This article first appeared in Entertainment Law Matters, a Frankfurt Kurnit legal blog.
Judge Paul Engelmayer in the Southern District of New York recently resolved a dispute over whether the Second Avenue Deli's Instant Heart Attack Sandwich and proposed Triple Bypass Sandwich violate the Las Vegas-based Heart Attack Grill's trademarks in the Single, Double, Triple, and the Quadruple Bypass Burgers. The heart-stopping decision held that New York's Second Avenue Deli could continue to serve its Instant Heart Attack sandwich and "modestly expand its use of that mark" without causing a likelihood of confusion with defendant's marks.
According to this meaty opinion, both restaurants "use provocative names to market their extravagantly caloric food." Defendant the Heart Attack Grill is a medically-themed restaurant that features scantily clad waitresses called "nurses" serving all-you-can-eat "Flatliner Fries" and "ButterFat Shakes" and allows patrons weighing over 350 pounds to eat for free. Their Quadruple Bypass Burger 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." At least one customer has actually suffered a heart attack while eating at the restaurant. The Second Avenue Deli is a New York City-based kosher deli whose Instant Heart Attack Sandwich substitutes latkes (fried potato pancakes) for bread.
Both parties agreed that a menu offering constitutes a use in commerce, and the tourist appeal of the Second Avenue Deli and the fact that it purchases out-of-state ingredients satisfied federal jurisdiction requirements under the Lanham Act. Although defendants filed for trademark protection in 2005, the court admitted internet reviews of plaintiff's Instant Heart Attack Sandwich from as early as 2004 to demonstrate prior use.
The meat of this decision lies in the fact that at oral argument on the parties' summary judgment motions each of the parties made voluntary concessions to narrow the area of dispute. Under the court's ruling, the Deli may continue to serve its Instant Heart Attack Sandwich in Manhattan, where its two locations currently operate, and may advertise the sandwich on interior and exterior signs in its locations and reproduce its menu on the internet. The soon-to-be released Triple Bypass Sandwich, which was conceived several years after the Heart Attack Grill received trademark protection, may be included on the Deli's physical and online menus only so long as there is "no signage, interior or exterior."
The decision is very fact specific, but addresses interesting issues presented by trademark claims over the names of menu items in restaurants, located in different parts of the country. As our nation becomes smaller and smaller, we can expect to see more disputes of this type.
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