A federal court will have to consider all the "Pastabilities."
Nashville's The Pasta Shoppe filed a federal trademark infringement lawsuit Friday contending that Noodle Inc., a New York-based competitor, is unfairly using the term "Pastabilities" in violation of an agreement between the two companies.
Consider the linguine-istics.
The Pasta Shoppe has used the slogan "The World Is Full Of Pastabilities" since 1996, having used the mark on its line of "pasta, pasta shells, and pasta salad." In 2010, Noodle Inc. — at the time a restaurant and bakery in Syracuse, N.Y. — sought to expand its operation to sell pasta sauces, pasta, dipping sauces and salad dressings and attempted to register the mark "Pastabilities Daily" to market its retail line.
The Pasta Shoppe filed an objection and, according to the filing, learned that Noodle had registered the website Pastabilities.com but was not using it to sell its product. Before the situation boiled over, the companies came to an agreement by which Noodle could use its version of the pun "so long as Noodle only sell its Pastabilities Daily Products in its Pastabilities restaurants." The Pasta Shoppe, therefore, dropped its complaint with the U.S. Patent and Trademark Office.
In 2012, however, Noodle began selling its Pastabilities line in Wegman's grocery stores, which The Pasta Shoppe alleges is in direct violation of the earlier Al Dente Detente. In 2013, Noodle expanded its sales to its previously registered Pastabilities.com website and via Amazon. The Pasta Shoppe further alleges Noodle has expanded selling its Pastabilities line in other grocery stores and at farmers' markets.
Noodle contests that because its retail line is connected with the restaurants, it is not in violation of the agreement.
The Pasta Shoppe is seeking an injunction and a cancellation of Noodle's registration of "Pastabilities," in addition to damages for breach of contract, misrepresentation, unfair trade practices and violation of the Lanham Act.
POSTDATA: WARRANTY DEEDS