First posted on July 9, 2012.
Another installment, unplanned but utterly unsurprising, in the Stupid Lawsuit series — see my most recent previous post. Tim Bukher takes apart the widely-reported HEART ATTACK SANDWICH and TRIPLE BYPASS BURGER decision over at his blog. Tim’s bullet points:
This is an interesting trademark dispute for several reasons:
- A Nevada-based restaurant attempted to stop a New York-based deli from using a potentially similar mark yet neither party has or seemingly intends to do business in the otherâ€™s state.
- The Court concludes that restaurants and deli are sufficiently different that a consumer can tell the difference (we do not often see courts giving consumers such props for their intelligence).
- The Court grants concurrent use.
- The Court notes that this case only came about because defendant sent plaintiff an overly aggressive cease and desist letter (thus overlawyering rears its ugly head and loses the client some of its rights).
“Interesting?” More like, you know — stupid! Not the decision, mind you, though it does essentially says “stupid” all over it in reference to the litigation ever having to happen. But yes, the fact that it happened, and that someone had to pay for it to happen — that’s just stupid.
Some interesting, non-stupid things did happen though, such as this bit:
[T]here are other differences that separate the marks. HAG and the Deli pitch for vastly different customers. HAG proudly represents (even in its court papers) that its food is unhealthful. It even draws attention to the fact of a customer who had a heart attack while on the premises. Its food is served by scantily clad waitresses dressed like nurses, as part of its overall â€œmedicalâ€â€”perhaps better cast as â€œparamedicâ€â€”theme. The [Second Avenue] Deli, by contrast, is a kosher deli which serves kosher food in the style of a traditional Manhattan deli. Its offerings, other than the Instant Heart Attack Sandwich, do not trumpet their unhealthfulness; and its marketing does not remotely resemble that of HAGâ€™s. Further, being a kosher deli, the Deli could not serve sandwiches containing both meat and cheese. This factor thus strongly favors a finding of no confusion. . . .
Although the record does not permit the Court to assess the sophistication of the patrons of the Deli and HAG, it is safe to say that even an unsophisticated customer could readily differentiate between a Manhattan kosher deli and its latke-based sandwich and a Las Vegas â€œmedically themedâ€ restaurant that features gluttonous cheeseburgers. Such a customer also presumably can differentiate between a restaurant bearing a â€œheart attackâ€ name and a sandwich with a similar name.
What happened to “bridging the gap“? Is that a stupid question? Not at all: The court addresses it and says the gap between Las Vegas and New York is, in this case, not presently likely to be bridged. In short, these sandwiches don’t compete with each other.
I actually do find somewhat surprising the court’s conclusion that factors such as the differences between the content of the sandwiches and the environments in which they’re served tend toward a finding of no LIKELIHOOD OF CONFUSION. They are, after all, both sandwiches. In many respects there is a substantial likelihood of excessively stupid thought about this question. But the judge does discuss the relevant factors, which include concurrent use and geographic scope questions, extensively.
In fact, Judge Englemayer’s opinion is actually a very good guide to non-stupid issues involving priority of use and the rights that come with trademark registration, for it arose in the context of a PTO Office Action denying the Deli’s application to register Second Avenue Deli’s TRIPLE BYPASS SANDWICH because it was likely to be confused with HAG’s TRIPLE BYPASS BURGER mark. Hilarity — and no small amount of stupidity — ensued, as the court explains in great detail.
Was it such a stupid lawsuit, just because it was over sandwiches (or burgers, which are really sandwiches, after all)? The fact is, most trademark cases sound “stupid” to a lot of judges who are more impressed to have “their time” consumed by respectable financial disputes or crime and who do not enjoy writing decisions involving often silly-sounding brand names or animal logos or names of meals — and too often, their written opinions show it.
Turns out this is not such a stupid case at all, because a judge in the Southern District of New York, while not reluctant to chastise counsel over litigation-posturing-stupidity gone out of control, gave the time of day to some bona fide trademark issues arising out of a stupid food fight. Stupid is, in fact, as stupid does — and vice-versa.