Overview

Parsons Behle attorneys Brian M. Rothschild, Juliette P. White, and Alexandra Hodson prevailed at trial for firm client MFGPC, Inc. against Mrs. Fields Franchising, LLC, for Mrs. Fields’ breach of a Trademark License Agreement for the exclusive, worldwide right to use the Mrs. Fields trademark in association with the sale of prepackaged popcorn products. (Mrs. Fields Franchising, LLC v. MFGPC, Inc., Case No. 2:15-cv-00094, D. Utah). The dispute resolved six years of litigation, including two interlocutory appeals to the Tenth Circuit, that ensued when Mrs. Fields improperly terminated the Trademark License Agreement and then sued MFGPC for declaratory judgment that it had terminated properly. Mrs. Fields had purported to terminate MFGPC’s rights under the Trademark License Agreement for non-payment of guaranteed royalties. In a ruling dated Aug. 20, 2018, the District Court ruled on summary judgment that (1) Mrs. Fields, not MFGPC, owed a net balance to MFGPC for the sale of popcorn products that more than offset any royalties owed, (2) Mrs. Fields had no contractual ability to terminate the Agreement during a contract period absent MFGPC’s breach, (3) MFGPC was not in breach because it was owed a net balance; and, therefore, (4) Mrs. Fields had breached the Trademark License Agreement by purporting to terminate the Agreement. The Court reserved the issue of damages for a later trial. After a three-day trial in September 2021 that included expert witnesses battling over complex economic damages, the District Court awarded MFGPC damages and attorneys’ fees and costs pursuant to the Agreement.

Team