Restaurants' Agreement Prompts Order Allowing Concurrent Use of ‘Heart Attack'

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By Mahira Khan  

An agreement reached by the parties at oral argument allowing for the concurrent use of “Heart Attack” in their restaurants' marks was persuasive evidence that there is no likelihood of confusion between the parties' marks, the U.S. District Court for the Southern District Court of New York held July 6 (Lebewohl v. Heart Attack Grill LLC, S.D.N.Y., No. 1:11-cv-03153-PAE-JCF, 7/6/12).

Granting a Manhattan deli a summary judgment that its “Instant Heart Attack Sandwich” mark does not infringe a Las Vegas restaurant's “Heart Attack Grill” mark, the court entered a narrow concurrent use order allowing use of mark on the deli's menus and location in Manhattan.

Heart Attack Over Cease-and-Desist Letter.

Heart Attack Grill LLC is a chain of “medically themed” restaurants. Founded in 2005, Heart Attack Grill now has only one remaining restaurant open in Las Vegas, Nevada.

Serving highly caloric foods, Heart Attack Grill is known for its provocatively dressed “nurses” as waitresses who take “prescriptions,” or orders, from their “patients,” or customers. Heart Attack Grill filed to register its restaurant's mark as well as the names of its four burgers--the Single, Double, Triple, and Quadruple Bypass Burgers--with the Patent and Trademark Office in 2005.

Jack Lebewohl and his family own a kosher delicatessen known as the Second Avenue Deli, which has two locations in Manhattan. The Deli began offering its Instant Heart Attack Sandwich some time in 2004, according to its menu dated “2004-05” as well as Internet message board posts and articles.

After filing an application to register the Instant Heart Attack Sandwich mark as well as an intent-to-use application for its “Triple Bypass Sandwich” mark with the PTO in September 2010, the Deli was denied both its applications based on a likelihood of confusion between its marks and Heart Attack Grill's marks in January 2011.

Thereafter, Heart Attack Grill sent the Deli a cease-and-desist letter in March 2011, demanding that the Deli stop using the Instant Heart Attack Sandwich and Triple Bypass Sandwich marks because they created a likelihood of confusion with its registered marks.

However, in May 2011, the Deli brought a declaratory judgment action against Heart Attack Grill. Specifically, it asked for a finding that neither of its two pending marks infringe Heart Attack Grill's marks, allowing for the Deli to register its marks.

In the alternative, the Deli sought a ruling that if the court did find a likelihood of confusion between the restaurants' marks, the Deli would be permitted to use the Instant Heart Attack Grill Sandwich mark in New York, New Jersey, and Connecticut, while excluding Heart Attack Grill's mark from the tri-state area.

The Deli moved for summary judgment.

Mark 'Used in Commerce.'

Judge Paul A. Engelmayer noted at the outset that the parties “helpfully narrowed” the dispute during oral argument. In particular, the court said that it “appreciated [Heart Attack Grill's] concessions” that the use of the Deli's two marks would not create a likelihood of confusion under certain limitations.

The court went on to say that for it to exercise Lanham Act jurisdiction over the dispute, the Deli had to demonstrate that it is (1) using Instant Heart Attack Sandwich as mark; and (2) doing so “in commerce.”

Although both parties agreed that the Deli's Instant Heart Attack Sandwich was being used as a trademark, the court concluded that it also possesses the dimensions of a service mark. While the sandwich is a product that can be identified as a “discrete piece of merchandise,” the court noted, it differs from the typical trademarked good in that it is “short-lived” and “within minutes… is devoured.”

As to the use in commerce element, the court found that the Instant Heart Attack Sandwich mark did meet the statutory requirement. The court explained that the Deli serves interstate travelers as a “celebrated New York City tourist attraction,” having gained national media coverage from The New York Times, Wall Street Journal, and Zagat's, to name a few. In addition, the Deli purchases ingredients from out-of-state vendors; thus, the Instant Heart Attack Sandwich mark satisfied the court's jurisdictional requirement.

No Likelihood of Confusion.

Turning to the likelihood of confusion, the court noted that the PTO denied registration of the Deli's marks based on a likelihood of confusion. However, the parties themselves had concluded that there would be no such confusion from the Deli's use of its mark, the court pointed out, adding that deference due to the PTO's decision is also limited because it was made without the benefit of discovery. The court accordingly went on to assess the likelihood of confusion under the eight-factor balancing test as set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 128 USPQ2d 411 (2d Cir. 1961).

The first factor, the strength of the Heart Attack Grill's mark, weighed in favor of that restaurant, the court said, classifying the mark as “suggestive and inherently distinctive,” entitled to some protection.

The second factor, the similarity of the marks, also weighed in favor of the Heart Attack Grill since both parties' marks--Heart Attack Grill and Instant Heart Attack Sandwich--contain the same “dominant words” that “leap out,” according to the court.

The remaining factors, however, weighed in favor of the Deli's Instant Heart Attack Sandwich mark. The court found a lack of proximity between the products of the two restaurants. In addition to the restaurants competing from a great geographic distance, they also “pitch to vastly different customers,” the court said.

“[Heart Attack Grill] proudly represents… that its food is unhealthful,” the court said, “Its food is served by scantily clad waitresses dressed like nurses, as part of its overall 'medical'…theme. The Deli, by contrast, is a kosher deli which serves kosher food in the style of a traditional Manhattan deli…[that does] not trumpet [its] unhealthfulness” the court explained.

Furthermore, the court found no evidence of any intention on the part of Heart Attack Grill to open a branch of its restaurant in New York or for the Deli to expand its business beyond New York City.

There was also no evidence of actual customer confusion, nor were there any allegations of bad faith on the part of the Deli's use of the Instant Heart Attack Sandwich mark, according to the court.

The court further noted that neither party complained about a loss to its reputation based on the use of the other party's mark.

While discussing the sophistication of the buyers factor, the court stated that “even an unsophisticated customer could readily differentiate between a Manhattan kosher deli and its latke-based sandwich and a Las Vegas 'medically themed' restaurant that features gluttonous cheeseburgers.”

Finding no likelihood of confusion between the two marks, the court granted the Deli's request for a declaratory judgment of no infringement.

Concurrent Use Order Issued.

The Deli also sought a declaration that concurrent use of the parties' “heart attack” marks should be permitted, specifically that the Deli should be entitled to exclusive use its Instant Heart Attack Sandwich mark in New York, New Jersey, and Connecticut. The court said that to be entitled to concurrent use, the Deli needed to establish the use of the Instant Heart Attack Sandwich mark before Heart Attack Grill's June 2005 application to register its mark.

The court concluded that the Deli had demonstrated senior use of the mark, a predicate for a concurrent use arrangement. It pointed to the following evidence of prior usage:

• Lebewohl's affidavit that he created the sandwich “around 2004;”

• a menu from 2004-05 containing the name of the sandwich;

• a review and message-board post by the website Chowhound dated May 2004 and January 2005, respectively; and

• a July 2004 Korean Airlines newsletter.


However, the court denied the Deli's request for exclusive use of its mark in the tri-state area, noting that such use would be outside the geographic area in which it had demonstrated prior use of its mark, and that Heart Attack Grill, as senior registrant, has nationwide rights to use its mark.

Instead, the court entered a “narrower concurrent use order,” based on what the parties agreed upon. The court stressed that there was a “very substantial argument” that both marks “could coexist in the same geographic area without giving rise to significant (or any) confusion.” In fact, Heart Attack Grill posited that there would be no likelihood of confusion if it were to open a branch next door to the Deli.

The court accordingly issued a concurrent use order allowing the Deli to advertise its sandwich mark on the interior and exterior signs at its Manhattan locations as well as on its online menus.

Finally, the court addressed whether the Deli's use of its proposed Triple Bypass Sandwich mark would cause a likelihood of confusion in the future. Finding none, it entered a similar concurrent use order for that mark.

However, the court “strongly encouraged the parties to eschew provocative cease-and desist letters,” noting that the two parties spent much time and money litigating the dispute “only to agree at argument on terms that could readily have been arrived at long ago.”

The Deli was represented by Willliam Win-Ning Chuang of Jakubowitz & Chuang, New York. Heart Attack Grill was represented by Robert C. Kain Jr. of Kain & Associates, Fort Lauderdale, Fla.

By Mahira Khan  

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