SDNY Adopts Concurrent Use Order for "Heart Attack" Themed Food Marks

Heart Attack Grill is apparently a chain of "medically themed" restaurants with only one restaurant currently open in Las Vegas.  The Grill's menu includes four burgers, "the Single Bypass Burger," "the Double Bypass Burger," "the Triple Bypass Burger," and "the Quadruple Bypass Burger."  The Grill has obtained trademark registrations for its restaurant name and its burger names.  The court's description of the largest of the Grill's burgers--the Quadruple Bypass Burger--gives you the flavor of the joint:  it weighs in "at 8,000 calories, consists of four half-pound beef patties, eight slices of American cheese, a whole tomato and half an onion served in a bun coated with lard."  The court also noted that, "[a]s of this writing," one of the Grill's customers had suffered a heart attack while eating at the restaurant.

The Second Avenue Deli is a kosher deli with two locations in Manhattan.  Since 2004, the Deli offered "the Instant Heart Attack Sandwich" and proposed to add "the Triple Bypass Sandwich" to its menu.  The Instant Heart Attack Sandwich consists of two large potato pancakes filled with a choice of corned beef, pastrami, turkey, or salami.  The proposed Triple Bypass Sandwich would also use potato pancakes but would include three, rather than two, layers of the pancakes.  The Deli attempted to obtain trademark registrations for both sandwich names but the PTO preliminarily denied both applications because of a likelihood of confusion with Heart Attack Grill's marks.

 After the Heart Attack Grill sent the Second Avenue Deli a cease-and-desist letter, the Deli filed a declaratory judgment action seeking a declaration that (1) neither of its marks infringed the Grill's marks and that both could therefore be registered; or (2) if the court found a likelihood of confusion, that the Deli may use the Instant Heart Attack Sandwich mark in New York, New Jersey, and Connecticut to the exclusion of the Grill's mark as the Deli's use was senior to the Grill's registration of its Heart Attack Grill mark.

The Heart Attack Grill counterclaimed for dilution (which was later dismissed) and a declaration that (1) the Deli could not register its marks or expand use of its marks; or (2) the parties may use their marks under conditions set by the court.

Following "extensive" discovery, both parties moved for summary judgment.

As to the Deli's Instant Heart Attack Sandwich mark and the Grill's Heart Attack Grill mark, the parties represented that there was no likelihood of confusion with the Deli's current use of the mark on menus at its two Manhattan locations and on the Deli's website menu.

Despite the parties' representation, the court made its own assessment of the likelihood of confusion between the marks and ultimately reached the same conclusion as the parties.  In particular, the court emphasized the lack of competition between the parties in the same geographic market.

But the court declined to grant the Deli's additional request for a declaration that its expanded use of the Instant Heart Attack Sandwich mark, specifically that it was entitled to exclusive use of the mark in New York, New Jersey, and Connecticut, concluding that the record was inadequate to determine the possibility of a likelihood of confusion in geographic areas neither party had yet entered.

Ultimately, the court adopted a concurrent use order that the parties had apparently agreed to at oral argument under which the Deli could (1) serve the Instant Heart Attack Sandwich anywhere in Manhattan; (2) advertise the sandwich on its in-restaurant menus; (3) advertise the sandwich on interior and exterior signs at the Manhattan locations; and (4) reproduce the menu used in the Manhattan locations in its Internet advertising.

As to the Triple Bypass Sandwich, at oral argument the Grill, "in a commendable effort to resolve the present dispute," urged the court to find that there was no likelihood of confusion between the Triple Bypass Sandwich mark proposed to be used by the Deli and the Grill's Triple Bypass Burger mark under specific conditions.  Those conditions were that the sandwich is only shown on a menu and only sold in the current restaurants with no interior or exterior signage.  The Grill also agreed that the Deli could use the Triple Bypass Sandwich on its website but only insofar as it is shown on the online menu.

The court agreed that this was a fair agreement that was unlikely to lead to confusion and therefore adopted it.

Several times in its opinion, the court applauded the parties for narrowing the issues in dispute, making concessions and ultimately reaching an agreement that the court largely adopted.  Nonetheless, in addressing the possibility of future disputes, the court noted that the parties had spent "many months (and presumably a great deal of money in legal fees and costs)" litigating a dispute "only to agree at argument on terms that could readily have been arrived at long ago and which do not seem to impinge either's practical interests in the slightest."  Thus, should future disputes arise, the court "strongly encourage[d] the parties to eschew provocative cease-and-desist letters or precipitous lawsuits, and instead to work together to try to resolve their differences cooperatively."

The case cite is Lebewohl v. Heart Attack Grill LLC, Case No. 11 Civ. 3153 (PAE) (S.D.N.Y. July 5, 2012).

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