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By Blake Brittain
March 4 — Ina Garten, the celebrity chef also known as the “Barefoot Contessa,” received a temporary restraining order from the U.S. District Court for the Southern District of New York Feb. 26 against a frozen food company that sold “Contessa Chef Inspired” frozen dinners using Garten's trade dress following the end of their licensing agreement.
The court ruled that the temporary injunction was justified because Garten's trade dress was likely inherently distinctive, there was a likelihood of confusion as to the source of the frozen dinners, and there was a likelihood of irreparable harm from the confusion.
Garten is “well known in the world of food and cooking for, among other things, an Emmy-winning TV show on the Food Network, several bestselling cookbooks, and several lines of high-end food products,” the court said.
Following PTO litigation in 2008, Garten's company, Barefoot Contessa Pantry LLC, entered into a licensing agreement with Contessa Premium, a food producer that owned the “Contessa” mark in connection with certain frozen foods. The agreement allowed Contessa Premium to use the “Barefoot Contessa” mark on a line of frozen dinners.
The agreement continued until Contessa Premium assigned its assets to O.F.I. Imports, Inc. (an affiliate of defendant Aqua Star) because of financial difficulties in April 2014. Garten cancelled the license and declined to sign a new agreement with OFI because, she said, the company lacked experience manufacturing frozen dinners.
The parties instead signed an agreement allowing OFI to sell existing Barefoot Contessa frozen dinners manufactured before the termination of the license until October 2014, when OFI would be required to destroy the remaining frozen dinners.
Garten sued for trademark infringement and filed for a temporary restraining order after seeing Barefoot Contessa frozen dinners at supermarkets alongside “Contessa Chef Inspired” frozen dinners manufactured by OFI with “virtually identical packaging” to the Barefoot Contessa dinners.
The court ruled that Garten had satisfied both requirements for a temporary injunction: a likelihood of irreparable injury and a likelihood of success on the merits.
After finding preliminarily that Garten likely owned the trade dress, the court said success on the merits was also likely because there was ample evidence of a likelihood of confusion and irreparable harm.
First, the court said that there may be a presumption of a likelihood of confusion because, “Many courts in this Circuit have held that ‘[w]hen an ex-licensee continues to use a mark after its license expires, likelihood of confusion is established as a matter of law.' ”
But even if the presumption did not apply, the court determined there was a likelihood of confusion “given—among other things—the striking similarities between the packaging of the Barefoot Contessa and ‘Contessa Chef Inspired' frozen meals; the relative lack of sophistication of consumers purchasing ordinary grocery store items; and the evidence of actual consumer confusion submitted by Plaintiffs.”
The court also found irreparable harm likely based on the substantial risk that Garten's brand would be tarnished by the likelihood of confusion.
Judge Jesse M. Furman authored the decision.
Barefoot Contessa was represented by attorneys from Paul Weiss Rifkind Wharton & Garrison LLP, New York. Aqua Star was represented by attorneys from Akin Gump Strauss Hauer & Feld LLP, New York.
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