June 27, 2022

Volume XII, Number 178

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June 27, 2022

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June 24, 2022

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When in Rome, Try the Pizza!

Today is Friday, and as usual, pizza is on my mind. Also, National Pizza Day just passed on February 9. In honor of this widely loved food, we report on a recent trademark dispute involving trademarks ROMA PIZZA and ROMA.

ROMA is a registered trademark of Bernatello’s Pizza, Inc., for frozen pizza. Timothy Bammann sought registration of ROMA PIZZA for restaurant services. Bernatello argued that because Bammann offers services from only one restaurant in Michigan, that use is insufficient to show the required “use in commerce”, i.e., interstate commerce. Intrastate use can qualify as “use in commerce” if it is of the type that has a direct effect on interstate commerce. The Board dismissed Bernatello’s argument, however, and found that the offering of services at one location is not determinative of use in interstate commerce.

Interestingly the Board found that while the marks were similar, confusion was unlikely due to the conceptual weakness of the mark ROMA, evocative of Rome, Italy. In fact, the Board in rendering the marks distinguishable even stated that “while the term PIZZA may be given less weight, it may not be ignored.” This opinion serves as a reminder that just as varied styles of pizza are not equally delicious, not all trademarks are created equal. So take care in the selection process and aim for the strongest marks, those that are arbitrary or fanciful. 

©2022 Norris McLaughlin P.A., All Rights ReservedNational Law Review, Volume XII, Number 49
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About this Author

Danielle M. DeFilippis Intellectual Property Attorney Norris McLaughlin New York, NY
Member

Danielle M. DeFilippis, Co-Chair of the firm’s Intellectual Property Law Practice Group, focuses her practice on intellectual property matters and litigation. She appears on behalf of individual and corporate clients in all phases of litigation from commencement through trial.  Danielle regularly serves as lead counsel in cases before federal and state courts, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office, and alternative resolution forums.

Danielle has represented clients in a variety of industries, most notably, food and beverage, liquor, jewelry,...

917-369-8841
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