The Second Avenue Deli and the Instant Heart Attack Sandwich - Fordham Intellectual Property, Media & Entertainment Law Journal
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The Second Avenue Deli and the Instant Heart Attack Sandwich

The Second Avenue Deli and the Instant Heart Attack Sandwich

On September 5, 2012, the Southern District of New York concluded what is hopefully the final chapter of a trademark battle between Second Avenue Deli in Manhattan and the Heart Attack Grill in Las Vegas, Nevada.  Judge Engelmayer denied the deli’s motion to reconsider the final judgment issued July 5th, where the court ruled largely in the deli’s favor.  Engelmayer noted, “[the deli’s] expression of discontent with that outcome is nothing short of audacious.”

The denial follows a dramatic stretch of litigation over Second Avenue Deli’s Instant Heart Attack Sandwich, an indulgent confection of latkes (potato pancakes) stuffed with corned beef, pastrami, turkey, or salami.  The deli has sold and marketed the sandwich since 2004, but in recent years it has become a source of controversy.  In September of 2010, the deli filed a trademark application with the United States Patent and Trademark Office (PTO) to register the Instant Heart Attack Sandwich mark.  The PTO denied the application, reasoning that consumers would likely be confused between Second Avenue Deli’s mark and that of the Heart Attack Grill, which was registered in 2005.  As a matter of federal law, trademark applications that resemble a trademark already registered with the PTO and are “likely to cause confusion” must be denied as contrary to the Lanham Act, 15 U.S.C. §§ 1052, et seq.

In March of 2010, the Heart Attack Grill sent a cease-and-desist letter to Second Avenue Deli, demanding that it refrain from using the Instant Heart Attack Sandwich mark, again citing consumer confusion as the basis for its objection.  It is worth noting that unlike the kosher deli, the Nevada grill is fashioned like a hospital, where waitresses (known as “nurses”) take orders (“prescriptions”) from the customers (“patients”) and serve dishes like the Butter-fat Shake, Flatliner Fries, and the Quadruple Bypass Burger, which at a whopping 8,000 calories, consists of four half-pound beef patties, eight slices of American cheese, a whole tomato, and half an onion served in a bun coated with lard.  Second Avenue Deli responded to this letter with a lawsuit for declaratory judgment, seeking a ruling that its sandwich does not infringe any of Heart Attack Grill’s marks and that the deli may thus register the mark.

After extensive discovery, counterclaims, and a motion for summary judgment, the court in its July 5th opinion held that Second Avenue Deli’s use of the Instant Heart Attack Sandwich mark did not violate the Lanham Act, notwithstanding the PTO finding.  The court concluded, “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 ‘medically themed’ restaurant that features gluttonous cheeseburgers.”  In its discretion, the court further issued “a concurrent use arrangement,” which permitted the deli to use its mark only within Manhattan, consistent with its current and prior use.  The court preserved Heart Attack Grill’s presumptive nationwide right to use its mark, as the senior registrant.  The court added, “In the event that future quarrels arise, the Court strongly encourages the parties to eschew provocative cease-and-desist letters or precipitous lawsuits, and instead to work together to try to resolve their differences cooperatively.”

In a stunning epilogue to this narrative, Second Avenue Deli moved the court to reconsider its ruling, arguing that its use of the mark should not be limited to Manhattan, but should rather extend to the Tri-State area.  The deli, in its moving papers, did not present any concrete plan to expand beyond its present locations in the Upper East Side and Midtown East, but was nonetheless determined to push the boundaries in the event that it should decide to expand its operations.  Judge Englemayer refused to entertain this reconsideration and stated, “[A]ny assessment as to the likelihood of confusion presented by future expansion would be unacceptably conjectural.”  The motion was denied as an improper attempt to re-litigate issues that were resolved in the July order.

While Second Avenue Deli is not permitted to use the Instant Heart Attack Sandwich name beyond the borders of Manhattan, New Yorkers can still enjoy one of these colossal delights at either of their existing locations.  In a city facing a newly approved ban on super-sized sugary drinks, there is something satisfying, at least for the voracious consumer, about preserving a staple of culinary decadence.

Marc Castaneda