Lebewohl et al v. Heart Attack Grill LLC et al

Filing 13

ANSWER to 12 Amended Complaint, with JURY DEMAND., COUNTERCLAIM against Jack Lebewohl, Jeremy Lebewohl, Uncle Abies Deli Inc., Uncle Abies Deli Sandwich Trademarks LLC, Uncle Abies Deli on First, Inc.. Document filed by Hag LLC, Jon Basso, Heart Attack Grill LLC. (Attachments: # 1 Exhibit A to Counterclaim)(Kain, Robert)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK

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, JACK
LEBEWOHL

CIVIL ACTION NO: 11-CIV-3153-LAK

Plaintiffs,
v.
HEART ATTACK GRILL LLC, HAG LLC, and
JON BASSO,
Defendants.

/
ANSWER TO AMENDED COMPLAINT AND AMENDED COUNTERCLAIMS

Defendants HEART ATTACK GRILL LLC, HAG LLC, and JON BASSO (collectively,
"Defendants" or "HAG") hereby file this Answer to the Amended Complaint and Amended
Counterclaims to Plaintiffs; 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 (collectively "Plaintiffs" or “2nd AVE DELI”) and state as
follows:
PARTIES
1.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 1 of the Complaint, and therefore denies same.

1

2.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 2 of the Complaint, and therefore denies same.

3.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 3 of the Complaint, and therefore denies same.

4.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 4 of the Complaint, and therefore denies same.

5.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 5 of the Complaint, and therefore denies same.

6.

As to paragraph 6, admitted.

7.

As to paragraph 7, admitted.

8.

As to paragraph 8, admitted as to the first sentence. Denied as to the second sentence.
NATURE OF ACTION

9.

Admitted that this is a declaratory judgements action but deny the remaining portions in
paragraph 9 of the Complaint.

10.

As to paragraph 10, admitted.

11.

HAG admits that 2nd AVE DELI operates only in New York but lacks knowledge or
information sufficient to form a belief as to the remaining allegations in paragraph 11 of the
Complaint, and therefore denies same.

12.

HAG admits that the March 29, 2011 letter asserted its rights and admits that “All of the
alleged violations occurred in New York City” as indicated in paragraph 12 of the
Complaint.

13.

As to paragraph 13, admitted.

2

14.

Admitted as to the first sentence. HAG denies the remaining allegations in paragraph 14 of
the Complaint.
JURISDICTION AND VENUE

15.

Denied as to subject matter jurisdiction under 28 U.S.C. 1367. HAG admits the remainder
of paragraph 15 of the Complaint.

16.

HAG admits that “Plaintiffs lack any jurisdictional nexus with any other state” but lacks
knowledge or information sufficient to form a belief as to the remaining allegations in
paragraph 16 of the Complaint, and therefore denies same.

17.

As to paragraph 17, admitted.
DECLARATORY JUDGMENT OF NON-INFRINGEMENT

18.

HAG re-alleges its previous answers set forth above in paragraphs 1-17.

19.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 19 of the Complaint, and therefore denies same.

20.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 20 of the Complaint, and therefore denies same.

21.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 21 of the Complaint, and therefore denies same.

22.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 22 of the Complaint, and therefore denies same.

23.

As to paragraph 23, admitted.

24.

As to paragraph 24, admitted.

25.

As to paragraph 25, admitted.

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26.

Admitted that HAG operates a restaurant in Phoenix Arizona and that 2nd AVE DELI
“operates solely in New York City” but HAG denies the remaining allegations set forth in
paragraph 26.

27.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 27 of the Complaint, and therefore denies same.

28.

HAG lacks knowledge or information sufficient to form a belief as to the allegations in
paragraph 28 of the Complaint, and therefore denies same.

29.

Admitted that a judicial determination is necessary as to 2nd AVE DELI’s use of INSTANT
HEART ATTACK SANDWICH and TRIPLE BYPASS SANDWICH. HAG denies the
remaining allegations set forth in paragraph 29.

30.

As to paragraph 30, admitted.
PRAYER FOR RELIEF

31.

HAG denies all the relief requested in 2nd AVE DELI’s prayer for relief.

AFFIRMATIVE DEFENSES
A.

2nd AVE DELI is estopped to assert claims in this action because, upon information and
belief, they knew of HAG’s rights for many years prior to this suit and failed to act.

B.

2nd AVE DELI cannot assert rights to the marks in this action due to laches and waiver
because, upon information and belief, they knew of HAG’s rights for many years prior to
this suit and failed to act.

C.

Plaintiffs do not own rights to “instant heart attack sandwich” or “triple bypass sandwich.”

D.

Plaintiffs have no enforceable trademark rights to “instant heart attack sandwich” or “triple
bypass sandwich.”
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COUNTERCLAIMS

Counterclaim Plaintiffs, HAG, LLC., d/b/a Heart Attack Grill, an Arizona corporation, and
its president, JON BASSO, an individual (hereinafter collectively “HAG”) hereby file this Amended
Counterclaim against Counterclaim Defendants 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, and JACK LEBEWOHL (collectively “2nd AVE DELI”) , and
state as follows:
JURISDICTION AND VENUE
1.

This is an action under the Federal Trademark Dilution Act, Lanham Act § 43(c)(1),

15 U.S.C. § 1125(c)(1)(Count I); a declaratory judgments action relating to Plaintiffs’pending federal
trademark applications (Count II); and a declaratory judgments action relative to Plaintiffs’
expansion of its use of certain terms (Count II); and a declaratory judgments action for concurrent
use relative to the term “heart attack” (Count IV).
2.

Jurisdiction is expressly conferred on this Court by 28 U.S.C. §1331, 1338, 2201 and

2202, the Lanham Act § 37, 15 U.S.C. § 1119 (the Federal Trademark Act) and Lanham Act § 2(d),
15 U.S.C. 1052(d).
3.

Venue is proper in this judicial district pursuant to 28 U.S.C. §1391 because 2nd

AVE DELI is located in New York, New York, and the individual counterclaim Defendant resides
within the Court’s jurisdiction, that is, within the Southern District of New York.
THE PARTIES
4.

Plaintiff, HAG, LLC., d/b/a Heart Attack Grill, is an Arizona limited liability

company having a principal place of business at 6185 W Chandler Blvd, Chandler, Arizona, 85226.
5

5.

Plaintiff, JON BASSO, is president of HAG, LLC and owner of the federally

registered marks. He resides in Scottsdale, Arizona.
6.

Upon information and belief, Counter-Defendant UNCLE ABIES DELI INC. d/b/a

2nd AVE DELI, is a New York corporation having a principal place of business at 162 East 33rd
Street, New York, New York, 10016.
7.

Upon information and belief, Counter-Defendant UNCLE ABIES DELI SANDWICH

TRADEMARKS LLC is a New York corporation with its principal place of business at 162 East
33rd St., New York, New York 10016.
8.

Upon information and belief, Counter-Defendant UNCLE ABIES DELI ON FIRST

INC. is a New York corporation with its principal place of business at 162 East 33rd St., New York,
New York 10016.
9.

Upon information and belief, Counter-Defendant JEREMY LEBEWOHL is an

individual residing at 157 East Houston St., 2nd Floor, New York, New York 10002.
10.

Upon information and belief, JEREMY LEBEWOHL directs, actively participates

in, controls, and benefits from the business of 2nd AVE DELI. Upon information and belief,
JEREMY LEBEWOHL directed, actively participated in, controlled and benefitted from the conduct
of 2nd AVE DELI as alleged in these Counterclaims. In addition, JEREMY LEBEWOHL’s conduct
was in furtherance of 2nd AVE DELI’ goals, inured to the benefit of 2nd AVE DELI, and was within
the course and scope of JEREMY LEBEWOHL’s employment or agency relationship with 2nd AVE
DELI. Further, upon information and belief, JEREMY LEBEWOHL induced 2nd AVE DELI to
engage in the acts alleged in these Counterclaims.
11.

Upon information and belief, Counter-Defendant JACK LEBEWOHL is an individual

residing at 20 E 9th Street, New York, New York 10002.
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12.

Upon information and belief, JACK LEBEWOHL directs, actively participates in,

controls, and benefits from the business of 2nd AVE DELI. Upon information and belief, JACK
LEBEWOHL directed, actively participated in, controlled and benefitted from the conduct of 2nd
AVE DELI as alleged in these Counterclaims. In addition, JACK LEBEWOHL's conduct was in
furtherance of 2nd AVE DELI' goals, inured to the benefit of 2nd AVE DELI, and was within the
course and scope of JACK LEBEWOHL's employment or agency relationship with 2nd AVE DELI.
Further, upon information and belief, JACK LEBEWOHL induced 2nd AVE DELI to engage in the
acts alleged in these Counterclaims.
FACTS RELATIVE TO ALL COUNTS
13.

HAG has operated its unique medically themed, HEART ATTACK GRILL restaurant

since 2005 in Chandler, Arizona, a suburb of Phoenix. Earlier this year, HAG opened a second
HEART ATTACK GRILL in Dallas, Texas.
14.

Since 2005, HAG has used in interstate commerce the distinctive and famous marks

(i) HEART ATTACK GRILL; (ii) SINGLE BYPASS BURGER; (iii) DOUBLE BYPASS
BURGER; (iv) TRIPLE BYPASS BURGER; and (v) QUADRUPLE BYPASS BURGER in its
restaurant and as trademarks to promote and sell its prepared foods, for consumption on and off the
premises, namely, restaurant menu items in the nature of hamburger and cheeseburger sandwiches.
15.

Since 2005, HAG has continuously used in interstate commerce the distinctive mark

A TASTE WORTH DYING FOR in connection with its restaurant business and for its hamburger
and cheeseburger sandwiches made-to-order for consumption on or off the premises.
16.

Since 2005, HAG has continuously used in interstate commerce the distinctive mark

FLATLINER FRIES in connection with its restaurant business and for its french fries.

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17.

HAG owns the following federal registrations for goods and services related to the

HEART ATTACK GRILL restaurant (collectively herein after the “HEART ATTACK GRILL
Marks”) (see Counterclaim Exhibit A):
Registration No.

Mark

Date of Registration

3,128,169

HEART ATTACK GRILL (for restaurant
services)

08/08/06 (filed June 9, 2005;
1st use June 1, 2005)

3,146,924

TASTE WORTH DYING FOR (for
hamburger ... sandwiches)

09/19/06 (filed June 9, 2005)

3,180,518

SINGLE BYPASS BURGER (for
hamburger sandwiches)

12/05/06 (filed Dec. 27,
2005)

3,137,271

DOUBLE BYPASS BURGER (for
prepared food ... namely ... hamburger[s])

08/29/06 (filed June 9, 2005)

3,180,519

TRIPLE BYPASS BURGER (for
hamburger sandwiches)

12/05/06 (filed Dec. 27,
2005, 1st use June 9, 2005)

3,180,520

QUADRUPLE BYPASS BURGER (for
hamburger sandwiches)

12/05/06 (filed Dec. 27,
2005)

3,938,031

FLATLINER FRIES (for french fries)

03/29/11 (filed Aug. 11,
2010)

18.

HAG also owns HEART ATTACK CAFÉ for cafe and restaurant services, subject

to Trademark Application Serial No. 85101637, filed August 6, 2010.
19.

HAG and JON BASSO have devoted substantial time and effort to advertise,

promote, and otherwise market their unique products and services to the general public under its
marks throughout the United States, on the Internet and on television. Consumers have sought out
HAG’s and HEART ATTACK GRILL restaurant services from all parts of the U.S. Long prior to
the acts complained of herein, the HAG marks and HEART ATTACK GRILL restaurant services
became famous and still are famous in the U.S. and throughout the world.

8

20.

The HEART ATTACK GRILL marks are famous and have national and worldwide

recognition, established by its pervasive media presence, featured or discussed on the following
media outlets: CBS Sunday Morning News, Good Morning America, The Food Network, The
Travel Channel (including the show Extreme Pigouts and the show Top 101 Tastiest Places to
Chowdown where Heart Attack Grill was ranked #27 in America), ABC's Dateline, Fox News Neil
Cavuto, ABC's 20/20 with John Stossel, The Rush Limbaugh Show, The Geraldo Rivera Show, The
Howard Stern Show, Inside Edition, Comedy Central, The Jimbo Hannon Show, The Jay Leno
Show, Rachel Ray, The Doctors, The National Enquirer, Inc. Magazine, Entrepreneur Magazine,
Paul Harvey, America In The Morning, Japanese Television, Pro Zeben's Taff Time (Germany), TF1
(France), Voice of America Television (China), Jay Thomas Show on Sirius, Maurice Boland show
(Spain), and Telemundo News (Mexico), among others.
21.

2nd AVE DELI filed a trademark application alleging rights to INSTANT HEART

ATTACK SANDWICH, Serial No. 85140751 (herein “the ‘751 application”). In the ‘751
application, 2nd AVE DELI asserts that it is the owner of the alleged mark “instant heart attack
sandwich,” it used the alleged mark since May 19, 2004, no other person has rights to the alleged
mark, and that no confusion would arise when the alleged mark “instant heart attack sandwich” is
used in interstate commerce.
22.

The U.S. Patent and Trademark Office (“USPTO”), in an Office Action on January

13, 2011, rejected 2nd AVE DELI’s ‘751 application based upon a likelihood of confusion between
the proposed mark and HAG’s HEART ATTACK GRILL mark.
23.

The USPTO Examining Attorney indicated that the registered mark and the ‘751

application share the identical wording “HEART ATTACK”. The USPTO further explained that
the mere addition of the word “INSTANT” merely reinforces the shared wording, and thus does not
9

obviate the similarity between the marks. Additionally, the USPTO noted that the wording
“SANDWICH” is descriptive, requires disclaimer, and that disclaimed matter is less significant
when comparing marks.
24.

The USPTO also explained that the goods and services between the federally

registered HEART ATTACK GRILL mark and the alleged mark in the application INSTANT
HEART ATTACK SANDWICH are closely related.
25.

2nd AVE DELI also filed a trademark application seeking rights to TRIPLE BYPASS

SANDWICH, Serial No. 85140776 (herein “the ‘776 application”). In the ‘776 application, 2nd AVE
DELI asserts that it is the owner of the alleged mark “triple bypass sandwich,” it has only an
“intention” to use the mark (it has not yet used the alleged mark), no other person has rights to the
alleged mark, and that no confusion would arise when the alleged mark “triple bypass sandwich” is
used in interstate commerce.
26.

The USPTO, in an Office Action on January 13, 2011, rejected 2nd AVE DELI's ‘776

application based upon a likelihood of confusion between the proposed mark and four of HAG's
marks, including the federally registered marks for (i) SINGLE BYPASS BURGER; (ii) DOUBLE
BYPASS BURGER; (iii) TRIPLE BYPASS BURGER; and (iv) QUADRUPLE BYPASS
BURGER.
27.

The USPTO Examining Attorney indicated that the respective marks share the

identical wording "BYPASS". The USPTO further explained that the mere addition of the word
"TRIPLE" merely reinforces the shared wording, and thus does not obviate the similarity between
the marks. Additionally, the USPTO noted that the wording "SANDWICH" is descriptive, requires
disclaimer, and that disclaimed matter is less significant when comparing marks.

10

28.

The USPTO also explained that the goods and services between the proposed TRIPLE

BYPASS SANDWICH mark and HAG’s marks for (i) SINGLE BYPASS BURGER; (ii) DOUBLE
BYPASS BURGER; (iii) TRIPLE BYPASS BURGER; and (iv) QUADRUPLE BYPASS
BURGER, are related because they are identical with respect to sandwiches.

COUNT I - FEDERAL TRADEMARK DILUTION ACT
29.

HAG repeats the allegations of the above paragraphs 1-28 as if fully set forth herein.

30.

This is an action under the Federal Trademark Dilution Act for dilution by blurring

and tarnishment under Lanham Act § 43(c)(1), 15 U.S.C. § 1125(c)(1).
31.

The HEART ATTACK GRILL mark is famous and widely recognized by the general

consuming public in the U.S.
32.

Upon information and belief, 2nd AVE DELI’s use of the term “instant heart attack

sandwich” did not distinguish its products as a trademark. Further, the phrase did not and does not
identify 2nd AVE DELI’s restaurant services. It does not operate as a trademark for goods or
services. 2nd AVE DELI’s use of the term began after the HEART ATTACK GRILL mark became
famous.
33.

There is a likelihood of dilution between HAG’s HEART ATTACK GRILL mark for

restaurant services and the use by 2nd AVE DELI of the term “instant heart attack sandwich.” Further,
2nd AVE DELI’s efforts to federally register the term “instant heart attack sandwich” as a national
mark dilutes HAG’s HEART ATTACK GRILL mark for restaurant services.
34.

There is a likelihood of dilution between HAG’s HEART ATTACK GRILL mark for

restaurant services and the use by 2nd AVE DELI of the term “instant heart attack sandwich” because

11

2nd AVE DELI’s use of the term “instant heart attack sandwich” in its “Kosher Jewish Delicatessen”
tarnishes HAG’s medically themed hamburger restaurant branded as the HEART ATTACK GRILL.
35.

2nd AVE DELI’s complaint alleges it serves “the best kosher New York Delicatessen

food” and is “one of the few kosher Jewish Delicatessens of its kind left in New York... serv[ing]
traditional Jewish fare.” HAG’s HEART ATTACK GRILL hamburger restaurant uses a medical
theme throughout its entire restaurant as entertainment for its patrons while serving high quality
hamburgers and related food products.
36.

2nd AVE DELI’s efforts to federally register the term “instant heart attack sandwich”

as a nationally registered mark dilutes the quality and character and consistent thematic restaurant
services of HAG’s HEART ATTACK GRILL mark and dilutes the value of HAG’s mark when used
in connection with its restaurant services. The intrusion by 2nd AVE DELI with a series of identical
medically themed food products is contrary to 2nd AVE DELI’s statements that it is one of “the best
kosher New York Delicatessen[s]” and “one of the few kosher Jewish Delicatessens of its kind left
in New York... serv[ing] traditional Jewish fare.”
37.

There is a likelihood of dilution between HAG's HEART ATTACK GRILL mark for

restaurant services and the use by 2nd AVE DELI of the term "instant heart attack sandwich" because
2nd AVE DELI's use of the term "instant heart attack sandwich" in its "Kosher Jewish Delicatessen"
causes blurring in the marketplace in light of HAG's medically themed hamburger restaurant branded
as the HEART ATTACK GRILL.
38.

The (i) SINGLE BYPASS BURGER; (ii) DOUBLE BYPASS BURGER; (iii)

TRIPLE BYPASS BURGER; and (iv) QUADRUPLE BYPASS BURGER marks are famous and
widely recognized by the general consuming public in the U.S.

12

39.

2nd AVE DELI's filing of an “intent-to-use” trademark application for the term "triple

bypass sandwich" swears and confirms that 2nd AVE DELI has not used the term “triple bypass
sandwich” in connection with any goods or services.
40.

There is a likelihood of dilution between HAG's (i) SINGLE BYPASS BURGER;

(ii) DOUBLE BYPASS BURGER; (iii) TRIPLE BYPASS BURGER; and (iv) QUADRUPLE
BYPASS BURGER marks for hamburger sandwiches and the proposed use by 2nd AVE DELI of
the term "triple bypass sandwich." Further, 2nd AVE DELI's efforts to federally register the term
“triple bypass sandwich” as a national mark dilutes HAG's (i) SINGLE BYPASS BURGER; (ii)
DOUBLE BYPASS BURGER; (iii) TRIPLE BYPASS BURGER; and (iv) QUADRUPLE BYPASS
BURGER marks for hamburger sandwiches.
41.

There is a likelihood of dilution between HAG's (i) SINGLE BYPASS BURGER;

(ii) DOUBLE BYPASS BURGER; (iii) TRIPLE BYPASS BURGER; and (iv) QUADRUPLE
BYPASS BURGER marks for hamburger sandwiches and the use by 2nd AVE DELI of the term
"triple bypass sandwich" because 2nd AVE DELI's proposed use of the term "triple bypass
sandwich" in its "Kosher Jewish Delicatessen" tarnishes HAG's medically themed hamburger
restaurant branded as the HEART ATTACK GRILL and its nearly identical marks (i) SINGLE
BYPASS BURGER; (ii) DOUBLE BYPASS BURGER; (iii) TRIPLE BYPASS BURGER; and (iv)
QUADRUPLE BYPASS BURGER..
42.

2nd AVE DELI's complaint alleges it serves "the best kosher New York Delicatessen

food" and is "one of the few kosher Jewish Delicatessens of its kind left in New York... serv[ing]
traditional Jewish fare." HAG's HEART ATTACK GRILL hamburger restaurant uses a medical
theme throughout its entire restaurant as entertainment for its patrons while serving high quality
hamburgers utilizing the marks (i) SINGLE BYPASS BURGER; (ii) DOUBLE BYPASS BURGER;
13

(iii) TRIPLE BYPASS BURGER; and (iv) QUADRUPLE BYPASS BURGER and related food
products.
43.

2nd AVE DELI's efforts to federally register the term "triple bypass sandwich" as a

nationally registered mark dilutes the quality and character and consistent thematic restaurant style
of HAG's (i) SINGLE BYPASS BURGER; (ii) DOUBLE BYPASS BURGER; (iii) TRIPLE
BYPASS BURGER; and (iv) QUADRUPLE BYPASS BURGER marks and the value of HAG's
marks used in connection with its hamburger sandwiches and restaurant services. The intrusion by
2nd AVE DELI with a series of identical medically themed food products is contrary to 2nd AVE
DELI's statements that it is one of "the best kosher New York Delicatessen[s]" and "one of the few
kosher Jewish Delicatessens of its kind left in New York... serv[ing] traditional Jewish fare."
44.

There is a likelihood of dilution between HAG's (i) SINGLE BYPASS BURGER;

(ii) DOUBLE BYPASS BURGER; (iii) TRIPLE BYPASS BURGER; and (iv) QUADRUPLE
BYPASS BURGER marks for hamburger sandwiches and restaurant services and the proposed use
by 2nd AVE DELI of the term "triple bypass sandwich" because 2nd AVE DELI's use of the term
"triple bypass sandwich" in its "Kosher Jewish Delicatessen" causes blurring in the marketplace in
light of HAG's famous (i) SINGLE BYPASS BURGER; (ii) DOUBLE BYPASS BURGER; (iii)
TRIPLE BYPASS BURGER; and (iv) QUADRUPLE BYPASS BURGER marks and its medically
themed hamburger restaurant branded as the HEART ATTACK GRILL.
45.

HAG has been damaged by 2nd AVE DELI’s efforts to dilute HAG’s marks.

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COUNT II - DECLARATORY JUDGMENT ON PLAINTIFFS’
FEDERAL TRADEMARK APPLICATIONS
46.

HAG repeats the allegations of the above paragraphs 1-45 as if fully set forth herein

47.

This is an action for declaratory judgment seeking judicial rulings on 2nd AVE

DELI’s efforts to federally register the terms “instant heart attack sandwich” and “triple bypass
sandwich” as trademarks. As stated earlier, 2nd AVE DELI has sought to register the terms, THE
HEART ATTACK SANDWICH (the ‘751 Application) and TRIPLE BYPASS SANDWICH (the
‘776 Application) with the USPTO.
48.

2nd AVE DELI, through its trademark applications, seeks to use the above identified

product names in a trademark sense.
49.

2nd AVE DELI seeks to benefit from HAG’s nationally established goodwill

encompassed by the HEART ATTACK GRILL Marks. 2nd AVE DELI seeks to trade on HAG’s well
known marks associated with HAG’s medically themed restaurant, all made famous by HAG
extensive and consistent media campaigns.
50.

The 2nd AVE DELI trademark applications were both filed long after the HEART

ATTACK GRILL family of trademarks gained fame throughout the U.S. and worldwide.
51.

If 2nd AVE DELI is permitted to register the terms “instant heart attack sandwich” and

“triple bypass sandwich,” there is a likelihood of consumer confusion relative to both applications
and HAG will be damaged thereby.
52.

Upon information and belief, 2nd AVE DELI did not use the term “instant heart attack

sandwich” as a trademark.
53.

Upon information and belief, 2nd AVE DELI has not yet used the term “triple bypass

sandwich” on any product at the time of these counterclaims.
15

54.

Since the use of the terms “instant heart attack sandwich” and “triple bypass

sandwich” dilutes HAG’s rights or is likely to dilute HAG’s rights, 2nd AVE DELI should not be
permitted to register these terms.
COUNT III - DECLARATORY JUDGMENT RELATIVE TO
PLAINTIFFS’S EXPANSION OF USE
55.

HAG repeats the allegations of the above paragraphs 1-54 as if fully set forth herein

56.

This is an action for declaratory judgment seeking a judicial ruling on 2nd AVE

DELI’s efforts to expand its use of the term “instant heart attack sandwich” and to initiate use of the
term “triple bypass sandwich” as trademarks. 2nd AVE DELI has sought to register the proposed
terms, THE HEART ATTACK SANDWICH (the ‘751 Application) and TRIPLE BYPASS
SANDWICH (the ‘776 Application) with the USPTO.
57.

2nd AVE DELI, through these trademark applications, seeks to expand its use of the

term “instant heart attack sandwich” to cover restaurant services. Additionally, 2nd AVE DELI seeks
to expand its rights geographically with a national registration.
58.

The expansion of use of the term “instant heart attack sandwich” to restaurant services

and the proposed geographic expansion is likely to cause confusion among the public regarding
HEART ATTACK GRILL restaurant services.
59.

2nd AVE DELI seeks to benefit from HAG’s goodwill associated with the HEART

ATTACK GRILL Marks and further to trade on HAG’s well known medically themed restaurant
services and marks made famous by HAG.
60.

The trademark application for the term “instant heart attack sandwich” was filed long

after the HEART ATTACK GRILL family of trademarks gained fame throughout the U.S. and
worldwide.
16

61.

2nd AVE DELI’s efforts to federally register the terms “instant heart attack sandwich”

and “triple bypass sandwich” shows that 2nd AVE DELI seeks to use those terms in connection with
its restaurant services and to expand its use to interstate commerce.
62.

If 2nd AVE DELI is permitted to expand its use of the term “instant heart attack

sandwich” to restaurant services, and to use the term “triple bypass sandwich,” and to expand its
geographic use, there is a likelihood of consumer confusion relative to both uses and HAG will be
damaged thereby.
63.

Upon information and belief, 2nd AVE DELI did not use the term “instant heart attack

sandwich” as a trademark.
64.

Upon information and belief, 2nd AVE DELI has not yet used the term “triple bypass

sandwich” on any product at the time of this counterclaim.
COUNT IV - DECLARATORY JUDGMENT FOR CONCURRENT USE
65.

HAG repeats the allegations of the above paragraphs 1-64 as if fully set forth herein

66.

As an alternative to the relief requested above, this is an action for declaratory

judgment regarding the concurrent use of the phrase HEART ATTACK in the New York area
pursuant to the Lanham Act § 2(d), 15 U.S.C. 1052(d). HAG, in the alternative, seeks a ruling
permitting the concurrent use of (i) the alleged mark “instant heart attack sandwich” for sandwiches
by 2nd AVE DELI in the New York City and (ii) HEART ATTACK GRILL for restaurant services
by HAG throughout the U.S.
67.

2nd AVE DELI seeks to expand its use of the term “instant heart attack sandwich”

from a food product listed only on its menu to a federally registered mark for all sandwiches and,
potentially as a trademark for 2nd AVE DELI’s restaurant services. 2nd AVE DELI has sought to

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register the proposed mark, THE HEART ATTACK SANDWICH (the ‘751 Application) with the
USPTO.
68.

2nd AVE DELI, through its trademark application, seeks to expand its use of the term

“instant heart attack sandwich” from an in-store food product to restaurant services. Geographic
expansion is also asserted beyond New York City.
69.

HAG has national trademark rights to HEART ATTACK GRILL for restaurant

services and is seeking to register HEART ATTACK CAFÉ for restaurant services.
70.

The expansion of use of the term “instant heart attack sandwich” by 2nd AVE DELI

to restaurant services (that is, more specifically, beyond its current potato pancake sandwich to
services or to other food products) and to other geographic areas beyond the New York City is likely
to cause confusion among the public regarding HEART ATTACK GRILL restaurant services and
food products sold from HEART ATTACK GRILL restaurants.
71.

HAG seeks a judicial determination limiting the mode of use of these terms, the

goods and services and the place of use of the term “heart attack” as confined to the goods and
services of the respective parties.
RELIEF REQUESTED
WHEREFORE, Defendants' respectfully request judgment in its favor and against Plaintiffs holding:
I.

That Plaintiffs, and all persons in active concert or participation with any of them, be

enjoined and restrained from, in any manner, either directly or indirectly:
(1) Committing any act which constitutes dilution of HAG's federally registered or
unregistered trademarks or which constitutes conduct likely to cause confusion, mistake, deception
dilution, blurring or tarnishment with respect to HAG's trademarks;

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(2) Making any statement or representation or performing any act which is likely to
lead the public or individual members of the public to believe that the Plaintiffs are, in any manner,
directly or indirectly, associated or connected with, or licensed, authorized, or approved by or on
behalf of HAG, or to believe that any products or services offered for sale or distribution by
Plaintiffs are products or services offered by HAG;
(3) Committing any act which constitutes conduct which is a false or misleading
description of fact concerning the origin, sponsorship and/or approval of the Defendants' goods or,
in commercial advertising or promotion, constitutes a misrepresentation of the nature, characteristics,
and/or qualities of the Plaintiffs' goods as the same relates to HAG's goods or services;
(4) Committing any act of dilution with respect to HAG and its trademarks; and
(5) Using any key words or sponsored advertising with HAG's registered or
unregistered trademarks, or the use of other words or symbols which are likely to cause confusion,
mistake or deception with respect to HAG's trademarks.
II.

Permanent injunctive relief prohibiting Plaintiffs' trademark infringement.

III.

That Plaintiffs be required to account to HAG for any and all profits derived by them

or any of them, and be required to compensate HAG for all actual damages sustained by HAG by
reason of the acts of Plaintiffs described herein.
IV.

That HAG receive pre and post judgment interest.

V.

That Plaintiffs be required to deliver up, for destruction:
(1) All promotional materials that show trademarks identical to, substantially similar

to, or are colorable imitations of HAG's trademarks;

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(2) All signs, menus, marketing materials, ads, websites, promotional CDs, and
brochures that are in the possession, custody or control of the Plaintiffs that show trademarks
identical to, substantially similar to, or which are colorable imitations of HAG's trademarks.
VI.

That HAG be awarded its attorneys fees, costs and expenses in this action.

VII.

That the Court issue orders directing the USPTO deny registration of 2nd AVE DELI’s

trademark applications, and other orders consistent with the relief requested herein.
VIII.

Alternatively, that the Court issue a concurrent use order regarding the phrase “heart

attack” and the mode of use, the goods and services used in connection with the subject phrase, and
the permitted place of use.
IX.

That the Court award HAG such other and further relief as the Court may deem just

and proper.
HAG demands a jury trial.
/RobertKain/____________
Robert C. Kain, Jr., Esq.
SDNY Bar No. (RK 7454)
[e-mail]
Kain & Associates, Attorneys at Law, P.A.
900 Southeast 3rd Avenue, Suite 205
Fort Lauderdale, Florida 33316
Telephone:
[phone]
Facsimile:
[phone]
Counsel for Defendants
Michael J. Quarequio
SDNY Bar No. MQ2170
Michael J. Quarequio, P.A.
320 S.E. 11th Street
Fort Lauderdale, FL 33316
954-524-3324
f - 954-779-1767
[e-mail]
Counsel for Defendants

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CERTIFICATE OF SERVICE
I hereby certify that on __Aug. 18, 2011___________, I electronically filed the foregoing
document with the Clerk of the Court using CM/ECF. I also certify that the foregoing document is
being served this day on all counsel of record or pro se parties identified on the attached Service List
in the manner specified, either via transmission of Notices of Electronic Filing generated by
CM/ECF or in some other authorized manner for those counsel or parties who are not authorized to
receive electronically Notices of Electronic Filing.
William W. Chuang, Esq.
Jakubowitz & Chuang LLP
401 Broadway
Suite 408
New York, NY 10013
Attorneys for Plaintiffs
/RobertKain/
Robert C. Kain, Jr., Esq.
SDNY Bar No. (RK 7454)

G :\R C K\C LIEN TS\Heart-Attack(HAG )\Lebew ohl-2nd-Ave-D eli-v-Heart-Attack\Plead-amended-answ er-counterclaim-v1.w pd

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