Lebewohl et al v. Heart Attack Grill LLC et al

Filing 12

AMENDED COMPLAINT amending 1 Complaint, against Jon Basso, Hag LLC, Heart Attack Grill LLC.Document filed by Uncle Abies Deli on First, Inc., Uncle Abies Deli Inc., Uncle Abies Deli Sandwich Trademarks LLC, Jeremy Lebewohl, Jack Lebewohl. Related document: 1 Complaint, filed by Uncle Abies Deli Sandwich Trademarks LLC, Jeremy Lebewohl, Uncle Abies Deli on First, Inc., Uncle Abies Deli Inc.(mro)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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JACK LEBEWOHL, JEREMY LEBEWOHL,
UNCLE ABIES DELI INC. d/b/a 2nd AVE DELI,
UNCLE ABIES DELI ON FIRST INC., and
UNCLE ABIES DELI SANDWICH TRADEMARKS LLC,
Plaintiffs,

AMENDED COMPLAINT

Index No. 11-cv-3153

-againstHEART ATTACK GRILL LLC, HAG LLC, and JON BASSO,
Defendants.

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Plaintiffs JEREMY LEBEWOHL, JACK LEBEWOHL, UNCLE ABIES DELI INC.
d/b/a 2nd AVE DELI, UNCLE ABIES DELI ON FIRST INC., and UNCLE ABIES DELI
SANDWICH TRADEMARKS LLC ("Plaintiffs"), for their Complaint against Defendants
HEART ATTACK GRILL LLC, HAG LLC, and JON BASSO (collectively, "Defendants" or
"The Heart Attack Grill") allege:
PARTIES

1.

Plaintiff JEREMY LEBEWOHL is an individual residing at 157 East Houston St., 2nd
Fl., New York, New York 10002.

2.

Plaintiff JACK LEBEWOHL is an individual residing at 20 E 9th Street, New York, NY
10003.

3.

PlaintiffUNCLE ABIES DELI INC. d/b/a 2nd AVE DELI is a New York corporation,
with its principal place ofbusiness at 162 East 33rd St., New York, New York 10016.
Uncle Abies Deli Inc. currently operates the 2nd Ave Deli.

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4.

Plaintiff UNCLE ABIES DELI ON FIRST INC. is a New York corporation with its
principal place ofbusiness at 162 East 33rd St., New York, New York 10016.

5.

PlaintiffUNCLE ABIES DELI SANDWICH TRADEMARKS LLC is a New York
corporation with its principal place ofbusiness at 162 East 33rd St., New York, New
York 10016.

6.

Upon information and belief, Defendant HEART ATTACK GRILL LLC (the "Heart
Attack Grill") is an Arizona limited liability company with its principal place of business
at 15090 N Northsight Boulevard #115, Scottsdale, Arizona 85260.

7.

Upon information and belief, Defendant HAG LLC (the "Heart Attack Grill") is an
Arizona limited liability company with its principal place of business at 37401 N Dream
St., Carefree, Arizona 85377.

8.

Upon information and belief, Defendant JON BASSO is an individual residing at 37401
N Dream St., Carefree, Arizona 85377. He is an indispensible party, as US Patent and
Trademark Office files show that he is the sole owner of the trademarks asserted against
the Plaintiffs, with no assignment on record to either HEART ATTACK GRILL LLC or
HAGLLC.
NATURE OF THE ACTION

9.

This is an action seeking the Court's declaration that Plaintiffs have not violated any
rights Defendants may have under the Lanham Act 15 U.S.C. §§ 1114, 1125(a) and (c),
state unfair competition laws, and common law with regard to a few of Defendants'
trademarks, specifically, "HEART ATTACK GRILL," Registration No. 3128169,
"TRIPLE BYPASS BURGER," Registration No. 3180519, and its other "BYPASS"

marks (collectively, the "Marks in Dispute").
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10.

Defendants have threatened to file suit in federal court to enforce these claimed rights.

11.

Plaintiff Uncle Abies Deli On First Inc. operates the 2nd Ave Deli in New York. The 2nd
Ave Deli has sold the "Instant Heart Attack Sandwich" since at least 2004, and is
planning to sell the "Triple Bypass Sandwich," having filed trademark registrations for
both marks. The 2nd Ave Deli operates only within New York.

12.

By letter dated March 29, 2011, Defendants alleged that Plaintiffs' use of the terms
"Instant Heart Attack Sandwich" and the "Triple Bypass Sandwich" in restaurant menus,
advertisements, signs, menus, and promotional materials violated Defendants' rights
under the Lanham Act, as well as those under state and common law. All of the alleged
violations occurred in New York City.

13.

Defendants, in their March 29letter, also unequivocally threatened a federal lawsuit
against Plaintiffs. Defendants pointedly noted that they have sued many other parties in
diverse jurisdictions for alleged infringement of the same marks.

14.

As a result of the parties' conflicting positions, an actual and justiciable controversy
exists over the parties' respective rights and obligations. This controversy can be fully
resolved by way of a declaratory judgment pursuant to the Declaratory Judgment Act, 28
U.S.C. § 2201(a).
JURISDICTION AND VENUE

15.

An actual and justiciable controversy exists between Plaintiffs and Defendants

concerning the alleged violation ofDefendants' rights, if any, in the Marks in Dispute.
Accordingly, subject matter jurisdiction for this declaratory action is proper in this Court
under 28 U.S.C. §§ 1331, 1338, 1367,2201, and 2202.

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16.

This Court has personal jurisdiction over Defendants pursuant to the New York long-ann
statute, CPLR § 302(a)(l). Defendants sent correspondence to Plaintiffs in New York
threatening to file suit for the violation of various federal and state rights for actions
allegedly performed in New York. This threatened federal action could only be filed in
New York, as Plaintiffs lack any jurisdictional nexus with any other state. By virtue of
these dealings in the State of New York, and this District, Defendants are subject to the
personal jurisdiction of this Court under CPLR § 302(a)(l).

17.

Venue is proper in this district pursuant to 28 U.S.C. § 1391 because a substantial part of
the events giving rise to the claims asserted occurred in this District and because
Defendants are subject to jurisdiction in this district. Defendants' activities in this judicial
district make it fair and reasonable for it to be sued in this judicial district.
DECLARATORY JUDGMENT OF NON-INFRINGEMENT

18.

Plaintiffs repeat and re-allege the previous paragraphs set forth herein.

19.

The 2nd Ave Deli is a popular, family-run New York landmark that has been in business
since the 1950's. Abe Lebewohl began what would become the 2nd Ave Deli in 1954. The
business flourished through his hard work and devotion, and the help of his family. After
Abe was tragically murdered during a botched robbery, his widow Eleanor and brother
Jack reopened the restaurant. A decade later, the 2nd Ave Deli moved to its current
address at 162 East 33rd Street. The 2nd Ave Deli is now in the hands of Jack's sons, Josh
and Jeremy.

20.

The 2nd Ave Deli's single-minded focus on serving the best kosher New York
Delicatessen food available has earned it much publicity and praise. The New York
Times referred to the 2nd Ave Deli as an "ethnic culinary legend" and published an article
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about the history of the restaurant in its Sunday Magazine. New York Magazine featured
the Deli's famous chicken soup in a pot. CBS News devoted a segment to its potato
latkes. On the Daily Show, Jon Stewart emphatically expressed his love for the deli's
babka and corned beef sandwich. The 2"d Ave Deli Cookbook, published in 1999,
contained anecdotes from the likes of Paul Reiser, Sam Levenson, and Raoul Felder.

21.

The 2nd Ave Deli is proud to be one of the few kosher Jewish Delicatessens of its kind
left in New York. Its former location had a dining room named after Molly Picon, a star
of Yiddish theatre, as well as a "Walk of Stars of the Jewish stage," which featured a star
for Fyvush Finkel. It serves traditionally Jewish fare such as corned beef, pastrami,
brisket, chicken soup, chopped liver, and hummus.

22.

As of this filing, there is only one 2nd Ave Deli, and it is in Midtown East, Manhattan.

23.

Since late 2005, the Heart Attack Grill has operated the eponymous medically-themed
hamburger restaurant in Phoenix, Arizona. The provocatively dressed waitresses are
called "nurses." Patrons are called "patients" and are issued hospital wristbands upon
entering the restaurant.

24.

The Heart Attack Grill proudly serves unhealthy and overly caloric fare such as
hamburgers, fries cooked in lard, and milkshakes. Defendants contend that they are
known nationally and internationally for serving this type of cuisine.

25.

The Heart Attack Grill has accused Plaintiffs of trademark infringement and other
violations by virtue of the use of the phrases "INSTANT HEART ATTACK
SANDWICH" and "TRIPLE BYPASS SANDWICH" in the 2nd Ave Deli's restaurant
menus, signs, website, and other materials. Defendants have further alleged that Plaintiffs

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are deliberately imitating their medical theme and are creating a likelihood of confusion
with its marks.
26.

There is no likelihood of confusion. As an initial matter, the restaurants serve
geographically distant markets. Defendants operate in Phoenix, Arizona and the 2nd Ave
Deli operates solely in New York City. Furthermore, the food sold, as well as the
clientele served, could not be more different. The Defendant's Triple Bypass Burger is
more precisely a cheeseburger, and as such is decidedly not kosher and unsuitable for the
2nd Ave Deli's customer base. Similarly, anyone looking for a milkshake, cheeseburger,

or French fries cooked in lard will not find them at the 2nd Ave Deli.
27.

The 2nd Ave Deli has been in business for almost sixty years serving quality kosher food
to New Yorkers, having earned renown in that market. It has no intention ofbecoming a
medically-themed hamburger restaurant and grill.

28.

The 2nd Ave Deli has been serving its popular Instant Heart Attack Sandwich since before
the Heart Attack Grill even existed, much less used the trademark "Heart Attack Grill" in
commerce.

29.

Without a prompt determination as to whether the 2nd Ave Deli's use of the "Instant
Heart Attack Sandwich" and "Triple Bypass Sandwich" infringes upon Defendants'
claimed intellectual property rights, Plaintiffs cannot know with any certainty whether or
not they are exposing themselves to liability if they do not accede to Defendants'
demands.

30.

Plaintiffs demand trial by jury on all issues so triable.

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PRAYER FOR RELIEF
WHERFORE, Plaintiffs demand judgment in their favor against Defendants for the following
relief:
(1)

A judgment declaring that Plaintiffs have not infringed upon any rights Defendants may
have under the Lanham Act with regard to the Marks in Dispute or with regard to any
other of Defendants' marks;

(2)

A judgment declaring that Plaintiffs did not violate any state or common law claim or
right of Defendants with regard to the Marks in Dispute or with regard to any other of
Defendants' marks;

(3)

Costs and reasonable attorneys' fees; and

(4)

Such other relief as the Court may deem just and proper.

Dated: New York, NY
July 29, 2011

Respectfully Submitted,

William W. Chuang, Esq.
Jakubowitz & Chuang LLP
Attorneys For Plaintiffs
401 Broadway, Suite 408
New York, NY 10013
Phone: [phone]

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