Trademark Attorney Morris Turek

Morris E. Turek

(314) 749-4059

morris@yourtrademarkattorney.com

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St. Louis Trademark Dispute: Are MANGIA ITALIANO and MANGIA MOBILE Confusingly Similar Trademarks?

I have to thank my girlfriend Karen for bringing this tasty St. Louis trademark dispute to my attention earlier this week.  The plaintiff in the case is a restaurant located in the Tower Grove neighborhood of St. Louis by the name of Mangia Italiano.  According to various local news reports (see here and here), Mangia Italiano has been continuously using the trademark MANGIA ITALIANO in connection with an Italian restaurant for nearly three decades.  Mangia Italiano was actually one of the first restaurants I tried when I moved to St. Louis in 2002 since it was only about a mile from my apartment.  Unfortunately, pretty much everything about it sucked and I’ve never been back since.  I strongly advise you to stick to The Hill district of St. Louis if you want some decent Italian food.  Let me recommend Cunetto House of Pasta and Zia’s.

Now, for those of you who aren’t fluent in Italian, MANGIA ITALIANO literally translates to “Eat Italian.”  So, clearly, MANGIA ITALIANO is a highly descriptive trademark when used in connection with an Italian restaurant.  Such a trademark would not be eligible for federal registration on the Principal Register without a showing that MANGIA ITALIANO has acquired secondary meaning or distinctiveness in the minds of ordinary consumers.  So, being the ever inquisitive trademark attorney that I am, I decided to check out whether Mangia Italiano ever federally registered its MANGIA ITALIANO trademark.  The Trademark Office’s records indicate that Mangia Italiano recently filed a trademark application on March 21, 2011.  However, the Trademark Office is refusing registration of Mangia Italiano’s mark on the basis that (1) it is likely to cause confusion with a 1996 trademark registration for MANGIA for “catering and carry-out restaurant services” and (2) the MANGIA ITALIANO trademark is merely descriptive and has not acquired the requisite secondary meaning for federal registration on the Principal Register.  I note that the federal registration for MANGIA was obtained under Section 2(f), which means that, in the opinion of the Trademark Office, the mark had acquired sufficient distinctiveness entitling it to federal protection.  I also would like to point out that the MANGIA registration is incontestable and not subject to cancellation by Mangia Italiano on the basis of priority and likelihood of confusion.

Well, sometime in 2010, a company by the name of Mangia Mobile started operating a mobile food truck in the St. Louis area.  In reviewing its website, Mangia Mobile appears to offer a variety of Italian food items to its customers from a big red truck with the trademark MANGIA and MANGIA MOBILE prominently displayed.  A cursory search of the Trademark Office’s records did not reveal any pending applications or existing registrations for MANGIA or MANGIA MOBILE owned by Mangia Mobile, which is just as well seeing it would have little chance of federally registering its incredibly descriptive mark.  I mean, Mangia Italiano is having a heck of a time attempting to register its MANGIA ITALIANO mark and it has been in use for 28 years!

Anyway, after some attempts at settlement (including Mangia Mobile’s generous offer to change the name of its food truck to CATHERINE’S MANGIA MOBILE), Mangia Italiano sued Mangia Mobile in St. Louis City Circuit Court alleging trademark infringement and unfair competition.  The lawsuit claims that there has already been actual confusion stemming from Mangia Mobile’s use of its trademark and points to the fact that a local St. Louis publication called Alive Magazine published an article in March 2011 erroneously stating that Mangia Mobile’s food truck was associated with Mangia Italiano.  The lawsuit further describes other instances of actual confusion whereby customers of Mangia Italiano and organizers of a local culinary event questioned whether the Mangia Mobile food truck was affiliated with Mangia Italiano.  If these allegations are true, then I think Mangia Mobile is going to have a tough time successfully defending this case, even taking into account that both MANGIA ITALIANO and MANGIA MOBILE are ridiculously descriptive marks not entitled to a broad spectrum of protection.  I mean, it has been less than a year since Mangia Mobile hit the streets and there are already documented instances of actual confusion.  When it comes to winning a trademark infringement lawsuit, actual consumer confusion is not just the icing on the cake, it’s the whole darn bakery.

So, what do you think about this case?  Will Mangia Mobile be sleeping with the fishes when all is said and done?  Does Mangia Italiano have exclusive rights to the trademark “Mangia” in the St. Louis metropolitan area?  Will Mangia Italiano just have to deal with the consumer confusion as a result of it choosing to operate under a weak and descriptive trademark?  Or, will Mangia Mobile just concede and change its trademark rather than spend an outrageous amount of money on legal fees?  Honestly, I think it would be in Mangia Mobile’s best interest not to be associated with Mangia Italiano and its sub-par food.  Perhaps a change to “Cunetto Truck O’ Pasta” would be something to consider…

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