On March 22, Burger Keeper, LLCâ€”operator of restaurants in New York City, Boston, and Miami… and owner (and â€œutilizeâ€-r) of the federally registered trademarks FIVE NAPKIN BURGER (for restaurants) and 5 NAPKIN BURGER (for â€œhamburger sandwiches for consumption on and off the premises)â€”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 â€œa number of restaurants in the New York City suburbs.â€ Those suburbs include Pleasantville, Eastchester, and Yonkers.
Burger Keeperâ€™s beef with L&J? On the menu of the Pleasantville (only) Louie & Johnnieâ€™s location is an item that was, for a time last year, called the â€œFive Napkin Burger.â€ 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 Keeperâ€™s counsel that the â€œFive Napkin Burgerâ€ item on the Pleasantville menu had been renamed. It was now to be called (wait for it…) the â€œSix Napkin Burger.â€
Burger Keeper was neither mollified nor, one imagines, amused. Counsel for Burger Keeper â€œadvis[ed L&J] that, although Burger Keeper appreciated L&Jâ€™s willingness to change [the name of its sandwich], the new name â€˜Six Napkin Burgerâ€™ 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 Keeperâ€™s] exclusive rights. Consequently, Burger Keeper requested once again that L&J cease and desist from any and all uses of the term â€œSix Napkin Burger.â€ 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 â€œpermanently enjoining L&J from advertising, promoting, and selling food items under the FIVE NAPKIN BURGER trademark, or any other confusingly similar mark…â€ and directing L&J to â€œremove or rename the item currently identified as â€˜Six Napkin Burgerâ€™ 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 productsâ€ (emphasis and incredulity mine).
To this writerâ€™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 Miamiâ€”named FIVE NAPKIN BURGERâ€”might have an arrangement with a small(er) restaurant group in suburban New York by which the latter serves the signature product of the formerâ€”to wit, the 5 NAPKIN BURGER (albeit called, for reasons unexplained, the spelled-out â€œFive [Six] Napkin Burgerâ€)… but itâ€™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 â€œany numerical descriptorâ€ in connection with its hamburgers is going a griddle too far. What Burger Keeper might really seek is to prevent L&J from using â€œany descriptor of the number of napkins required to facilitate the consumption of a hamburger sandwichâ€ …but, still, would â€œTen Napkin Burgerâ€ be confusingly similar? â€œHundred Napkin Burgerâ€? â€œSix Million Napkin Burgerâ€ (We can build it. We have the technology. Better, tastier, messier…)? What about â€œThree Napkin Burgerâ€? 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 â€œoriginalâ€ 5 NAPKIN BURGER (in New York City, Boston, or Miami… in all of which he has been in the past three months alone), his wifeâ€”a credentialed hamburger authorityâ€”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….)