Utah gelato maker ‘Sweetaly’ says California shop is using its name illegally

(Rick Egan | Tribune file photo) Francesco Amendola holds freshly made lemon sorbet at his Sweetaly gelato shop on 3300 South on June 3, 2016.

A Utah gelato maker is suing the owners of a California dessert company for trademark infringement and unfair competition.

The bitter dispute involves the name “Sweetaly."

Francesco Amendola established trademark rights in the Sweetaly Gelato name in 2014, according to the federal lawsuit, the year he first opened his Italian ice cream business in Utah.

Amendola operates a commercial kitchen and retail shop at 465 E. 3300 South as well as a second store at 1527 S. 1500 East. In addition to making gelato in more than two dozen regular and seasonal flavors, the native of Calabria, Italy, sells cakes and pastries.

The owners of Sweetaly Dolceria “knew or should have known," the suit states, that the Utah business had rights to the name when it opened its business in February of 2016.

Located in Oceanside, Calif., the dessert company was founded by four men from Rome, who have been friends since the eighth grade. According to the company website, it makes prepackaged Italian desserts — tiramisu, panna cotta, mousse and cheesecakes — sold in retail shops and online.

On several occasions, customers searching online for Sweetaly Gelato came across the packaged California products, Amendola said in a telephone interview. “They confused them with us."

Amendola’s lawyers sent a cease-and-desist letter to Dolce USA — Sweetaly Dolceria’s parent company — in March 2019, asking the company to stop using the Sweetaly name. So far, the lawsuit states, the company has refused.

“We’ve had several conversations with them,” Amendola added, “but they did not want to back down. That is why we ended up in this situation.”

Telephone messages for this story to Sweetaly Dolceria’s California office were not returned.

Sweetaly Dolceria’s use of the name, the lawsuit states, has the potential to damage Sweetaly Gelato’s ability to expand to other states, something Amendola intends to do in the future.

The lawsuit also seeks damages for loss of business reputation and profits.

“We pride ourselves on making a great product,” he said. “We don’t know if this other company holds the same values and standards. And it could ruin our brand.”

Sweetaly Gelato is not the first Utah food business to run into trademark issues.

Seattle’s well-known Queen Mary tea company, in 2015, sued the owners of The Queens’ Tea, a Salt Lake City company, for “willful trademark infringement."

And the owner of RubySnap cookies was forced to change the original name of her cookie dough business in 2010, after a cease-and-desist letter from General Mills.