Ex-Licensee Allegedly Infringing on Barefoot Contessa Mark

Ina Garten, the chef who hosts Food Network’s “Barefoot Contessa,” and her company have filed a lawsuit against a seafood producer for allegedly infringing the Barefoot Contessa mark with its line of “Contessa Chef Inspired” frozen dinners. Barefoot Contessa Pantry LLC v. Aqua Star (USA) Co., No. 15-1092 (S.D.N.Y., filed February 17, 2015).

Barefoot Contessa, the company that owns the trademarked name, agreed in 2012 to license the mark to unrelated entity Contessa Premium, a frozen- dinner manufacturer, on the condition that Garten and the company had strict control over the quality of the dinners produced and marketed under the Barefoot Contessa name. In April 2014, Contessa Premium sold its assets to OFI Imports, Inc. and its parent company, Aqua Star, according to the complaint. The day after the sale, Barefoot Contessa apparently terminated the license and refused to grant OFI a new license, “given OFI’s lack of experience in the frozen food business beyond seafood.” Barefoot Contessa allowed the company to sell its existing stock of products bearing the trademark, the complaint says, but forbid use of the mark on newly manufactured products. Barefoot Contessa alleges that OFI has continued to use the mark on frozen dinners produced after the license expired and has also manufactured dinners in packaging “virtually identical” to the trade dress of the previous product with a few small changes, including (i) changing “Barefoot Contessa” to “Contessa Chef Inspired,” (ii) replacing the photo of Garten with a photo of another brunette woman and (iii) replacing Garten’s signature (“Ina”) with “’Enjoy,’ written in the same font and style.”

Barefoot Contessa asserts 12 causes of action, including trademark and trade dress infringement, unfair competition and right of publicity. Garten and the company seek an injunction, destruction of the allegedly infringing products, compensatory and punitive damages, and attorney’s fees.

Issue 556