AboutFranchise Attorney Franchise Expert MBA - Kevin B. Murphy - Mr. Franchise & Former Franchise Owner Expertise Franchise Attorney, MBA Franchise Expert, author and instructor with 2-plus decades of franchise industry experience, including ownership of a successful franchise. I answer all business format franchise questions, how to franchise a business, issues about ongoing franchise relationships, buying a franchise, evaluating franchise investments, franchising vs. licensing (franchise vs. license), franchise disputes, franchise operations manuals, franchise expert advice in franchise lawsuits and franchise litigation, franchise agreements, franchise disclosure documents FDD and intellectual property. I don't answer questions about franchises in the automotive and petroleum industries. I have drafted, reviewed and negotiated over 500 franchise disclosure documents, advised hundreds of franchise buyers and franchise companies as well as started and operated a franchise from scratch - a background not duplicated by any other franchise expert. My in-the-trenches franchise ownership and resale experiences gave me valuable insights to share with potential franchise buyers and existing as well as emerging franchise companies.
Experience Known in the industry as Mr. Franchise, I have owned, operated and sold a very successful franchise in the home improvement industry. I help individuals and companies enter and prosper in the franchise industry, have drafted, reviewed and negotiated over 500 FDD's (Franchise Disclosure Documents) and have experience filing franchise registrations in all franchise registration states such as California, Illinois, New York, etc.
Publications Author of over 40 franchise articles, including four books on franchising and one book on trade secrets.
Avoiding Legal Pitfalls In Franchise Marketing
2009, Franchise Foundations Press
Franchise Sales Control
2009, Franchise Foundations Press
Also authored foreword and edited various chapters of the following book:
The Franchise Handbook: A Complete Guide to All Aspects of Buying, Selling or Investing in a Franchise
2006, Atlantic Publishing Company
Education/Credentials
B.S. Business Administration (Finance), University of San Francisco,
Juris Doctorate (J.D.) of Law, University of San Francisco School of Law,
Active member of the State Bar of California
Master of Business Administration (M.B.A.) - International Business, San Francisco State University,
Approved Provider of MCLE by the State Bar of California, 1993 to present
Teaching franchise, licensing and intellectual property courses to attorneys
Awards and Honors Selected as the premier U.S. franchise expert by the World Intellectual Property Organization (WIPO), an agency of the United Nations, in Geneva, Switzerland to speak at Singapore’s World Conference about franchising in Asian countries and developing uniform franchise regulations based on the U.S. franchise laws and regulatory model, September, 2007, hosted jointly by WIPO and the Intellectual Property Office of Singapore (IPOS).
Snapshot of Recent Franchise Expert Litigation Cases:
Nagrampa v. MailCoups Inc. and The American Arbitration Association - United States Court of Appeals for the Ninth Circuit (Argued and Submitted En Banc). Summary: provided franchise expert strategy and consulting in a case that established new franchise law by invalidating the standard arbitration provision in a California franchise agreement on the grounds it was unconscionable.
Swansons Cleaners, et al. (Superior Court jury trial). Summary: provided franchise expert consulting that re-focused the legal issues and discovered new causes of action. Testified at deposition and trial for a franchisee in its claims against the franchise company. Result: jury verdict in favor of the franchisee for $1.6 million in punitive damages and $634,000 in contract, etc. damages.
Question Hello,
I am a small business owner, actually a SAHM who works from her home doing craft items. Recently I started making what I call a "candy bouquet". I recently recieved a call from a local business owner who owns a business called "Candy Bouquet". The owner was upset as she stated that my product was a violation of the franchise law and that she had paid a hefty fee to have her business name. She wanted to file legal papers against me. I was upset and horrified, I simply did not mean to step on any toes nor did I intend to hurt other local businesses (I was trying to make some extra income for summer trips.) so I told her I would immediately stop selling my product. My question, however, is, do I need to stop selling all together (my product is totally different in looks from hers - I have pictures if this helps) or do I just need to change my terminology (possibly call my arrangments, candy arrangements or candy assortments)? I can't understand how legally you can have two florists in the same town but not too creators of candy arrangments? So I'm wondering if my use of the term "candy bouquet" was my demise? Thanks.
This is actually a trademark issue, not a franchise one. The answer depends on what trademark rights the business owner has to the mark Candy Bouquet.
Unless she has (or is licensed by the franchise to use) a federally registered trademark for Candy Bouquet granted by the U.S. Patent and Trademark Office (which has the R inside a circle next to the mark) and gives national rights in each and every state in the U.S. as of the date of registration, she very likely has little to complain about.
If your use of Candy Bouquet was before hers, then you have what are called superior prior rights, regardless of the type of protection she has. This is a very good position to be in.
If she only has a state registration, or even less - just common law trademark rights (usually use see TM next to the mark asserting common law rights) - then she only has rights as of when she started using the Candy Bouquet mark. AND these rights only cover her immediate geographic trading area. The trading area may be tricky to define - it could be a couple blocks for example, around her business. If your business is outside this area OR you were using the Candy Bouquet mark before her, you are in a good position here as well.
ACTION REQUIRED: Ask to see any trademark registrations that support her position. Again, it's not a franchise law question at all so don't call a franchise attorney or a franchise expert. Instead it is a trademark law question, so contact a trademark attorney. Or get in touch with me (I'm a franchise attorney but I also know a bit about trademark law) through the franchise attorney link below.
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