Second Avenue Deli Wins Trademark Infringement Lawsuit Over Cheeseburgers

By Joseph Mandour on July 18, 2012

cheeseburger-thumb-200x150-31546 Orange County – Imagine if you will, a world where meat lovers feast on a decadent cheeseburger consisting of 4 half pound beef patties, eight slices of American Cheese, a whole tomato and ½ of an onion, all nestled on a lightly toasted bun. The Heart Attack Grill appropriately named this meat lover’s treat the Quadruple Bypass Burger to compete with a line of Bypass Burgers intended to please the most stringent of burger lovers.

Alternately, to the delight of many, the Second Avenue Deli created its own Triple Bypass Sandwich comprised of two potato latkes filled with mouth-watering slices of corned beef, pastrami, turkey and salami. Most sandwich connoisseurs would argue that there is room for either or both delectable concoctions in the restaurant world. However, when the Heart Attack Grill discovered that the Second Avenue Deli was using its trademarks without authorization, it sued for trademark infringement.

New York’s landmark Second Avenue Deli has been the purveyor of Instant Heart Attack Sandwiches since 2004, while the Las Vegas based Heart Attack Grill registered its trademarks with the USPTO in June 2005. Initially, upon discovering products illegally using its trademarked names, the Heart Attack Grill sent a cease and desist letter claiming that the Second Avenue Deli violated its trademarks for “Bypass” Burgers. When the letter yielded no results, the Las Vegas eatery filed a lawsuit in 2011.

In the recent decision, U.S. District Judge Paul A. Englemayer determined that the Manhattan deli would be allowed to continue selling its Instant Heart Attack sandwiches because the distribution did not violate Heart Attack Grill’s trademark rights. However, the sale of the Heart Attack sandwiches will only be allowed to continue in current and future restaurants in Manhattan. Additionally, the Triple Bypass Sandwich can only be listed on the menu of current Manhattan restaurants and cannot be listed on any signage. The decision by Judge Englemayer was based on terms agreed to by both parties over the course of oral arguments and months of litigation. The Judge also encouraged both parties to cooperate and practice alternative dispute resolution in the future.

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