On March 22, Burger Keeper, LLC—operator of restaurants in New York City, Boston, and Miami… and owner (and “utilize”-r) of the federally registered trademarks FIVE NAPKIN BURGER (for restaurants) and 5 NAPKIN BURGER (for “hamburger sandwiches for consumption on and off the premises)—filed a complaint in the United States District Court for the Southern District of New York against Louie & Johnnies Cheese Steaks & Clam Bar, a company that operates “a number of restaurants in the New York City suburbs.” Those suburbs include Pleasantville, Eastchester, and Yonkers.
Burger Keeper’s beef with L&J? On the menu of the Pleasantville (only) Louie & Johnnie’s location is an item that was, for a time last year, called the “Five Napkin Burger.” Uh oh: Consumers of hamburgers might be confused about the origin of such a product. So counsel for Burger Keeper asked L&J to please stop using that name for its hamburger sandwich for consumption on or off the premises of the Pleasantville restaurant.
That was on July 10, 2012, according to the complaint. On August 21, L&J informed Burger Keeper’s counsel that the “Five Napkin Burger” item on the Pleasantville menu had been renamed. It was now to be called (wait for it…) the “Six Napkin Burger.”
Burger Keeper was neither mollified nor, one imagines, amused. Counsel for Burger Keeper “advis[ed L&J] that, although Burger Keeper appreciated L&J’s willingness to change [the name of its sandwich], the new name ‘Six Napkin Burger’ was too similar to the 5 NAPKIN BURGER trademark, and was a misrepresentation as to origin that was likely to cause consumer confusion that infringed upon [Burger Keeper’s] exclusive rights. Consequently, Burger Keeper requested once again that L&J cease and desist from any and all uses of the term “Six Napkin Burger.” Alas! L&J did not comply and Burger Keeper was/felt compelled to sue to enforce its legal rights.
Except, really? Burger Keeper is asking the court for, among other things, an order “permanently enjoining L&J from advertising, promoting, and selling food items under the FIVE NAPKIN BURGER trademark, or any other confusingly similar mark…” and directing L&J to “remove or rename the item currently identified as ‘Six Napkin Burger’ from [its] menu… and if renamed, directing [L&J] that the new name must not be confusingly similar to the FIVE NAPKIN BURGER trademark… specifically by refraining from using any numerical descriptor for its hamburger products” (emphasis and incredulity mine).
To this writer’s mind, this is overreaching and crying wolf, though not necessarily in that order. In the first place, while it is possible that a restaurant with locations in New York City, Boston, and Miami—named FIVE NAPKIN BURGER—might have an arrangement with a small(er) restaurant group in suburban New York by which the latter serves the signature product of the former—to wit, the 5 NAPKIN BURGER (albeit called, for reasons unexplained, the spelled-out “Five [Six] Napkin Burger”)… but it’s just so improbably as to make consumer confusion almost beyond unlikely. In other words, no one is actually going to think that the two are in any way related, much less that the metropolitan FIVE NAPKIN BURGER is providing 5 NAPKIN BURGERs to the suburban Louie & Johnnies Cheese Steaks & Clam Bars.
(By the by, the 5 Napkin Burger is “10 ounces of fresh ground chuck topped with Gruyere cheese, caramelized onions and a rosemary aioli.” It is not kosher. The “Six Napkin Burger” [for now] is topped with caramelized onions, pulled pork, pepper jack cheese, tangy BBQ sauce, and a ‘sunnyside egg,’ and is served between “two grilled cheeses.” It is really unkosher, and might actually stop your heart.)
But, assuming that Burger Keeper is only doing what it must to police its mark, to pray (in the legal sense) that L&J be enjoined from using “any numerical descriptor” in connection with its hamburgers is going a griddle too far. What Burger Keeper might really seek is to prevent L&J from using “any descriptor of the number of napkins required to facilitate the consumption of a hamburger sandwich” …but, still, would “Ten Napkin Burger” be confusingly similar? “Hundred Napkin Burger”? “Six Million Napkin Burger” (We can build it. We have the technology. Better, tastier, messier…)? What about “Three Napkin Burger”? Would Burger Keeper complain if L&J downplayed the size and/or messiness of its sandwich?
(To this point, your commentator must note that although he has not himself consumed an “original” 5 NAPKIN BURGER (in New York City, Boston, or Miami… in all of which he has been in the past three months alone), his wife—a credentialed hamburger authority—has, and she has remarked that the burger in question by no means required the use of five napkins. Which suggests that the registered trademark for the sandwich is possibly [ahem] gastronomically misdescriptive….)