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Bottom line: The Board dismissed the opposition finding that the marks at issue are not confusingly similar nor likely to cause confusion.

Power Up Co., Ltd. applied for a word mark EATALIA designating restaurant services, against which Eataly Srl and Eataly Distribuzione Srl jointly filed an opposition citing their prior mark EATALY registered in Classes 35, 41 and 43 (restaurant services).  The opposition was based on relative grounds, confusing similarity to earlier registered mark (Section 4-1-11), confusing similarity to unregistered well-known mark (Section 4-1-10), and likelihood of confusion with well-known mark (Section 4-1-15).

The Board reviewed the cases and found as follows:

1. As to Section 4-1-11:

The Board noted that the opposed mark EATALIA is a fancy word having no particular meaning and will be pronounced [i:-ta-li-a], whereas the cited mark EATALY is also a fancy word having no particular meaning and pronounced [i:-ta-li:].

The Board moved on to compare the marks in their appearance, sound and meaning and found as follows:

- Despite the common beginning EATAL-, the marks are visually distinguishable with the suffix -IA and -Y.
- The sound of the marks also differ in the last vowel, [a] and [i:].  The vowel [a] is clear and articulate whereas the prolonged sound of [i:] tends to be absorbed by the precedent [li], and the overall tone of the words are different.
- Both marks are fancy words without any particular meaning, and thus not comparable semantically.
- Accordingly, the opposed mark is not similar to the cited mark in terms of appearance, sound and connotation.

2. As to Section 4-1-10 and 4-1-15:

The Board went through all the evidences submitted by the Opponents and noted that the Opponents’ local affiliate, Eataly Japan K.K. uses the mark EATALY in its website and provides restaurant information.  The Board, however, noted that the name of restaurants or cafes are, for example, RESTORANTINI, BAR, or IL MARIN.  Further, the Opponents operate 10 restaurants in Japan, which cannot be said many among others.  The evidences submitted by the Opponents are not sufficient for the Board to recognize that the cited mark is well-known in Japan for restaurant services or ingredients stores for Italian cooking.

Further, as found above, the opposed mark is not similar to the cited mark.

Accordingly, the Board found that there is no likelihood of confusion between the opposed mark and the cited mark.

And so the Board dismissed the opposition.