August 19, 2015

trademark-clearanceLast Wednesday, an Italian consortium of Parmigiano-Reggiano cheese producers and traders threatened legal action against the owners of adult video website PornHub. The dispute stems from shoddy trademark clearance work and an adult-oriented commercial featuring the famous cheese’s trademark-protected name.

Why is it important to clear advertising materials for third-party brands?

“The PornHub Premium of Cheeses”

On August 6, PornHub launched an ad campaign to promote its new PornHub Premium service. The campaign includes three short commercials for the new paid subscription model.

One commercial for PornHub Premium shows a couple in the dairy aisle of a grocery store:

  • “Hey, don’t forget to get some cheese,” the woman reminds the man.
  • “Why don’t we get this aged Parmigiano-Reggiano,” he suggests.
  • Laughing, she asks, “When did you become such a foodie?”
  • “They say it’s the PornHub Premium of cheeses,” he replies.

Parmigiano-Reggiano Consortium Cheesed Off by PornHub Ad

The Italian Consorzio Del Formaggio Parmigiano-Reggiano (the “Consortium”) holds 14 separate PARMIGIANO-REGGIANO trademark registrations in the United States for cheese. The phrase literally translates to “from Parma and Reggio,” and the marks are meant to certify cheeses that originate in the Parma-Reggio region of Italy.

In a note to the Italian press last Wednesday, the Consortium took serious offense to the trademark clearance mishap, stating that it “has instructed its lawyers to consider what offenses may have been committed by the American porn site by using the name and prestige of the [Parmigiano-Reggiano] product.” The Consortium demanded that PornHub take down the commercial and called for the “immediate intervention of the Italian and European authorities to protect the image of Parmigiano-Reggiano.”

In true porn fashion, PornHub responded to the trademark clearance mistake by covering the cheese in the commercial with a black “CENSORED” bar and bleeping the Parmigiano-Reggiano name from the ad’s audio. It remains to be seen whether the Consortium will initiate legal action against PornHub, which might include claims under the Lanham Act for trademark infringement, trademark dilution and/or false designation of origin.

Advertisers: Remain Diligent with Trademark Clearance

Marketers invest a great deal of time and revenue to promote their products and services, and trademark clearance disasters, such as the PornHub matter detailed above, can be fatal to an advertising campaign. As early as possible in the creative process, campaign scripts and footage should be carefully vetted by an experienced intellectual property attorney to ensure that third-party brands, both visual and spoken, are properly cleared.

If you are launching an ad campaign, or are involved in a trademark dispute, please e-mail us at info@kleinmoynihan.com or call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.

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Related Blog Posts:

Introduction to Trademark Law

Registering Trademarks for Phrases and Slogans

Klein Moynihan Turco Scores Major Trademark Infringement Win

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