By Ray Steele | WIBC.com
Last week, Little Eataly announced that it would give up it’s fight to keep that name on its food truck. In August 2013, the truck’s owners, Rob and Chae Carmack, got a letter saying they had infringed on the trademark of Eataly, a restaurant and market with locations in Europe and the U.S. Eataly’s stores in New York and Chicago are co-owned by chef Mario Batali, the former Food Network star who is currently on the cast of ABC’s talk show The Chew.
However, it is the Eataly corporation based in Italy, and not Batali or his company that threatened legal action against the Carmacks. Rob Carmack had never heard of Eataly when he and his wife started the food truck just before the Super Bowl in Indy more than two years ago. “I did an initial trademark search when we opened the truck, and I only did a search for ‘Little Eataly.’ Nothing came up because, of course, Little Eataly was not trademarked,” Carmack said. “And I saw that Facebook Little Eataly and Twitter Little Eataly were both available, so I didn’t give it a second thought. Everyone loved the name.”
However, ‘Eataly’ has been trademarked since 2003 according to attorney Duane Byers of Arlington, Virginia, who handles Eataly’s affairs in the U.S. “They’ve got several registrations for Eataly, and they also have a pending application that has Eataly in it along with some other terms,” said Byers, adding that Eataly sought the trademark anticipating an expansion to the U.S. from Europe long before it took place.
Eataly opened its New York location in 2010 and it’s Chicago market last year. The Carmacks considered taking their chances on going to court. Rob Carmack says he was told by an attorney that the U.S. Trademark office frowns on registering plays on phrases – such as Little Eataly’s play on the Little Italy neighborhoods that are part of many major cities. Byers suggested they would have lost. “You can’t just add a term to someone else’s trademark. You can’t just add the word ‘little’, ‘big’, ‘blue’, ‘yellow’, and then claim there’s no trademark infringement.”
In the end, the Carmacks decided they couldn’t afford the lawyer’s fees that come with a drawn-out fight without going out of business. They will shut down the truck while changing the name, as well as changing the names on all their social media. But Carmack says though it will cost them almost everything, they will be back.