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Food brands: avoid getting burned

The image rights of celebrity chefs and the trademark issues involved in launching a food-themed reality TV show were among the topics considered at a panel discussion during INTA's Annual Meeting yesterday.

At the Industry Breakout: Food Explosion session, speakers outlined some of the legal issues that can arise where food and trademarks intersect.

Nicolette Hudson, Intellectual Property Counsel at Express, said restaurant owners should give careful consideration to whether they want a reality TV show to be named after their restaurant. "We all hope the show is going to be a success, but if it's not then it could tarnish the goodwill that the restaurant owner has already created," she said.

The restaurant owner would typically retain the right to use the name on his existing restaurants. But Hudson said he should also consider whether his future plans for the brand, such as opening up additional locations, would be compromised by allowing the show to be named after his business. For example, would the network want to have a say in any third-party arrangements he enters into?

One solution, suggested Hudson, is that the restaurant owner could retain the right to use the name in the restaurant industry but license it to the show for other uses. But she said there could be further complications if the celebrity behaves in a way which the network perceives as being damaging to the brand.

"What's decided at the end of the day depends on how much weight the celebrity is bringing to the table," she said.

Monique Cheng Joe, Vice President, Trademark Counsel at NBCUniversal Media, said networks should consider how they might want to expand the brand. "In many cases, merchandising will not be considered within the natural zone of expansion for a TV series, so you need to get clearance for all the merchandise," she said.

Trademark lawyers should try to identify potential conflicts that may arise over trademark and image rights from the outset, said Julia Spoor Gard, a Partner at Barnes & Thornburg.

"If the celebrity puts out a cookbook, can he use the show's logo? If the show puts out a cookbook, can it include the celebrity's bio?" she asked. "What if the contestants become really big and start using a tagline? Who owns the rights to a tagline?"

The question of who is responsible for enforcing the brand's trademark rights online also needs to be considered at an early stage, she said.

Before sending a cease-and-desist letter, brand owners need to determine whether they have prior rights and how the public might perceive any enforcement efforts.

In cases where the infringer is an individual or small business, Gard said it is often better to avoid "the old style chest-thumping" and take a less aggressive approach.

"I tell my clients that every letter you send out, you need to be prepared for it to be posted on the Internet and used to mock and ridicule you," she said. However, this does not mean that brand owners have to avoid enforcement altogether in a David v. Goliath situation.

"If you search the web for 'Jack Daniels trademark letter,' you can see an example where the trademark owner managed to enforce its rights and come out looking like a hero," she said.

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