2nd Ave Deli to Heart Attack Grill: “kiss my tuchas”

Last year we blogged about the Heart Attack Grill in Arizona – a medically themed hamburger restaurant with fat-laden food served by waitresses dressed as nurses – and its action against Heart Stoppers Sports Grill for copying its idea.

We took a dim view of its prospects under Australian law.  But it succeeded under US law – there is now an injunction against Heart Stoppers Sports Grill operating a medically themed restaurant.

Tragedy was to follow.  Heart Attack Grill’s spokesman, 575-pound Blair River, died in March 2011 at the age of 29, reportedly due to complications from pneumonia after contracting influenza.  According to restaurant staff he was “a nice guy” and will “definitely be missed”.  What’s more, according to Jon Basso, the restaurant’s founder, River was the “creative genius” behind the restaurant’s promotions.

River’s legacy is well protected in his absence.  Heart Attack Grill’s lawyers have warned that it will “continue to enforce its national rights against all other infringers”.  It has allegedly sued many other people in diverse jurisdictions, such as the former “Heart Attack Café” food stand in San Diego which now goes by the name “Deep Fried Butter Stand”.

Maybe the Heart Attack Grill has finally met its match in New York City’s 2nd Ave Deli.  The Deli’s Instant Heart Attack sandwich (pictured here) includes two large potato pancakes jammed with a choice of deli meat and commonly served with matzo ball soup.  It also plans to sell a Triple Bypass Sandwich – three quarters of a pound of meat between three potato pancakes – and has filed a trade mark application for that name.  The Heart Attack Grill sells Single, Double, Triple and Quadruple Bypass Burgers with cheese, commonly with a side of Flatliner Fries.

After receiving a threatening letter from Heart Attack Grill’s lawyers, 2nd Ave Deli pre-emptively commenced proceedings for a declaration that it has not violated any of the Heart Attack Grill’s common law or trade mark rights, announcing its decision to do so in a press release entitled “kiss my tuchas”. 

2nd Ave Deli says there is no likelihood of confusion.  The restaurants serve geographically distant markets and different clientele.  2nd Ave Deli claims to be renowned for selling quality kosher food to New Yorkers for over sixty years, and submits that a non-kosher cheeseburger would be highly unsuitable to its customers.  It says it “has no intention of becoming a medically-themed hamburger restaurant and grill”.  (Instead, it devotes about half of the walls in the dining area to pictures of Yiddish-theatre actress Molly Picon.)  It also claims that it was serving the Instant Heart Attack sandwich before the Heart Attack Grill even existed.

It will be interesting to see who wins the inevitable mad scramble to the trade marks office.  As for passing off, under Australian law at least, 2nd Ave Deli might have the better argument.  TGI Friday’s Australia v TGI Friday’s Inc (1999) 45 IPR 43, mentioned in our last blog post, is almost directly on point.  It was not passing off to use the name “TGI Friday’s” on “a very ordinary bar in a very ordinary suburban hotel” with décor bearing little resemblance to that of the restaurant chain.  (Pictures of the 2nd Ave Deli here and here; pictures of the Heart Attack Grill here and here).  The critical question is not whether the defendant has behaved opportunistically, but whether the use of the name will mislead the public into believing there is an association with the plaintiff.

We also query also whether the Heart Attack Grill’s products have sufficient reputation amongst customers of the 2nd Ave Deli to found a passing off action, notwithstanding all the media coverage.

Perhaps another success is what Heart Attack Grill really needs right now.  Their products and business are subject to criticism and even popular protest.  At the opening of the second Heart Attack Grill (in Dallas) protestors outside handed out fresh fruit to try to convince people not to go in.  (It didn’t work.)

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