Avoiding Trademark Trouble in Advertising

table tent advertisingThen the New England Patriots and New York Giants faced off in last year’s Super Bowl, it marked the biggest event of the NFL season. But for pizza purveyors, it wasn’t just a big sports day: American appetites for football and food make Super Bowl Sunday a major moneymaker.

Nearly 50 million Americans ordered takeout during the Giants-Patriots Super Bowl; 60 percent of those orders were for pizza, and another 22 percent were for chicken wings. For restaurant owners, it makes sense to market to customers already thinking about calling in for some Super Bowl pizza and wings, right? Not so fast, says Shelly Paioff, an advertising and intellectual property attorney with the New York-based firm Frankfurt Kurnit Klein & Selz PC.

“Official sponsors pay big money to be able to use the names of trademarked events like ‘Super Bowl,’ ” Paioff says. In legal circles, associating your name (or your company’s name) with events or teams without paying sponsorship fees is called ambush marketing. And for official sponsors, as well as trademark owners, it’s a big deal. “When people who haven’t paid for sponsorships begin to use those terms, it leads to erosion of the value of the sponsorship.”

That’s right — the term “Super Bowl” isn’t free to use. For that matter, neither is “March Madness,” “Olympics” or “World Series.” Don’t think about using a professional team name in your advertising either, Paioff says. “Some restaurants may do a ‘congratulations’ ad with their team’s name, thinking that’s okay,” she explains. “But it’s still using the name without permission, and if a trademark owner really wanted to, they could take legal action.”

In the real world, of course, some restaurants use ambush marketing without legal repercussions. While that can be frustrating for competitors who respect sponsorships and copyrights, those businesses are really rolling the legal dice, says Roberta Jacobs-Meadway, partner and intellectual property attorney at the Eckert Seamans law firm in Philadelphia. “The practical issue is whether it is worth the promotional benefit to risk a cease and desist letter or other claim by the rights owner for the event,” Jacobs- Meadway says. “Some rights holders are more aggressive than others.”

One way to navigate the legal minefield is to be less direct about using the event tie-ins. If you want to advertise with the Super Bowl in mind, for example, you could use the term “big game” or “championship,” explains Paioff. “While it is still risky, it’s less risky than directly referencing the event by name.”

Sometimes you can even find trademark trouble where you would never expect it. “Restaurants selling hoagies…have received cease and desist letters from the holder of the SUBWAY marks for using ‘footlong’ to identify sandwiches that are about a foot long, as opposed to six inches,” Jacobs-Meadway says. Awareness of terms, slogans and phrases that other businesses use and promote heavily can help restaurant owners avoid these problems, but “the better practice may be to be aware of what terms are being heavily promoted and to do at least a search of the U.S. Trademark Office database,” she explains.

Of course, trademarks aren’t the only copyright concerns restaurant owners need to keep in mind when developing advertising: music and photography copyright claims are not uncommon. “Simply because a photo or a sound clip is readily available on the Internet does not mean that it is available for use,” Jacobs-Meadway says.

Just going online and picking a photo off a Web site cannot get anyone in legal hot water, but when you’re planning to use it for advertising and other commercial purposes, getting sued can mean a major money hit. Stock photo sites that allow you to download use licenses for a nominal fee, such as i stockphoto.com, are a good option in situations where restaurant owners can’t generate their own art or photography. The images aren’t free, but they’re a whole lot cheaper than a copyright lawsuit, Paioff says. Her one caveat: “If there are people in the images, make sure you get image releases from the stock photo sites.”

If the worst does happen and you wind up in legal trouble thanks to intellectual property disputes, the first thing you should do is take down or otherwise cease the advertising in question. “When you’re in legal trouble, of course, seek your lawyer’s advice,” Paioff says. “But in the meantime, remove the offending advertising.” If you do end up in court, the quick action may help your case… and sometimes just discontinuing use of the trademark or logo may be enough to satisfy the copyright holder. The best idea, however, is to tread carefully in copyright and trademark territory in the first place.

Advertising Safely… Not Blandly

When restaurant owners are looking to make sporting and other big-name events translate into sales, they don’t need to piggyback official terms and logos for effective, targeted ads, says Chais Meyer, a Kearney, Nebraska-based business consultant.

“It’s smarter to advertise to individuals and fans on an emotional level,” Meyer says. So instead of just naming the event, think about the characteristics of the people who are going to be interested in the event. “Once you know the real reasons a sports fan would want to watch a sporting event, the name (of the event) really isn’t important at all.”

Meyer uses the example of “March Madness.” Instead of using that term, which official sponsors pay to use, restaurants might try a different, more personal approach. His suggestion: “March is almost here and basketball lovers of all kinds will be meeting at (restaurant name) every weeknight from now until the end of the month. Feast on great beer and pizza combos for under $10 during the entire month of March! Basketball lovers unite!”

Basketball fans who might have been looking for somewhere to watch games will immediately understand what the ad is referring to, he says. And because the ad creates a sense of community, it can be even more appealing without the well-known term, giving potential customers the sense the marketer “gets” them and their motivations and interests. “Focus on the ‘why we do what we do,’ ” Meyer says. Doing so will help you hone the perfect recipe for spicing up seasonal ads without walking a legal tightrope.

Alyson McNutt English is an award winning freelance writer specializing in home, health, family, and green topics. She is based in Huntsville, Alabama.