INTA 2013: the challenges of a TV cooking show brand
Trademark attorneys at the International Trademark Association (INTA) annual meeting in Dallas learned how to build and protect a TV cooking show brand, an “area where there are no rights or wrongs”.
With the explosion of TV cooking shows – sometimes led by celebrities – there are increasing trademark opportunities and challenges for both hosts and TV networks, as well as their lawyers.
The first task when building a brand is clearing the title of a TV series, which can be trademarked, said Monique Cheng Joe, senior trademark counsel at NBCUniversal.
Cheng Joe said once trademark protection is secured, there are a number of questions worth asking (and answering) at the outset, from who owns the IP rights to whether the chef can release a cookbook using the broadcaster’s trademarks.
“These are just some branding issues we have to deal with,” she said.
Posing more questions about trademark rights, Nicolette Hudson, IP counsel at postal delivery company Express (but who has advised chefs launching TV programmes), said “this is an area where there are no rights or wrongs”.
When discussing queries such as who controls the portfolio, Hudson said, trademark attorneys must ensure that senior figures from both sides are involved when clearing a trademark.
“Make sure everyone is on the same page, and maybe remind them periodically,” she said, adding that TV networks may be more restrictive over non-celebrities using their trademarks, because they are providing a platform for someone who hasn’t built a reputation.
When the TV brand begins developing and there are plans to diversify, there are further IP considerations, according to Cheng Joe.
“If the show is a hit series and you want to sell merchandise, you need to do merchandise clearance, which is evaluated against typical trademark factors.”
She added: “If you want to open a restaurant using the TV show’s name, usually this would not be considered as related to the original name. And if someone has the mark, what do you do now? They were first to file and, say they’re opening their restaurant in six weeks, it is too late for cancellation proceedings. Ask whether it’s a permanent or a pop up restaurant. You need to be aware of all these factors.”
Julia Spoor, partner at Gard, Barnes & Thornburg LLP, then walked the audience through enforcing the brand, a process beginning with cease and desist letters.
“Before you fire off letters, think of the tone you’re using,” she said. “Also think about what to do if your letter is ignored.”
Spoor said one of the best ways of tackling infringement is going directly to social media providers, if the alleged infringer is using social media, which can remove user names quickly. “Use social media a lot,” she said.
