Intellectual Property Law

Turf Holdings Sues Former Franchisee Over Continued Use of Trade Dress

By Michael Atkins

Franchise relationships are governed by contract.

Depending on the franchisor’s agreement with the franchisee, there are certain things a franchisee must do with regard to the franchisor’s trademarks once the franchise relationship is terminated.

Franchisor Turf Holdings, Inc., recently filed suit in the Western District against Vanderburg Corp., one of its former franchisees.

The complaint alleges that Vanderburg failed to remove Turf Holding’s trademarks pursuant to the parties’ franchise agreement, which also amounted to trademark and trade dress infringement. Turf Holdings separately moved for a preliminary injunction.

The complaint states: “Defendants refused to de-identify their business within three days as required by Section 9.2 of the Franchise Agreement, and have failed to do so to date. Specifically, Defendants failed to completely remove the ‘Weed Man’ mark from the door of their business and failed to change th vehicles’ distinctive green and yellow color scheme and tank configuration. Upon information and belief, the ‘Weed Man’ mark has not been completely removed from the vehicles, as typically the outline of the mark can still be seen after removal of the decal containing the mark unless the vehicles are re-painted, which Defendants have not done.”

Vanderburg has not yet filed its answer.

The case cite is Turf Holdings, Inc. v. Vanderburg Corp., No. 10-0477 (W.D. Wash.).

Full post as published by Seattle Trademark Lawyer on April 07, 2010 (boomark / email).