Hooters of America, the Georgia-based restaurant chain, have sued a local escort service for dilution and tarnishment of their famous trademarks and trade dress over a help-wanted advertisement. What might appear as a clear case of the tarnishing of a brand may be a reminder for counsel that aggressive enforcement is sometimes necessary.

Late last year a photograph showing five young ladies wearing Hooters t-shirts appeared under the heading ‘NOW HIRING HOOTERS GIRLS $100 AN HOUR’. The ad was posted by Nikki Swafford, owner of Nikki’s Escort Service. Unsurprisingly an attorney for the restaurant chain wrote a cease-and-desist letter to Swafford which stated that the use of the term ‘Hooters Girls’ in conjunction with the picture showing the official Hooters uniforms strongly implied an association between the company and the escort service. This unauthorised use could not only lead to confusion, but damage the brand and reputation of the chain. When Swafford failed to comply proceedings were issued by Hooters.

In an article entitled, A Hooters Girl By Any Other Name?, Paul Tanck, partner at Chadbourne & Parck, argues that while he can understand the restaurant chain wanting to protect their name, he believes they are over-reaching. “She’s not competing with Hooters. She’s not trying to do anything other than hire Hooters girls and I think that properly falls within nominative fair use.” The doctrine of nominative fair use originated in the case of Volkswagenwerk Aktiengesellschaft v Church, where the car giant brought a claim against a repair center which stated in its advertisements that it repaired such vehicles. The repair center argued, and won, that it could not state it repaired Volkswagen cars without using the Volkswagen trademark.

However, the nominative fair use defense will only go so far if the escort service is using the Hooters’ logo. It is one thing to state as a factual matter that you are searching for women escorts who previously have worked at Hooters, but when you use the logo and the distinctive orange t-shirts, you are using more than is necessary to communicate the fact. Hooters have accomplished two things with this lawsuit: they have stopped an improper use of its trademark and gained publicity about how they enforce their intellectual property. They have made it clear that they will not tolerate the tarnishment of their brand’s image by negative association. It is the latter point that some IP owners have forgotten is the hidden value in the aggressive protection of a brand.

Brands have been forced to tread a fine line with the protection of their marks lest they fall prey to accusations of being a trademark bully. Starbucks have recently learnt this the hard way – whether it be deciding how to deal with parody stores, or suing mom-and-pop stores and independent coffee vendors – they have come under fire from the public. It is possible – and perhaps somewhat ironic – that the ‘the politest cease and desist letter ever’ produced by Jack Daniels has skewed the issue. But then sometimes not all publicity is bad. This is, after all, a pretty good story.