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Can one register a trademark that has the same phonetic sound of a geographic term?

Cambridge, MA |

I was wondering if one can have a trademark that has the same phonetic sound of a geographic term. I understand that geographic terms are weak trademarks and cannot be registered. However, a company such as "Eataly" has registered its trademark although the trademark has the same phonetic sound of Italy.

Attorney Answers 4


  1. I don't know about "Eataly," but sound-alikes are usually treated as the potentially confusing knockoffs that they are. The question will be whether a customer might reasonably infer, incorrectly, that the product comes from the geographic area. If so, forgetit.

    Better discuss this on its actual facts and in confidence with a TM lawyer.

    Licensed in Maryland with offices in Maryland and Oregon. Information here is general, does not create a lawyer-client relationship, and is not a substitute for consulting with an experienced attorney on the specifics of your situation.


  2. Theoretically, the short answer is 'yes' but it depends on the mark itself, whether it's unique, are there other uses in commerce by someone else, etc. Your best bet is to contact an attorney that handles trademark filings and have that attorney discuss the mark with you, perform a search, and submit the application and use-in-commerce samples to the USPTO.

    This response is not to be considered legal advice by anyone. This communication, alone, does not create an attorney-client privilege. Unless you have executed a fee agreement with the attorney, that is related to the subject matter contained in this communication, you are advised not to rely on this communication to make any decisions whatsoever or to create an attorney-client relationship. No attorney-client relationship shall exist with this attorney without a fee agreement executed by you and the attorney.


  3. I agree with Mr. Marcus.

    I am not certain you are fully understanding how geographic descriptiveness or misdescriptiveness functions in trademark law and you may be confusing two concepts here.

    A mark can certianly be infringing if it is phonetically similar to another (e.g., my new search engine Boogle.com vs Google.com).

    I suggest you discuss your trademark issue in more detail with a lawyer in private and most of us here, including myself, offer a free phone consult.

    As an aside, the last time I was in Eataly, Lidia actually came over to our table and chatted with me. That was really cool and the food was great!

    I will link you to some helpful general info below as well.

    Best regards,
    Frank
    Natoli-Lapin, LLC
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  4. I agree with my colleagues. I will add a few points that may be helpful: Phonetic equivalents are generally indexed under the standard spelling. (For example, "kwic" and "quick" will come up under a search for quick.) The phonetic equivalents will be considered in the analysis of confusingly similiar marks. The answer depends on how distinctive the phonetically equivalent mark is overall. There are many factors used in this analysis. Sound is one of them, but there are many others.