Trademark Musings

Thoughts on trademark issues by Laura Winston

Restaurants Battle Over HEART ATTACK Marks – Is This Something to be Proud Of?

I remember when the Second Avenue Deli, a New York institution, was actually on 2nd  Avenue.  Since 2007, though, it has been on 3rd Avenue, and they are planning to open another location on 1st Avenue.  (At least that averages to 2nd Avenue.)

So the location may not be truth in advertising, but at least the restaurant names some of its menu items accurately.  It offers an INSTANT HEART ATTACK sandwich, consisting of a pile of deli meat between two potato latkes.  They also offer a TRIPLE BYPASS sandwich. 

Heart Attack Grill, located in Arizona and Dallas, has registered trademarks for HEART ATTACK GRILL and TRIPLE BYPASS BURGER (as well as DOUBLE BYPASS BURGER and SINGLE BYPASS BURGER) and other “this could kill you”-themed trademarks.  The restaurant also serves unfiltered cigarettes.  The Chandler, Arizona location is currently closed for installation of defibrillators renovations.  The corporate address is, ironically enough, in Carefree, Arizona.

Heart Attack Grill sent the Second Avenue Deli a letter threatening legal action for trademark infringement.  Fearing that Heart Attack Grill was as serious as a heart attack,  Second Avenue filed a Declaratory Judgment action seeking a declaration of non-infringement.  Second Avenue invokes the kosher defense, stating that there is no chance consumers will be confused because it is a kosher meat restaurant, that Heart Attack Grill offers “decidedly not kosher” menu items and that “anyone looking for a cheeseburger…will not find [it] at the Second Avenue Deli.”  Second Avenue also claims that its use of the killer sandwich trademarks predates the use by Heart Attack Grill. 

Of course, these sandwiches don’t really kill their customers (at least not instantly).  If they did, the defense would be that there are no consumers around to be confused.


May 12, 2011 Posted by | Uncategorized | , , , , , , , , , , , | Leave a comment


Some may be Team Edward, others are Team Jacob, but does this mean that either set of fans is more likely to buy Bath and Body Works’ line of lotions, shower gels and the like if they’re sold under the mark TWILIGHT  WOODS?  Apparently Summit Entertainment LLC, maker of the Twilight movies that emanate from the immensely popular Stephenie Meyer book series, thinks so.  Summit sent a cease-and-desist letter to Bath and Body Works objecting to its use of TWILIGHT WOODS,  which resulted in Bath and Body Works filing a lawsuit seeking a judgment declaring that its mark does not infringe the TWILIGHT mark.

Unfortunately for Summit, they are on record as having taken a different position when it suited them.  Less than two months before sending its cease and desist letter to Bath and Body, Summit filed a written argument with the US Patent and Trademark Office trying to convince the trademark Examiner that Summit’s application for TWILIGHT for fragrances, lotions etc. should be granted because the mark is not confusingly similar to a registered trademark TWILIGHT owned by Coty for the same goods!  Summit took the position in its argument that consumers will associate its TWILIGHT goods with the movies, and will associate Coty’s TWILIGHT goods with “the period of time when day meets night.”  Summit also argued that my high school classmate Sarah Jessica Parker is a celebrity spokesperson for the Coty goods and that people will buy it because they are her fans.  Yeah, and SJP never appears in movies, right?  The Examiner did not buy this argument, and Summit’s trademark application is still facing this refusal.

In trying to have it both ways, Summit is taking the position that the use of TWILIGHT WOODS will call to mind the Twilight movies because of the woods context.   At least Bella knew she had to choose.

March 26, 2011 Posted by | Uncategorized | , , , , , , , , , , | Leave a comment

I Can’t Give this Post an Apt Name

The words BigLaw and SmallLaw have meaning to toiling lawyers who over the years may have worked at 2000-lawyer firms, 200-lawyer firms and 2-lawyer firms. In my case, as a solo practitioner (and somewhat vertically challenged), I am a member of the SmallLaw community.

BigLaw signifies a firm with hundreds or thousands of lawyers, usually spread far and wide geographically and practice area-wise. SmallLaw indicates a small firm lawyers numbering in the single- or double-digits, often with a niche specialty or two.

PeerViews Inc. got itself U.S. trademark registrations for BigLaw and SmallLaw, both covering various email newsletters and blogs relating to legal practice and legal technology.  Then they objected to use of the term “Small Law” in the title of a post on the blog Lawyerist, demanding that Lawyerist take down the offending blog title within 7 days. The post was called “Above the Law Goes Small Law”, and was reporting on the fact that the popular, intelligently written though gossipy law blog was expanding its focus to include frequent posts about small law life as well as BigLaw goings-on.

Bloggers did not react favorably to PeerViews’ proprietary view.   For example, Carolyn Elefant, author of the solo lawyer bible Solo by Choice and the blog, proclaimed in a blog title, “Memo to SmallLaw, You Don’t Own Small Law!”  She expressed concern about the chilling effect this could have on her blog and small law in general.

Not only did Lawyerist not cave in to PeerViews’ takedown demand, they took major steps to make use of BigLaw and SmallLaw safe for all humankind, including most if not all bloggers. Taking the position that “the terms BigLaw and SmallLaw and the phrases big law and small law belong to the public,” Lawyerist Media, LLC has now filed a lawsuit in federal court in Minnesota, seeking the cancellation of the registrations for BigLaw and SmallLaw on the grounds that they are descriptive terms.  Lawyerist also seeks a judgment from the court declaring that its use of “small law” in the blog post does not infringe PeerViews’ trademark. This blog has really put its money where its mouth is.

Bye now. I’m going to add  Lawyerist to my blogroll.

March 23, 2011 Posted by | Uncategorized | , , , , , , , , , , | Leave a comment

LAMEBOOK v. FACEBOOK – Hilarity Ensues and Sues

See full size image 

Fans of the movie The Social Network know that after Facebook took off, there was a line out the door suing Mark Zuckerberg.  But when it comes to trademarks, Facebook knows that sometimes imitation, while the sincerest form of flattery, can be bad for trademarks.

Facebook is going after numerous uses of marks containing -BOOK, including TEACHBOOK, PLACEBOOK and now LAMEBOOK.  Actually, that last one is actually suing Facebook for a judgment declaring that it does not infringe or dilute the FACEBOOK trademark, after Facebook sent several warning letters telling they they’d better stop.

Called a “hilarious, advertising-supported site” by TechCrunch, LAMEBOOK posts user-submitted content taken from another social networking site (hmm, which one) that the submitting user finds to be lame and funny.  Well, I think hilarity is not likely to save this advertising-supported site.  It’s the typical case of trademark v. First Amendment rights, and despite my love and respect of the latter, I just don’t think the parody defense will save these folks.  The fact that they’ve adopted a font style and color scheme just about identical to Facebook certainly does not help them.  I’ll be watching this one.

November 8, 2010 Posted by | Uncategorized | , , , , , , , | Leave a comment