchisor action. Some franchise agreements do have such a clause, and some do not. If yours does, then you have to follow the procedure in that clause in order to get to termination. If yours does not, then the issue is to determine when the laws of the applicable state permit a party to a contract to terminate that contract based upon action or inaction of the other party. Most franchise agreements specify the state in which the franchisor is located as the state whose laws are used to interpret the franchise agreement. But, in some cases, the laws of another state might be found to apply.

    In any event, whether you are acting individually, or in concert with other franchisees, you will need representation by an experienced franchise attorney to guide your decision making process. If you are to succeed, each step you take must be the correct step at the correct time.

    Also, you have to be careful about soliciting other franchisees to join you in action against a franchisor without first obtaining legal representation to guide you in that process. In some cases, done incorrectly, such activities could give the franchisor grounds to assert that you are in breach of the franchise agreement.

    As to the issue you state in your question, namely selective treatment by the franchisor of different franchisees, the franchise attorney would have to interview you and other relevant parties as to the facts of the situation and also review your franchise agreement and other documentation. In addition, consultation of the laws of the applicable state would have to be done. In short, your particular question cannot be answered here, because the answer can be either way depending on certain circumstances, and the answer under a given set of circumstances can vary from state to state.

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  • What are current franchisees allowed to request out of the franchisor?

    Martin’s Answer

    The answers to your first and third questions will be found in your franchise agreement, which will govern what, if anything, the franchisor has to do in those situations. If the franchise agreement does not require the franchisor to do either of these things, then it does not have to do so.

    The answer to your second question will depend in part on if the buyer of the franchise is required to sign a new franchise agreement. If so, then the amount of the initial fee will be shown in the FDD for that new franchise agreement. Also, presumably the franchisor will give you this information if requested at the appropriate time. If, on the other hand, the buyer is to assume or be assigned the existing franchise agreement, then the amount can be requested of the franchisor and verified in the then-current FDD, if the franchisor has one, because the then-current FDD is required to state the then-current initial franchise fee.

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  • Ended my contract with my franchisor, have a 2 yr non compete, Can my son open his own competing business?

    Martin’s Answer

    The provision is not as well drafted for the franchisor as it could be. The language focuses on you or another owner of the franchise having at least an indirect interest in the competing business. The language concerning a member of the immediate family also says "or otherwise". This implies if you have an indirect interest through a friend who lives across town, that is still a violation of the non-compete. So if you have absolutely no interest or involvement in the business and if your son got all his ideas for the business on his own or from others not involved in the franchise, and if he runs the business using methods of his own, a judge or arbitrator might interpret the language of the non-compete to allow the business so long as you have no interest of any kind in the business. In other words, the language does not focus directly on third parties or family members independenly of the language pertaining to you and other owners.

    There are surrounding issues to consider. For example: What is your son's independent professional experience regarding this type of business. What is the core business of the franchise and is it inherently generic (such as hamburgers) or not. Where is your son's location relative to your franchised location. What other provisions of the franchise agreement and ancillary agreements might bear on the case. How financially strong is the franchisor. How well-know or obscure is the franchisor.

    Assuming you are in Colorado, the focus of inquiry is on the trade secrets of the franchisor and are they being violated in some way.

    Please note also that the non-compete itself is geographically limited so your son would not violate it outside the geographic limits. However, the franchise agreement probably has confidentiality provisions (to protect the franchisor trade secrets) that are not geographically limited.

    As a practical matter, your job would be to convince the judge or arbitrator that you have nothing to do with the business. In the end, it does not matter who the third party is who runs the business or even if the franchise agreement mentions them. If it looks like you are involved in trying to circumvent the legitimate protections the franchise agreement provides the franchisor and its trade secrets you are likely to lose the case.

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  • If my company start up name is similar to another company, can I add a word to my start up to differentiate?

    Martin’s Answer

    You are in a very risky position if you take action without legal advice, especially since your question demonstrates you don't understand how this type of situation is evaluated from the legal standpoint.

    You might have a workaround. But everything depends on the specific facts of the situation. If you get some inexpensive attorney advice on your exact situation, you can at least put your mind at rest even if the answer is negative.

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  • Can you customize brand products and re-sell them?

    Martin’s Answer

    As a practical matter you don't want to get into a trademark dispute with the owners of the trademarks you mention or other truly famous marks. Such disputes can be quite risky and expensive to deal with for someone in your situation. You might want to consider approaching the rights management people at these companies to find out their policies and if there is a way to do more or less what you propose with their approval.

    Alternatively, you might want to consider offering consumers who own such products the service of putting custom embroidery on their shirts, etc. for their own use. This way you aren't selling the product itself and the ownership of the product stays the same before and after you put on the embroidery.

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  • How can I get the business that has a forced arbitration clause in a contract I signed to actually start arbitration?

    Martin’s Answer

    • Selected as best answer

    You'll need to spend about an hour with an attorney to assemble the relevant parties, transaction details, and amount in question, and then analyze the scenario in terms of the arbitration clause and perhaps other clauses in the contract such as those on where the arbitration is to be held. Your options can then be determined and an attorney opinion can be given. Given the amount in controversy, you might find that arbitration (or litigation if applicable) will cost more than what you could collect, with you having to risk if you will be awarded and be able to collect your costs and fees if awarded. In any event, to "force" some action will require you to take some kind of legal action in arbitration or court.

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  • Can a companies trademark on the word "Push" hurt my business "Push Marketing"?

    Martin’s Answer

    If you look at their registration entry at http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4808:2hvwdi.2.76, you will see that they claim use in a large number of marketing areas. Assuming they are actually using their mark in areas similar to yours, then you might have to comply. Their "push" trademark has been registered since 2007, so unless their is fraud in their uspto filings, their mark is almost certainly valid. Before adopting a business name, you should at least do a trademark search at the uspto to see if their are obvious problems such as what you encountered. In your situation, the first thing you need to do is get an attorney to advise you if you have a leg to stand on.

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  • Can I get a trademark for this term?

    Martin’s Answer

    You have a borderline situation. The marks are similar and both involve hair. But is the market for vitamins sufficiently distinct from that for hair extensions so as to avoid confusion? Hard to say. One examiner might say yes, another no. There are over 300 entries resulting from a search for cupid, so there may be other cupid marks to watch out for. What if there is one for vitamins? So a quality search would be a good idea before launching this product. If you could substitute another word for "hair" you might be better off as regards the specific mark you found. Professional guidance by a trademark attorney would be worth the money if you place any value on your potential business. You don't want to get up and running and get hit with a cease and desist. By the way, just because the examiner might pass your mark doesn't mean the other trademark owner can't take action against you, win or lose.

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  • Trademark name is LIVE can we continue to trademark?

    Martin’s Answer

    To explore this further on the USPTO website, redo your name search. If the other mark is the only one found, it will be displayed. Otherwise a listing of marks generated by the search will be shown. If the listing is shown, there are two colums at the left side of the listing grid. One says SERIAL NUMBER and the other REG[istration] NUMBER. If only the SN column has an entry for the mark that concerns you then the mark, whatever its current status, is not registered. If the RN column has a number then the mark, whatever its current status, is or was registered on either the Principal or Supplemental Register. The grid also has a "CHECK STATUS" column. If TDSR is shown for your mark, click on it and a Status Page will be shown that will state the current status of the mark. You can also click on the DOCUMENTS tab for (usually) a list of documents that usually can be viewed for further information. Returning to the first of the two basic search scenarios, where only a single mark is shown, you will see a TDSR tab at the far left just above the displayed mark. Click that to go to the Status Page. The Status Page and Documents should show you the history of the mark and relevant documents. These should tell you what you need to know about that mark as far as the USPTO is concerned. The question for you is if you feel confident in your own abilities to evaluate not ony the USPTO situation but the overall situation as to your rights to use and trademark the name and logo or if you could use experienced legal assistance. Generally, a situation like this that has many intricacies would benefit from assistance of legal counse.

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