Heart Attacks rife in New York: 2nd Ave Deli allowed to continue selling Instant Heart Attack sandwich

We previously posted (an inordinate number of times, see here), about the trade mark dispute between the Heart Attack Grill (HAG) and the 2nd Ave Deli (Deli), over the Deli’s offering of an Instant Heart Attack sandwich and proposed offering of a Triple Bypass Sandwich.  Last Friday, Justice Paul Engelmayer of the United States District Court in New York, granted most of the Deli’s motions, making orders largely agreed to by the parties.

In opening his judgment, Engelmayer J summarised the parties well as “restaurants that use provocative names to market their extravagantly caloric food”.

Although Engelmayer suggested in obiter that “there is very good reason to believe that consumers could differentiate between the two marks”, he held that in relation to the Instant Heart Attack Sandwich:

  • the Deli’s current use of the Instant Heart Attack Sandwich mark (being, listing it on the menus used in its two Manhattan restaurants, and listing it on its website menu) does not infringe HAG’s Heart Attack Grill mark; and
  • due to the Deli’s use of the mark prior to HAG’s registration of its trade mark, the Deli may modestly expand its use of the Instant Heart Attack Sandwich mark, without giving rise to a likelihood of confusion with HAG’s mark, by:
  • using it at current or future restaurants within Manhattan; and
  • advertising it on interior and exterior signs at its Manhattan restaurants.

However, the Deli was not entitled to use the mark outside of Manhattan, or to the exclusion of HAG’s mark.

In determining that the Deli’s current use did not amount to a likelihood of confusion, Engelmayer J employed an eight-factor balancing test, namely assessing:

  • the strength of the mark;

  • the similarity of the marks;

  • proximity of the products and their competitiveness with one another;

  • evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product;

  • evidence of actual consumer confusion;

  • evidence that the imitative mark was adopted in bad faith;

  • respective quality of the products; and

  • sophistication of consumers in the relevant market.

In relation to the Triple Bypass Sandwich mark, Engelmayer J held that the Deli may use the Triple Bypass Sandwich mark at its current restaurants, but only on its hard-copy menu and its online menu.  The Deli may not use any images of the sandwich on either menu, or reference the Triple Bypass sandwich mark on signage on either the interior or exterior of its restaurants.  We understand that the Deli launched its Triple Bypass Sandwich on Friday, featuring three potato latkes, stuffed with corned beef, pastrami, salami and turkey, packing well over 1000 calories and available for a measly sum of US$34.95.  A light lunch! 

HAG’s motion to voluntarily dismiss its remaining counterclaims against the deli was also granted, and because there were no allegations of bad faith or wilful infringement, each party was ordered to pay its own costs.

Closing on an encouraging note, Engelmayer stated: “In the event that future quarrels arise, the Court strongly encourages the parties to eschew provocative cease-and-desist letter or precipitous lawsuits, and instead work together to try to resolve their differences cooperatively.”  Aaah.  Wouldn’t that be nice!

The judgment is available online here.