THE STEAK UMM COMPANY, LLC v. STEAK 'EM UP, INC.

Filing 88

MEMORANDUM AND ORDER THAT THE DEFENDANT DID NOT INFRINGE ON PLAINTIFF'S MARK. NOR IS THE DEFENDANT LIABLE FOR ANY OF THE OTHER CLAIMS ALLEGED. THE PLAINTIFF FAILED TO ESTABLISH GROUNDS FOR INJUNCTIVE RELIEF. JUDGMENT WILL BE ENTERED IN FAVOR OF THE DEFENDANT STEAM EM UP, INC. AND AGAINST THE PLAINTIFF, THE STEAK UMM COMPANY, LLC; ETC.. SIGNED BY HONORABLE LAWRENCE F. STENGEL ON 4/11/12. 4/12/12 ENTERED AND E-MAILED.(jl, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
THE STEAK UMM COMPANY, LLC, :
Plaintiff,
:
:
:
STEAK ‘EM UP, INC.,
:
Defendant.
:

CIVIL ACTION
NO. 09-2857

MEMORANDUM
STENGEL, J.

April 11, 2012

Steak Umm, a national seller of frozen steak and hamburger products wants Steak
‘Em-Up, a South Philadelphia pizza shop and corner grocery, to change its name. Steak
Umm alleges that the Steak ‘Em-Up name infringes on its trademark and has filed claims
under the Lanham Act for infringement, unfair competition and false designation of
origin, as well as federal and state trademark dilution claims.
The parties filed cross-motions for summary judgment which were denied with
respect to Steak Umm’s trademark infringement, unfair competition and false designation
claims. I granted summary judgment in favor of Steak ‘Em-Up on the dilution claims
and claims for actual damages, treble damages, attorney’s fees, and an accounting of
profits.1 The only claim remaining is a request for an injunction to prevent trademark
infringement. Each side presented its case in a bench trial and I make the following
findings of fact and conclusions of law pursuant to FED. R. CIV. P. 52.

1

See Summary Judgment Opinion and Order (Doc. Nos. 60 & 61), available at Steak Umm Co., LLC v. Steak ‘Em
Up, Inc., 2011 U.S. Dist. LEXIS 94088 (E.D. Pa. Aug. 23, 2011) (finding no evidence of actual injury or actual
damages).

I.

FINDINGS OF FACT
A.

The Steak Umm Company, Inc.

1.

Steak Umm produces frozen sliced steak and hamburger products for sale

in grocery stores across the United States.
2.

Steak Umm is a limited liability company created and existing under the

laws of the State of Delaware, with its principal place of business in Reading,
Pennsylvania.
3.

Gene Gagliardi, the founder of Steak Umm, conceived of the “Steak-umm”

name for his product in 1975.2
4.

Steak Umm has marketed and sold frozen steak products using the “Steak

Umm” mark since 1975.
5.

Steak Umm applied for and obtained a federal registration for the trademark

“Steak-umm.” Registration No. 1,033,176 was issued in February 1976 (through a
predecessor company) noting use of the mark “Steak-umm” since at least February 1975
for meat products, specifically steak.
6.

Steak Umm is currently owned by Quaker Maid Meats, Inc. Sergei

Szortyka, the president of Quaker Maid Meats, acquired Steak Umm in May 2006.

2

Mr. Gagliardi’s colorful testimony included a description of the etiology of the Steak Umm name. Apparently, Mr.
Gagliardi was quail hunting with two friends and focusing on the name of his new meat product more than he was
concentrating on quail. After a period of quail hunting and bourbon drinking, one of Mr. Gagliardi’s fed up friends
expressed his frustrations with Gagliardi’s elevation of product naming over quail shooting and shouted “F*ck ‘em,
stick ‘em with Steak Umm!” From that moment, “Steak Umm,” indeed stuck with Gagliardi and became the name
of his new meat product. The catchy phrase, and the chance to memorialize a presumably high moment of male
bonding gave birth to the Steak Umm name. It apparently has nothing to do with product quality, consumer appeal,
taste or satisfying the appetite and everything to do with a memorable, if somewhat dubious, flourish.

2

7.

Quaker Maid Meats acquired Steak Umm solely for its customer list and

intellectual property, and not for any other assets or equipment.
8.

Steak Umm advertises in print, on national television, and on the internet

through its website. It maintains a website for informational and marketing purposes.
9.

Steak Umm also began selling frozen hamburger products in 2009.

10.

Steak Umm sliced steaks are made from chopped and formed emulsified

meat product that is comprised of beef trimmings left over after an animal is slaughtered
and all of the primary cuts, such as tenderloin, filet, and rib eye are removed. The
emulsified meat is pressed into a loaf and sliced, frozen and packaged.
11.

Steak Umm ships 100% of its frozen products to supermarkets; the product

is available to consumers in the frozen food section of the store.
12.

Steak Umm has advertised its products through nationwide television

broadcasts, packaging, print advertising through supermarkets, in-store demonstrations,
social media, word-of-mouth advertising, advertising at sporting events, as well as
through the Internet and the Steak Umm website.
13.

Most recently, Steak Umm has aired 10-second television commercials

during Jeopardy, Judge Judy, Blind Date, CNN Headline News, Dr. Phil, Family Feud,
Millionaire, and Wheel of Fortune, all television shows with a national audience.
B.

Steak ‘Em-Up, Inc.

14.

Steak ‘Em-Up is a South Philadelphia steak sandwich shop which sells

prepared food, including pizza and steak sandwiches. It has takeout and delivery
services. Steak ‘Em-Up’s original location is at the corner of 11th and Shunk streets in
3

the City of Philadelphia. Recently, a second store opened in Collingdale, Pennsylvania, a
suburb of Philadelphia.
15.

Michael Lane, the founder of Steak ‘Em-Up, began planning for his store in

2003. He first wanted to use the name “Steak Out” to evoke the image of a “police stake
out.” However, he learned the name “Steak Out” was used by a sandwich shop that had
burned down less than one mile from his planned location. Mr. Lane eventually decided
on the name “Steak ‘Em-Up,” a play on the phrase “stick ‘em-up.” It was his intention
to refer to the criminal gangster culture that he considers to be popular in South
Philadelphia.
16.

As part of establishing his brand, Mr. Lane developed a logo featuring a

cartoon-gangster holding a hoagie as if it were a gun. This logo accompanies the name
“Steak ‘Em-Up” in nearly all advertisements and signage.
17.

Mr. Lane formed the company on June 4, 2003, began construction at the

Philadelphia location in 2004, and opened the doors of his retail grocery and take-out and
delivery food service to the public in October 2005.
18.

Mr. Lane hired counsel in 2003 to incorporate his business and file all

necessary papers with the Commonwealth of Pennsylvania. He assumed that if the name
“Steak ‘Em-Up” was taken or unavailable he would not have been allowed to use the
name.
19.

Steak ‘Em-Up was incorporated under the laws of the Commonwealth of

Pennsylvania, with its principal place of business at 2600 South 11th Street, Philadelphia,
Pennsylvania.
4

20.

The grocery items available for purchase in Steak ‘Em-Up’s store include

items typically found in a neighborhood convenience store, such as bread, milk, juice,
eggs, canned goods, and paper products.
21.

The made to order items Steak ‘Em-Up provides for take-out and delivery

include appetizers, pizza, and a variety of sandwiches and salads. Steak ‘Em-Up’s menu
includes approximately 225 different items, eight of which are steak sandwiches and ten
of which are variations of hamburgers.
22.

Steak ‘Em-Up does not offer for sale or sell any frozen, thinly sliced steak

or hamburger products and never has. Steak ‘Em-Up neither sells Steak Umm products
nor does it use Steak Umm products in its sandwiches.
23.

Steak ‘Em-Up uses 100% rib eye cut steak to make its sandwiches. The rib

eye is a higher quality meat than the pressed, emulsified meat mixture used to make the
Steak Umm steak product.
24.

Steak ‘Em-Up advertises in a local South Philadelphia paper, on local

television, through its website, by distributing menus locally, and through word-of-mouth
advertising. Mr. Lane purchases television advertising on cable channels for viewing in
two limited markets: South Philadelphia and Center City Philadelphia.
25.

Steak ‘Em-Up’s customers are typically persons who live or work within a

short walking or driving distance from its two stores. Delivery is available within
approximately a two-mile radius from each store and Mr. Lane estimates that 90% of his
customers live within a one-mile radius of each store.

5

26.

Mr. Lane is not aware of a single instance where a customer of his store has

reported or questioned the source or sponsorship of Steak ‘Em-Up’s products. Mr. Lane
is not aware of any instance where a customer reported confusion about whether Steak
‘Em-Up is affiliated with Steak Umm.
C.

Steak Umm Is Made Aware of Steak ‘Em-Up

27.

In 2009, Mr. Gagliardi’s brother contacted Mr. Gagliardi and asked if he

knew about Steak ‘Em-Up.
28.

Mr. Gagliardi was mistaken as to the spelling of the Defendant’s name and

believed it was spelled “S-t-e-a-k-u-m-m U-p.”
29.

Mr. Gagliardi called Mr. Szortkya because he did not know if there was a

connection between Steak Umm and Steak ‘Em-Up.
30.

Mr. Szortyka ran an internet search for “Steak Um Up” which returned

results for both “Steak Um Up” and “Steak ‘Em-Up,” both of which showed the
Defendant’s Philadelphia address and phone number.
31.

“Steak Um Up” is not the name of the Defendant’s store.

D.

Similarity of Plaintiff and Defendant’s Marks

32.

Steak Umm is a national seller of frozen products for resale in grocery

supermarkets, whereas Steak ‘Em-Up operates a corner grocery store and take-out and
delivery pizza shop in two locations in Pennsylvania.
33.

Steak Umm and Steak ‘Em-Up are not direct competitors.

6

34.

With respect to the appearance of the marks, the Court finds that the marks

are visually distinct. Examples of the two marks are shown below:

35.

“Steak-umm” is presented in commerce on frozen food boxes with only

one capital letter, the “S,” whereas “STEAK ‘EM-UP” is presented on plaintiff’s corner
pizza shop sign and on menus in all capitals.
36.

Steak Umm products are sold in a red box and are accompanied by the

words “Sliced Steaks” or “Burgers.” Steak ‘Em-Up’s menus and street signs are
accompanied by the words “OPEN 7 DAYS” and “WE DELIVER.”
37.

The Steak ‘Em-Up mark is almost always accompanied by a distinctive

cartoon character logo that looks like a mobster holding a hoagie as a machine gun. The
Steak Umm mark does not have a cartoon character on its boxes. Instead, Steak Umm
boxes contain an image of a prepared steak or burger product. Since the defendant’s
inception, with the exception of an isolated period of a few months for radio
advertisements, the defendant’s public presentation of its brand always includes the
mobster logo.

7

38.

With respect to the sound of the mark, the Court finds that the marks sound

only nominally similar. The term “Steak Umm” is two syllables, whereas “Steak ‘EmUp is three syllables.
39.

With respect to the meaning of the mark, the Court finds that the marks are

dissimilar. Mr. Szortyka testified that the “-umm” portion of the Steak umm mark makes
a sound that connotes “tastiness,” like “yumm.”3 “Steak ‘Em-Up” is a play on words of
the phrase “Stick ‘Em-Up,” meaning “Stick them up.” The Court finds that “Steak
umm” has a very different meaning from “Steak ‘Em-Up.
E.

Strength of the Plaintiff’s Mark

40.

The conceptual strength of the mark is a question of fact. See E.T. Browne

Drug Co. v. Cococare Prods. Inc., 538 F.3d 185, 192 (3d Cir. 2008) (“Whether ‘Cococare
Butter Formula’ is generic or descriptive, and whether that term has acquired secondary
meaning, are questions of fact.”)
41.

The word “Steak” suggests a food product and the word “Umm” sounds

like “mmm,” a suggestion that the product tastes good. The consumer is left with only
this impression and must draw his own conclusions about the identity of the product.
42.

I find that the Plaintiff’s mark is “suggestive” in that it suggests the nature

of the product, but does not actually describe the product.4
43.

Steak Umm did not offer any records demonstrating factual evidence of

marketplace recognition. Steak Umm failed to put forth evidence of the outlets in which
3

Mr. Gagliardi’s testimony about the origin of the brand name “Steak Umm” suggests that the name had nothing to
do with flavor or “tastiness.”
4

See discussion of suggestive marks in Conclusions of Law, supra at ¶¶ 20-29.

8

the relevant products are sold, the advertising and marketing history behind the mark, and
its position in the marketplace.
F.

Prices of Products

44.

The price of Steak Umm sandwich steak varies throughout the United

States, but is roughly $4 to $15 per package. The range of the price is a function of the
number of steak products within the package.
45.

The price of Steak Umm burger patties ranges from $8.99 to $10.99. Like

the sandwich steaks, the range of the price is a function of the number of burger patties
within the package.
46.

The price points of Steak ‘Em-Up’s prepared food products vary from

$6.00 sandwiches to $13.00 pizzas to $75.00 for a Stromboli tray.
47.

Steak Umm sandwich steak prices vary from $4 to $15 per package. Steak

‘Em-Up’s prepared food products vary in cost, but a review of their store menu shows
that most of their products fall within the $4 to $15 price range as well. Specifically,
their sandwich steaks are approximately $5 to $7.
48.

Steak Umm burger patties range from $8.99 to $10.99 and Steak ‘Em-Up

burgers range from $5 to $7.
G.

Actual Confusion

49.

The parties have used their respective marks concurrently for six years

without a single reported instance of actual confusion by a consumer.
50.

Steak ‘Em-Up is not aware of a single instance of actual consumer

confusion since it opened its doors in 2005.
9

51.

Steak Umm is not aware of a single instance of actual confusion as to the

source, sponsorship, or affiliation of the parties respective goods since Steak ‘Em-Up
opened its doors in 2005.
52.

The Defendant has never used the terms “steak um,” “steak um up,” or

“steak ‘em” (without the “up”) to refer to its business.
53.

Plaintiff’s Google searched revealed that some restaurant websites list

“Steak Um Up” as a restaurant at Steak ‘Em-Up’s Philadelphia address.
54.

Plaintiff has produced no evidence that a potential consumer has, or is

likely to, search the phrase “Steak um up” in an attempt to locate defendant on the
internet. Given that the terms used are not necessarily terms a consumer would search
for, and that restaurant websites are not actual consumers, these searches alone are weak
evidence, if evidence at all, of consumer confusion.
55.

The internet search results produced by the Plaintiff are not the Defendant’s

advertisements. Steak ‘Em-Up is not involved in directing, sponsoring, requesting or
otherwise controlling the contents of the websites.
56.

There is no evidence indicating whether the “steak um up” listings were the

results of a single typographical error in a database that was accessed and proliferated
throughout the internet, or if each listing was independently created on those respective
websites. Regardless, these restaurant websites are not clear evidence of actual confusion
by a consumer.
57.

I find that the Plaintiff’s internet searches are not evidence of actual

consumer confusion.
10

H.

Expert Survey

58.

Plaintiff presented Robert Klein as an expert witness to offer an opinion

measuring the likelihood of confusion between Steak Umm and Steak ‘Em-Up.
59.

Mr. Klein designed, conducted, and analyzed a survey in an attempt to

measure the likelihood of confusion between the Steak Umm name and the Steak ‘EmUp name.5 The survey included 607 respondents.
60.

Mr. Klein found that as many as 24.1% of the survey respondents were

confused as to the source of products sold by Steak ‘Em-Up because of the similarity of
the names Steak Umm and Steak ‘Em-Up. He also found that as few as 12.9% of the
survey respondents were confused.
61.

The Klein survey mixed inquiries about Steak ‘Em-Up’s use of Steak Umm

products with inquiries about any “connection or affiliation” between Steak ‘Em-Up and
Steak Umm. The Plaintiff has never contended that Steak ‘Em-Up uses or serves Steak
Umm products. The evidence at trial establishes that Steak ‘Em-Up has never served
Steak Umm products in the past, does not presently serve Steak Umm products, and will
not in the future serve or use Steak Umm products.6 The Klein survey focuses on an
inquiry that has no relevance to this case and which has nothing to do with the likelihood

5

In Question 1, respondents were asked “Do you believe that this restaurant [does serve or use the products you saw
earlier] or do you believe this restaurant [does not serve or use the products you saw earlier]?” The order of
presentation of the two bracketed parts of the question was randomized. For respondents who answered “no” and “I
don’t know” to Question 1, they were asked Question 4 which posed “Do you believe that this restaurant [is
connected or affiliated with the company that puts out the products you saw earlier] or do you believe this restaurant
[is not connected or affiliated with the company that put out the products you saw earlier]?” The order of
presentation of the two bracketed parts of the question was randomized.
6

In fact, the owner of Steak ‘Em-Up considers the pressed, emulsified meat product sold by Steak Umm to be
inferior to the rib eye cut of steak he uses to make his sandwiches.

11

of confusion between the brands. This point alone renders the survey unreliable as an
indicator of the likelihood of confusion to the consumer. With regard to the connection
or affiliation inquiry, I find that the Klein survey unduly suggests to the survey
participants that there may be some affiliation or connection simply by the use of the
word “steak” in each name without any explanation or any additional information about
the two entities.

II.

CONCLUSIONS OF LAW
1.

Federal claims for trademark infringement and unfair competition are

governed by the Lanham Act, 15 U.S.C. §§ 1051, et. seq.
2.

The purpose of the Lanham Act is to make “actionable the deceptive and

misleading use of marks” and to “protect against unfair competition.” Two Pesos, Inc. v.
Taco Cabana, Inc., 505 U.S. 763, 767-68 (1992) (quoting 15 U.S.C. § 1127).
3.

To prevail on a claim for trademark infringement, a plaintiff must establish

the following three elements: (1) the trademark that is being infringed is valid, (2) the
plaintiff owns the trademark in question, and (3) the defendant’s use of the mark is likely
to cause confusion. A & H Sportswear, Inc. v. Victoria’s Secret Stores, Inc., 237 F.3d
198, 210 (3d Cir. 2000).
4.

Federal trademark infringement, 15 U.S.C. §§ 1114-1118, and federal

unfair competition, 15 U.S.C. § 1125(a), are measured by identical standards. A & H
Sportswear, Inc., 237 F.3d at 210.

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5.

Here, the validity and ownership of the “Steak Umm” mark are not

contested.
6.

Thus, the critical question before the Court is whether the typical consumer

viewing Defendant’s “Steak ‘Em-Up” mark would assume the products and services it
represents are associated with the Plaintiff’s mark, “Steak Umm.”7
7.

The Third Circuit has identified ten factors, known as the Lapp factors, to

be considered when determining whether a likelihood of confusion exists:
1. The degree of similarity between the owner’s mark and the
alleged infringing mark;
2. The strength of the owner’s mark;
3. The price of the goods and other factors indicative of the
care and attention expected of consumers when making a
purchase;
4. The length of time the defendant has used the mark without
evidence of actual confusion arising;
5. The intent of the defendant in adopting the mark;
6. The evidence of actual confusion;
7. Whether the goods, competing or not competing, are
marketed through the same channels of trade and advertised
through the same media;
8. The extent to which the targets of the parties’ sales efforts
are the same;
9. The relationship of the goods in the minds of the consumers,
whether because of the near-identity of the products, the
similarity of function, or other factors;
7

This is a source confusion case and is in contrast to “product confusion,” where a plaintiff is concerned that a
consumer looking to buy its product will mistakenly buy a product produced by someone else.

13

10. Other facts suggesting that the consuming public might
expect the prior owner to manufacture both products, or
expect the prior owner to manufacture a product in the
defendant’s market, or expect that the prior owner is likely to
expand into the defendant’s market.
Interpace Corp. v. Lapp, Inc., 721 F.2d 460, 463 (3d Cir. 1983).8
8.

An analysis of the Lapp factors overwhelmingly weighs in favor of

Defendant Steak ‘Em-Up and establishes that there is no likelihood of confusion between
Steak Umm and Steak ‘Em-Up.
A.

First Factor – Plaintiff and Defendant’s Marks Are Not Similar

9.

“The single most important factor in determining likelihood of confusion is

mark similarity.” A & H Sportswear, 237 F.3d at 216.
10.

Marks are confusingly similar “if ordinary consumers would likely

conclude that [the two products] share a common source, affiliation, connection or
sponsorship.” Fisons Horticulture, Inc. v. Vigoro Indus., Inc., 30 F.3d 466, 477 (3d Cir.
1994).
11.

Marks are not compared side by side, but are examined separately to

determine if they create the same overall impression when viewed by an average
consumer in isolation. A & H Sportswear, 237 F.3d at 216-17.

8

“None of these factors is determinative in the likelihood of confusion analysis and each factor must be weighed
and balanced one against the other.” Checkpoint Sys. Inc. v. Check Point Software Techs., Inc., 269 F.3d 270, 280
(3d Cir. 2001). The Lapp test need not be “followed precisely so long as the relevant comparisons suggested by the
test are made.” A & H Sportswear, 237 F.3d at 207. The District Court must provide an explanation for any of the
Lapp factors it finds inapplicable or unhelpful. Id. at 214 n.8. The factors are not to be “mechanically tallied,” but
rather are tools to guide a qualitative decision. Id. at 216.

14

12.

The overall impression of the mark is created by the sight, sound, and

meaning of the mark. A & H Sportswear, 237 F.3d at 216-217.
13.

Marks should be viewed in their entirety, but more dominant and forceful

aspects of the mark should be given more weight. Country Floors, Inc., v. Gepner, 930
F.2d 1056, 1065 (3d Cir. 1991).
14.

The degree of similarity needed to show likelihood of confusion varies: it is

lower when the products are directly competitive and higher when they are not. Sabinsa
Corp. v. Creative Compounds, LLC, 609 F.3d 175, 183-84 (3d Cir. 2010).
15.

Because the parties are not direct competitors, a higher degree of similarity

is required to show likelihood of confusion.
16.

To say, as the plaintiff does here, that to the everyday consumer, “Steak

Umm” and “Steak ‘Em” are indistinguishable when spoken aloud, is misleading. “Steak
‘Em” is not the name of the Defendant. The words “Steak ‘Em-Up” are always read
together when identifying the Defendant’s product. Defendant has never used “Steak
‘Em” alone in its advertising efforts. To simply say “Steak ‘Em” would be the equivalent
of saying “Stick ‘Em” and omitting the “Up” in the well-known phrase. I find that this is
extremely unlikely to occur among consumers of Steak ‘Em-Up’s products.
17.

The evidence shows that the marks sound somewhat similar, but are

visually distinct. The marks have different appearances and meanings and sound only
nominally similar. Accordingly, this Court finds that the marks are not similar and
weighs this factor in favor of the defendant. See Findings of Fact ¶¶ 32 – 39.

15

B.

Second Factor – Plaintiff’s Mark is Not Strong

18.

The second factor in the “confusion” analysis is the strength of the

plaintiff’s mark.
19.

The strength of a mark is measured by (1) the distinctiveness or conceptual

strength of the mark, and (2) the commercial strength or marketplace recognition of the
mark. Freedom Card, Inc. v. JP Morgan Chase & Co., 432 F.3d 463, 472 (3d Cir. 2005).
i.
20.

Plaintiff’s mark is suggestive

The conceptual strength of the mark is a question of fact. See E.T. Browne

Drug Co. v. Cococare Prods., Inc., 538 F.3d 185, 192 (3d Cir. 2008) (“Whether
‘Cococare Butter Formula’ is generic or descriptive, and whether that term has acquired
secondary meaning, are questions of fact.”).
21.

The conceptual strength of a mark falls into one of four categories (from

strongest to weakest): (1) arbitrary or fanciful (“Kodak”); (2) suggestive (“Coppertone”);
(3) descriptive (“Security Center”); and (4) generic (“Diet Chocolate Fudge Soda”).
Freedom Card, 432 F.3d at 472 (citing A&H Sportswear, 237 F.3d at 221).
22.

“Stronger marks receive stronger protection.” Id.

23.

Arbitrary or fanciful marks are marks that suggest nothing about the

product and bear no logical relation to the actual goods. A & H Sportswear, 237 F.3d at
221 (internal citation omitted).
24.

Suggestive marks “require consumer imagination, thought, or perception to

determine what the product is.” Id. at 221-22.

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25.

Descriptive marks “convey an immediate idea of the ingredients, qualities,

or characteristics of the goods.” Id. at 222 (internal quotations omitted).
26.

Generic marks are the common descriptive name of the product class. Id.

27.

Protection under the Lanham Act is only given to arbitrary or fanciful

marks, suggestive marks, and descriptive marks with a secondary meaning, with greater
protection reserved for arbitrary or fanciful marks and suggestive marks. Id.
28.

“In classifying a mark, the Court does not look to the intent of the party

choosing that mark. Instead, the impact of the mark on the minds of prospective
consumers is controlling.” Id.
29.

I conclude that the Plaintiff’s mark is “suggestive” and deserves stronger

protection than descriptive marks, but less protection than arbitrary or fanciful marks.
See Findings of Fact ¶¶ 40 – 43.
ii.

30.

There is little evidence to show that the plaintiff’s mark is
commercially strong

With respect to the second prong of the test measuring the strength of a

mark, commercial strength is measured by factual evidence of marketplace recognition.
Urban Outfitters, Inc. v. BCBG Max Azria Group, Inc., 511 F.Supp. 2d 482, 493 (E.D.
Pa. 2007).
31.

Such evidence includes records showing the nature of the mark, the outlets

in which the relevant products are sold, the advertising and marketing history behind the
mark, and its position in the marketplace. See id.

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32.

Mr. Gagliardi opined that Steak Umm has a “92% awareness in the

marketplace” and, as a result, commands a premium on price. Steak Umm did not offer
any evidence to corroborate or substantiate this self-serving opinion. Steak Umm did not
offer records showing the outlets in which the relevant products are sold, the advertising
and marketing history behind the mark, or its position in the marketplace. Steak Umm
did not produce surveys showing actual recognition of the Steak Umm mark. Steak
Umm did not demonstrate the frequency in which its television ads appear and offered no
documentary evidence to corroborate the mark’s commercial strength. Steak Umm’s
product is available for purchase in some supermarkets across the United States and that
is some evidence of strength. However, that fact alone does not warrant the conclusion
that the Steak Umm mark is commercially strong. See First Keystone Federal Savings
Bank, 896 F. Supp at 461 (E.D. Pa. 1995). The enthusiastic but unsupported opinion of
Mr. Gagliardi is not alone sufficient to establish the commercial strength of the Steak
Umm mark.
33.

The Plaintiff failed to demonstrate that its mark is commercially strong.

Accordingly, the second factor weighs in favor of the Defendant. The Steak Umm brand
is, at best, suggestive, and while deserving protection, is not as conceptually strong as an
arbitrary or fanciful mark.
C.

Third Factor – The Parties Sell Different Products at Similar Price
Points

34.

The more sophisticated the consumer, and the more care and attention

involved in purchasing a product, the less likely confusion becomes. EMSL Analytical,
18

Inc v. Testamerica Analytical Testing Corp., No. 05-5259, 2006 WL 892718 at *8
(D.N.J. Apr. 4, 2006).
35.

Price is relevant to the likelihood of confusion inquiry because consumers

are likely to exercise less caution when purchasing inexpensive products than they are
when purchasing expensive products, and vice versa. McNeil Nutritionals, LLC v.
Heartland Sweeteners, LLC, 511 F.3d 350, 363-64 (3d Cir. 2007) (citing Versa Prods.
Co., Inc. v. Bifold Co. (Mfg.) Ltd., 50 F.3d 189, 204-05 (3d Cir. 1995).
36.

Inexpensive items therefore tend to have a greater probability of creating

confusion. If the difference in price between two products is large enough that they are
purchased by two entirely different classes of people, confusion is less likely. See J.
Thomas McCarthy, Trademarks and Unfair Competition § 24:52 (4th ed. 2003); R.J.
Ants, Inc. v. Marinelli Enter., LLC, 771 F. Supp. 2d 475, 494-95 (E.D. Pa. 2011).
37.

This factor weighs slightly in favor of the Plaintiff because the parties’

products are similar, i.e., both are food products, and both are, generally speaking,
inexpensive. There was no evidence in this case about the level of sophistication of the
average consumer of each product.
38.

I will accord this factor less weight in my analysis because the goods

offered by each party are somewhat distinct. Steak Umm targets consumers who wish to
buy a frozen meat product in the supermarket and cook a meal at home. Steak ‘Em-Up
targets the consumer who wishes to have a meal prepared for him. While there will
invariably be some overlap in targeting prospective consumers, i.e. those who enjoy steak
sandwiches will be drawn to both products, the context within which the consumers enjoy
19

the steak sandwiches sets the products apart. I find this factor less applicable than the
others and accord it little weight. See Findings of Fact ¶¶ 44 – 48.
D.

Fourth and Sixth Factors – There is No Actual Confusion

39.

The fourth factor concerns the length of time defendant has used the mark

without evidence of actual confusion arising.
40.

“[T]wo parties’ concurrent use of similar marks for a sufficient period of

time without evidence of consumer confusion about the source of the products allows an
inference that future consumers will not be confused either.” Kos Pharm., Inc. v. Andrx
Corp., 369 F.3d 700, 717 (3d Cir. 2004) (citing Fisons, 30 F.3d at 476) (internal
quotations omitted).
41.

This factor is weighed alongside evidence of actual confusion, the sixth

42.

“Evidence of actual confusion is not required to prove likelihood of

factor.

confusion” and, as it is generally difficult to find, it is highly probative where present.
Checkpoint Sys., Inc. v. Checkpoint Software Tech., Inc., 269 F.3d 270, 291 (3d Cir.
2001).
43.

Evidence of actual confusion will weigh highly in favor of a plaintiff, but

courts are cautioned to view isolated instances of confusion with skepticism. See A & H
Sportswear, 237 F.3d at 227 (citing World Carpets, Inc. v. Dick Litterell’s New World
Carpets, 438 F.2d 482, 489 (5th Cir. 1971) and Amstar Corp. v. Domino's Pizza, Inc.,
615 F.2d 252, 263 (5th Cir.1980)).

20

44.

There is no evidence of actual consumer confusion in this case. See

Findings of Fact ¶¶ 49 – 57.
45.

“In some cases, survey evidence can serve to demonstrate evidence of

actual confusion, but only to the extent that the survey replicates the real world setting in
which instances of actual confusion would occur.” Urban Outfitters, Inc. v. BCBG Max
Azria Group, Inc., 511 F. Supp. 2d 482, 498 (E.D. Pa. 2007).
46.

Steak Umm’s survey of consumers is not evidence of actual confusion nor

is it evidence of likelihood of confusion. See Discussion, supra at p. 28.
47.

The fundamental flaws in Mr. Klein’s survey render the results unreliable.

Dr. Michael Rappeport, an expert in brand surveys testified for Steak ‘Em-Up in this case
and presented a critique of Mr. Klein’s work. Dr. Rappeport contends that Klein’s data
suggests that no more than 10% of those surveyed by Klein are likely to be confused.
48.

The court weighs this Lapp factor substantially in favor of the Defendant

because there is no evidence of actual confusion, Mr. Klein’s survey results are flawed,
and there is no evidence demonstrating a likelihood of confusion. Even if this Court were
to give the Plaintiff the benefit of the Defendant’s expert’s estimate of a 10% likelihood
of confusion, this factor would still weigh substantially in favor of the Defendant.
Furthermore, even if this Court accepted Mr. Klein’s flawed survey analysis of 12.9%
likelihood of confusion, given the lack of actual confusion, this factor would weigh in
favor of the Defendant. After considering the testimony presented at trial and the
numerous submissions to the Court, I find Dr. Rappeport’s critique of Mr. Klein’s survey
particularly credible and helpful. Accordingly, I find there is no likelihood of confusion
21

to demonstrate actual confusion, and given the lack of actual confusion, these factors
weigh substantially in favor of the Defendant.
E.

Fifth Factor – Defendant Did Not Intend to Cause Confusion

49.

When analyzing the intent of the Defendant, courts are to consider (1)

whether that defendant chose a mark to intentionally confuse consumers, and thereby
capitalize on the senior mark’s goodwill, and (2) whether the defendant used adequate
care in investigating its mark prior to adoption. Sabinsa Corp., 609 F.3d at 187 (citing
Kos, 369 F.3d at 72 n. 1).
50.

“[E]vidence of intentional, willful and admitted adoption of a mark closely

similar to the existing marks weighs strongly in favor of finding the likelihood of
confusion.” Checkpoint, 269 F.3d at 286. This inquiry extends beyond asking whether a
defendant purposely chose its mark to promote confusion and appropriate the prior user’s
good will. Fisons Horticulture, Inc., 30 F.3d at 479.
51.

“The adequacy and care with which a defendant investigates and evaluates

its proposed mark, and its knowledge of similar marks or allegations of potential
confusion, are highly relevant.” Kos Pharms, Inc., 369 F.3d at 721.
52.

The record clearly indicates that Mr. Lane did not intend to capitalize on

the goodwill of the Steak Umm mark when choosing his mark. Mr. Lane also testified
credibly that he did not intend for his store name and logo to suggest a connection to
Steak Umm. See Findings of Fact ¶¶ 15 – 19.

22

53.

Accordingly, this factor significantly favors Steak ‘Em-Up because Mr.

Lane did not have an intent to cause confusion. Plaintiff has produced no evidence of
any intent to cause confusion by the Defendant.
F.

Seventh and Eighth Factors: The Companies Use Only Some of the
Same Forms of Advertisement But Target Different Customers

54.

Factors seven and eight are closely related.

55.

The seventh factor for this Court to consider is whether the goods,

competing or not competing, are marketed through the same channels of trade and
advertised through the same media. Strike Holdings LLC v. UC Strikes, LLC, 2005 U.S.
Dist. LEXIS 15398, at *25.
56.

“[T]he greater the similarity in advertising and marketing campaigns, the

greater the likelihood of confusion.” Checkpoint, 269 F.3d at 288-89.
57.

This is a “fact intensive inquiry” that requires a court to examine the

“media the parties use in marketing their products as well as the manner in which the
parties use their sales forces to sell their products to consumers.” Id. at 289.
58.

The eighth factor looks to whether the “parties target their sales efforts to

the same consumers.” Checkpoint, 269 F.3d at 289.
59.

The two companies use only some of the same channels of advertising –

specifically the internet and newspapers. However, there is little geographical or
intended customer overlap in their advertising campaigns.
60.

Steak ‘Em-Up targets customers who are local, whereas Steak Umm targets

customers nationally. Steak ‘Em-Up delivers solely within a two-mile radius of its store,
23

and estimates that an overwhelming majority of its customers live within a one-mile
radius.
61.

Steak Umm’s television commercials are broadcast nationwide. Steak

‘Em-Up’s television commercials are broadcast in the Philadelphia region only. See
Findings of Fact ¶¶ 12, 24.
62.

Steak Umm targets grocery shoppers looking to buy frozen steaks to cook

at home, whereas Steak ‘Em-Up targets customers who are looking for unfrozen,
prepared foods to take out of its restaurant.
63.

Given the differences in advertising and the different target consumers, I

find that these factors overwhelmingly weigh in favor of Steak ‘Em-Up.
G.

Factors Nine and Ten: There is No Relationship Between the Goods in
the Minds of Consumers and The Consuming Public Does Not Expect
the Prior Owner to Manufacture Both Products, Manufacture a
Product In The Defendant’s Market, or Expand Into the Defendant’s
Market

64.

In assessing factor nine, a court will analyze the relationship of the parties’

goods in the minds of consumers.
65.

“The question is how similar, or closely related, the products are.” Kos

Pharms., Inc., 369 F.3d at 723.
66.

This factor focuses on the nature of the products themselves, asking

whether it would be reasonable for consumers to associate them or view them as related.
See id.

24

67.

Courts may consider “whether buyers and users of each parties’ goods are

likely to encounter the goods of the other, creating an assumption of common source[,]
affiliation or sponsorship.” Checkpoint, 268 F.3d at 286.
68.

Similarly, factor ten seeks to determine whether a reasonable consumer

could conclude that a plaintiff has expanded into the defendant’s market, regardless of
whether the plaintiff actually has expanded or has any intent to expand. See Wynn Oil
Co. v. Thomas, 839 F.2d 1183, 1187 (6th Cir. 1988) (finding consumer of a company’s
car wash products would “easily assume” that the company expanded into the car wash
service business).
69.

At trial, a stipulation established that twelve customers of Steak ‘Em-Up

were aware of the Steak Umm brand products at the time the Defendant opened its store,
and did not believe Steak ‘Em-Up was connected to the Steak Umm company. These
consumers did not believe that Steak ‘Em-Up was related to Steak Umm.
70.

I conclude that there are clear differences between the products, how they

are sold, and to whom they are sold. I conclude that the consuming public does not
expect that Steak Umm manufactures Steak ‘Em-Up products nor does it expect Steak
Umm to expand into Steak ‘Em-Up’s market. Accordingly, these factors substantially
favor the Defendant.
H.

Weighing the Lapp Factors

71.

Once each of the relevant Lapp factors are considered, the Court must

balance the factors and “determine whether in the totality of the circumstances
marketplace confusion is likely.” Checkpoint, 269 F.3d at 296.
25

72.

An analysis of the Lapp factors in this matter leads to a conclusion that

strongly weighs against finding a likelihood of confusion between the parties’ marks.
73.

The marks have different appearances and meanings and sound only

nominally similar. The marks are not similar and the first factor weighs in favor of the
Defendant.
74.

The Steak Umm brand is, at best, suggestive, and while deserving

protection, is not as conceptually strong as arbitrary or fanciful marks. The Plaintiff
failed to demonstrate its mark is commercially strong, and therefore, this factor slightly
favors the Defendant.
75.

Only the third factor weighs in favor of the Plaintiff because the parties’

products are similarly inexpensive and the consumers of each are not necessarily
sophisticated. However, I accord the third factor less weight in my analysis because the
goods offered by each party are somewhat distinct – Steak Umm targets consumers who
wish to buy their meal in the supermarket and cook their meal at home whereas Steak
‘Em-Up targets consumers who wish to have their meals prepared for them and order out.
While there will invariably be some overlap in targeting prospective consumers, I find
this factor less applicable than the other factors, and accord it little weight.
76.

The two most contested factors in this case, the fourth and sixth Lapp

factors concerning actual confusion, strongly favor the Defendant. I reached this
conclusion because the parties’ marks have coexisted for several years with no evidence
of actual consumer confusion. I declined to accept the Plaintiff’s expert’s conclusion
that the likelihood of confusion between the parties’ marks was either 12.9% or 24.1%
26

after finding several methodological flaws with the surveys. See Discussion, supra at p.
28. Even if Mr. Klein’s expert opinion did not contain numerous fundamental flaws and
I accepted his conclusion that 12.9% or 24.1% of consumers are likely to be confused, the
overwhelming evidence in favor of Steak ‘Em-Up under the other Lapp factors would
nonetheless lead me to conclude that there is no likelihood of confusion.
77.

The fifth factor strongly favors the Defendant. The record clearly indicates

that Mr. Lane did not intend to capitalize on the good will of the Steak Umm mark when
choosing the name of his business and designing his logo. Mr. Lane did not intend for
his store name and logo to suggest a connection to Steak Umm. Accordingly, there was
no intent to cause confusion.
78.

The seventh and eighth factors strongly weigh in favor of the Defendant

because there are differences between the companies in advertising techniques and the
companies target distinct types of consumers.
79.

The ninth and tenth factors substantially weigh in favor of the Defendant

because there are clear differences between the products, how they are sold, and to whom
they are sold.
80.

Thus, based on the totality of the circumstances, I conclude that there is no

likelihood of marketplace confusion between the Plaintiff’s mark and the Defendant’s
mark.
I.

Plaintiff Failed to Establish Grounds for Injunctive Relief

81.

Trademark infringement amounts to irreparable injury as a matter of law.

S&R Corp. v. Jiffy Lube, Int’l, Inc., 968 F.2d 371, 378 (3d Cir. 1992).
27

82.

Because Plaintiff failed to establish a likelihood of confusion between the

parties marks as discussed above, the Plaintiff cannot prevail on its federal claim for
trademark infringement and unfair competition under the Lanham Act.
83.

Accordingly, Plaintiff has failed to establish that it suffered irreparable

harm and an injunction is improper.

III.

DISCUSSION
A substantial portion of the trial involved testimony concerning the fourth and

sixth Lapp factors regarding evidence of actual confusion. Under the fourth factor, “two
parties’ concurrent use of similar marks for a sufficient period of time without evidence
of consumer confusion about the source of the products allows an inference that future
consumers will not be confused either.” Kos Pharm., Inc. v. Andrx Corp., 369 F.3d 700,
717 (3d Cir. 2004) (citing Fisons, 30 F.3d at 476) (internal quotations omitted). This
factor is weighed alongside evidence of actual confusion, the sixth factor. “Evidence of
actual confusion is not required to prove likelihood of confusion” and, as it is generally
difficult to find, it is highly probative where present. Checkpoint Sys., Inc. v. Checkpoint
Software Tech., Inc., 269 F.3d 270, 291 (3d Cir. 2001). There was certainly no evidence
of actual confusion. The plaintiff presented expert testimony to support its likelihood of
confusion argument.
A.

Expert Testimony

Plaintiff offered Robert Klein as an expert in measuring “likelihood of confusion”
for trademark infringement. Mr. Klein testified about his survey intending to measure the
28

likelihood of confusion between the Steak Umm name and the Steak ‘Em-Up name. Mr.
Klein designed the study by showing restaurant names in black block letters without any
logos because he understood that the Defendant’s name was not always used in
connection with the Defendant’s logo. The survey was conducted on the Internet among
people who order take-out from or eat at a casual dining establishment and live within an
approximate 30-mile radius of Steak ‘Em-Up’s South Philadelphia location. The survey
first showed pictures of the boxes for Steak Umm’s frozen steak and burger products.
The survey then showed names of three restaurants in the Philadelphia area, Larry’s
Steaks, Philly Steak & Gyro Co. and either Steak ‘Em-Up (in the test group) or The Steak
Out (in the control group). The respondents were shown each of these restaurants, one at
a time in random order.
The respondents were then asked a series of questions about these restaurants and
the Steak Umm products shown earlier. In Question 1, respondents were asked “Do you
believe that this restaurant [does serve or use the products you saw earlier] or do you
believe this restaurant [does not serve or use the products you saw earlier]?” The order of
presentation of the two bracketed parts of the question was randomized. If respondents
answered “yes” to Question 1, they were then asked Question 2, which asked “Why do
you say that?” These respondents were also asked Question 3 which asked “Are there
any other reasons?”
For respondents who answered “no” or “I don’t know” to Question 1, they were
asked Question 4 which posed “Do you believe that this restaurant [is connected or
affiliated with the company that puts out the products you saw earlier] or do you believe
29

this restaurant [is not connected or affiliated with the company that put out the products
you saw earlier]?” The order of presentation of the two bracketed parts of the question
was randomized. If respondents answered “yes” to Question 4, they were then asked
Question 5, which asked “Why do you say that?” These respondents were also asked
Question 6 which asked “Are there any other reasons?” The survey included 607
respondents.
Mr. Klein’s first analysis attempted to examine the specific reasons why people in
the test group said they believed Steak ‘Em-Up served or used Steak Umm products or
why they believed the two companies were connected or affiliated. Upon analyzing the
survey results and the reasons noted by the respondents, Mr. Klein found that 24.1% of
the survey respondents were confused as to the source of products sold by Steak ‘Em-Up
because of the similarity of the names Steak Umm and Steak ‘Em-Up.
Mr. Klein also conducted a second analysis of the data and examined the
difference between the answers given by respondents to Questions 1 and 4. In this
analysis, 31% of survey respondents in the test group indicated their belief that Steak
‘Em-Up either serves or uses Steak Umm products or that Steak ‘Em-Up is connected or
affiliated with the company that sells Steak Umm sliced steaks and burgers. To account
for guessing and other variables, Mr. Klein conducted the survey with a separate group of
respondents who were shown “The Steak Out” (as a control name) instead of “Steak ‘Em
Up.” For “The Steak Out” name, the analysis showed that 18.1% of survey respondents
in the control group indicated their belief that The Steak Out either serves or uses Steak
Umm products or that The Steak Out is connected or affiliated with the company that
30

sells Steak Umm sliced steaks and burgers. Upon subtracting perceptions created by this
control stimulus, Mr. Klein found that the net confusion measured was 12.9% (31.0% 18.1%).
In response to this survey, Steak ‘Em-Up retained Dr. Michael Rappeport to
review and critique Mr. Klein’s analysis and report. Dr. Rappeport commented and
critiqued the analysis and the Klein report. He did not design his own survey. Dr.
Rappeport testified that there were issues with how Mr. Klein designed, conducted, and
analyzed his survey, including, the use of the “why” question, the Q1/Q4 skip pattern, the
control restaurant name selection, and the wording of the questions asking about the
product vs. the brand.
Dr. Rappeport critiqued the use of the “why” question. Dr. Rappeport opined that
the respondents who answered the “why” question were merely guessing because the
only information the respondents had about the defendant was that it was a restaurant
named “STEAK ‘EM-UP.” Dr. Rappeport testified that he thought the respondents who
answered “yes” to Question 1 should also have been asked Question 4 because some of
the respondents who answered “yes” to Question 1 that Steak ‘Em-Up serves Steak Umm
products might answer “no” to Question 4 that they are related or affiliated. Dr.
Rappeport criticized the use of the control restaurant name “The Steak Out” because it
did not sound similar to “Steak ‘Em-Up” and he thought a name like “Steak ‘n Shake” or
“Steak ‘n Bake” would have been a better control. Dr. Rappeport also was concerned
with the wording of Question 1 because he believed the respondents might interpret the

31

phrase “the products you saw earlier” to refer to generic steak products, as opposed to the
Steak Umm products that the respondents saw in preceding questions.
B.

Analysis

“In borderline cases where evidence of actual confusion is not available or is not
overwhelming, the gap should be filled by a properly conducted survey of the relevant
class of prospective customers of the goods or services at issue.” Urban Outfitters, Inc. v.
BCBG Max Azria Group, Inc., 511 F. Supp. 2d 482, 498 (E.D. Pa. 2007) (Baylson, J.
presiding) (citing McCarthy § 23:17). “In some cases, such such survey evidence can
serve to demonstrate evidence of actual confusion, but only to the extent that the survey
replicates the real world setting in which instances of actual confusion would occur.”
Urban Outfitters, Inc. v. BCBG Max Azria Group, Inc., 511 F. Supp. 2d 482, 498 (E.D.
Pa. 2007).
Steak Umm’s survey of consumers is also not evidence of actual confusion
because Mr. Klein’s survey contains numerous flaws. When combined, these
fundamental methodological flaws undermine the Klein opinion and I find that the survey
does not establish a likelihood of confusion. Survey percentages demonstrating
confusion levels over 50% are always viewed by courts as persuasive evidence of likely
confusion.9 Generally, figures in the range of 25% to 50% have been viewed as support
for a finding of a likelihood of confusion.10 When the “percentage of confusion” survey

9

See e.g., Sears, Roebuck & Co. v. Johnson, 219 F.2d 590 (3d Cir. 1955) (74 percent).

10

See e.g., McDonald’s Corp. v. McBagel’s, Inc., 649 F. Supp. 1268 (S.D. N.Y. 1986) (25% supports finding of
likely confusion); Berkshire Fashions, Inc. v. Sara Lee Corp., 729 F. Supp. 21 (S.D. N.Y. 1990) (a result of 28%
supports a finding of a likelihood of confusion); Gross v. Bare Escentuals Beauty, Inc., 641 F. Supp. 2d 175, 191

32

result dips below 10%, it can become evidence that indicates there is no likelihood of
confusion.11 When the survey evidence of likelihood of confusion yields a result between
11% and 25%, the decision often depends on other issues in the case.
Here, Steak Umm’s survey evidence shows that 24.1% using one analysis, or
12.9% using a separate analysis, of consumers are likely to be confused as to whether
Steak ‘Em-Up uses Steak Umm products, because of the similarity in their names, or that
(S.D. N.Y. 2008) (“The consumer survey evidence indicates that there is a 34.5% confusion rate, or using plaintiffs’
approach, a 47% confusion rate. This substantial rate of confusion, coupled with the numerous anecdotal accounts of
confusion, indicate that there was actual consumer confusion. This factor is sufficient to establish that there is a
likelihood of confusion.” Infringement was found.); John Walker & Sons, Ltd. v. Bethea, 305 F. Supp. 1302, 1305,
n.2 (D.S.C. 1969) (22-60% of respondents: “[T]he surveys proved that when shown to a substantial number of
people, defendant’s [motel] sign brought to mind plaintiff's product, whiskey.”); Bell v. Starbucks U.S. Brands
Corp., 389 F. Supp. 2d 766 (S.D. Tex. 2005), judgment aff'd, 205 Fed. Appx. 289 (5th Cir. 2006) (25% is sufficient
to show a “significant” level of “actual confusion” and to support a finding of infringement.); Seven-Up Co. v.
Green Mill Beverage Co., 191 F. Supp. 32, 35 (N.D. Ill. 1961) (25% is “credible evidence” of likely confusion.);
Helene Curtis Industries, Inc. v. Church & Dwight Co., Inc., 560 F.2d 1325 (7th Cir. 1977) (29% (290 of 998) relied
upon to affirm preliminary injunction.); Piper Aircraft Corp. v. Wag-Aero, Inc., 741 F.2d 925 (7th Cir. 1984) (45%
results are “high” and a factor “weighing strongly” in support of a likelihood of confusion.); A.T. Cross Co. v. TPM
Distributing, Inc., 1985 WL 72660 (D. Minn. 1985) (43% and 34% results are entitled to “great weight” and prove
“actual confusion” as well as “strong likelihood of confusion.”); Gateway, Inc. v. Companion Products, Inc., 384
F.3d 503, 510, (8th Cir. 2004) (39% confusion rate on survey exceeds the rate the court had in a prior case found to
be sufficient.); Thane Intern., Inc. v. Trek Bicycle Corp., 305 F.3d 894, 903 (9th Cir. 2002) (“[W]e must conclude
that the survey provides evidence from which a reasonable jury could conclude that more than one quarter of those
who encounter both Trek and OrbiTrek ads will be confused about the origin of the OrbiTrek exercise machine.”);
Standard Oil Co. v. Standard Oil Co., 252 F.2d 65, 74 (10th Cir. 1958) (40% supports finding of likely confusion:
out of 1,589 persons interviewed, 634 thought that the accused mark Sohio meant “Standard Oil” of Ohio.); J & J
Snack Foods Corp. v. McDonald's Corp., 932 F.2d 1460 (Fed. Cir. 1991) (A result of 30% confused respondents
supports a finding of likely confusion.).
11

Wuv’s International, Inc. v. Love’s Enterprises, Inc., 1980 WL 30296 (D. Colo. 1980) (9% results; no likelihood
of confusion proven); Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352 (9th Cir. 1985) (results of less than 2%
held to support the conclusion of no likelihood of confusion); G. Heileman Brewing Co. v. Anheuser-Busch, Inc.,
676 F. Supp. 1436 (E.D. Wis. 1987), aff'd, 873 F.2d 985 (7th Cir. 1989) (survey result of 4.5% of confusion “falls
well within the range which other courts have determined weighs against a finding of infringement”); IDV North
America Inc. v. S & M Brands, Inc., 26 F. Supp. 2d 815, 831 (E.D. Va. 1998) (Survey result of 2.4% proves “the
absence, rather than the presence, of likely confusion of source or sponsorship between Bailey’s cigarettes and
BAILEY’s liqueurs); Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305 (S.D. N.Y. 2000), judgment
aff'd, 234 F.3d 1262 (2d Cir. 2000) (confusion level of 5% held “virtually indistinguishable” from the control group.
No likelihood of confusion found.); Brockmeyer v. Hearst Corp., 248 F. Supp. 2d 281, 298 (S.D. N.Y. 2003) (3%
confusion results is proof that there will be no likelihood of confusion); CareFirst of Maryland, Inc. v. First Care,
P.C., 434 F.3d 263 (4th Cir. 2006) (No confusion likely between senior CAREFIRST and junior FIRST CARE for
physicians group medical office. Survey showing only 2% level of confusion among 130 persons surveyed is de
minimis and is “hardly a sufficient showing of actual confusion.”); Newport Pacific Corp. v. Moe's Southwest Grill,
LLC, 2006 WL 2811905 (D. Or. 2006) (14% confusion result is “barely above McCarthy's threshold that confusion
results below 10% are evidence that confusion is not likely.”).

33

consumers are confused as to whether there is a relationship or affiliation between Steak
‘Em-Up and Steak Umm because of the similarity in their names. These percentages fall
in a range between 10% and 25% where Courts have found a likelihood of confusion in
some instances, and no likelihood of confusion in other cases. Steak ‘Em-Up’s expert,
Dr. Rappeport, opined that Mr. Klein’s expert report was flawed and the lower bound
(12.9%) was an overestimate. In his expert opinion, he believed that a figure of no more
than 10% is a fair estimate for Klein’s results.
Surveys are only evidence of actual confusion if they replicate the real world
setting in which a consumer would encounter the mark. See Perlman, “The Restatement
of the Law of Unfair Competition: A Work in Progress,” 80 Trademark Rep. 461, 472
(1990). The first issue with Steak Umm’s survey is that it was conducted online and
using only the name of Steak ‘Em-Up. It did not incorporate Steak ‘Em-Up’s logo or the
packaging that accompanies its take-out products, menus, and street sign. This is not
how a consumer would encounter the party’s products in a real world setting and this setup undermines the effectiveness of the survey. The block text is divergent from the
conditions in which a consumer would encounter “Steak ‘Em-Up” in commerce. To
order an item from “Steak ‘Em-Up,” a consumer will inevitably have had to look at the
menu. In order to shop at Steak ‘Em-Up for convenience items, a consumer would view
the signs of the logo and name at the store location. Perhaps, a more effectively designed
survey could include screen shots of the parties’ websites, product packaging or even the
styled text from each company’s logos.

34

Upon analyzing the survey results and the reasons noted by the respondents, Mr.
Klein found that 24.1% of the survey respondents were confused as to the source of
products sold by Steak ‘Em-Up because of the similarity of the names Steak Umm and
Steak ‘Em-Up. However, the first analysis and Mr. Klein’s methodology regarding the
control question (“Why do you say that?) is flawed. Question 2 is not a valid control to
account for guessing. At the time the respondent was asked Question 2, the only stimulus
he or she had to derive the right answer was the name “Steak ‘Em-Up.” When the
respondent answers “the names” (or some variation suggesting that he or she based his or
her answer on the similarity in names), it does not show whether the respondent was
simply guessing. Rather, the significance of a respondent giving a reason connected with
the actual stimulus is a non sequitur because the respondent had no other criteria on
which to base his or her response. The only stimulus available to the respondents was the
name of the restaurants. To give a reason akin to “I gave you my answer because of the
names” is not a control, it’s a mere explanation of how they saw the stimuli and does not
indicate how the Respondents would see the stimuli in the real world versus the survey
world. Thus, I will accord the result of 24.1% yielded from Mr. Klein’s first analysis no
weight because it lacked a valid control under the accepted methods of taking trademark
surveys. Additionally, I find that the use of the block text did not replicate real-world
settings in which a consumer would encounter “Steak ‘Em-Up” in commerce.
Regarding the second analysis that yielded a 12.9% confusion rate, there are three
major errors in addition to the use of the block text. First, Mr. Klein used “The Steak
Out” as the control stimulus and then subtracted the results for the combination of Q1 and
35

Q4 for “The Steak Out” from the results of the same question combination for “Steak
‘Em-Up.” However, “The Steak Out” was not the best control stimulus in this case. I
agree with Dr. Rappeport that “Steak ‘n Shake” or “Steak ‘n Bake” are better control
stimuli because they sound and look more similar. Besides the word Steak, “The Steak
Out” has little in common with either Steak ‘Em-Up or Steak Umm. The fact that “Steak
‘n Shake” is an existing restaurant is irrelevant because the existence of the restaurant
will have minimal, if any, effect on whether consumers believed there was some
connection between Steak ‘n Shake and Steak Umm. “Steak ‘n Shake” or “Steak ‘n
Bake” could have been used instead of “Philly Steak and Gyro” and “Larry’s Steaks” to
allow for multiple controls in the study in addition to “The Steak Out.” Had the survey
incorporated better controls, it may have led to a reliable conclusion.
Additionally, the second analysis also erroneously allows for a biasing skip pattern
between Question 1 and Question 4. Mr. Klein’s survey first asks, in Q1, “Do you
believe this restaurant does serve or use the products you saw earlier, or do you believe
this restaurant does not serve or use the products you saw earlier?” He then asks, Q4,
“Do you believe that this restaurant is connected or affiliated with a company that puts
out the products you saw earlier, or do you believe this restaurant is not connected or
affiliated with a company that puts out the products you saw earlier?” However, he only
asks Q4 to the Respondents who answer “No” or “I don’t know” to Q1. There is no
reason to assume that every person who answers Yes to Q1, (thinks that Steak ‘Em-Up
serves Steak Umm products) will also think that the two companies are affiliated or
connected. Because Mr. Klein never asks the second question, there is no way to know
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whether any people believe that Steak ‘Em-Up may purchase Steak Umm products to
serve or use, but do not think the companies are related or affiliated. The flaw in this
questioning allows Mr. Klein to have “two bites at the apple” to yield favorable results
for his client. Dr. Rappeport correctly notes that if we simply assume no person was
asked Question 4, this would reduce the total number of “confused” in the test group to
88 (29%) and the total number confused in the control group to 52 (17.2%), for a net test
of 11.8% (29.0% - 17.2%).
Even if I accepted 11.8% as a more accurate value, the final problem with Mr.
Klein’s survey becomes that he did not estimate the likelihood of confusion in the
traditional sense, rather, he estimated whether consumers were likely to believe that Steak
‘Em-Up serves or uses Steak Umm products. The results of a survey asking respondents
whether a restaurant named “Steak ‘Em-Up” serves “Steak Umm” products (sandwiches
and burgers) is almost meaningless. Relevant survey questions concern confusion of
source or sponsorship in a source confusion case, not questions focusing on product
confusion. See Sunbeam Corp. v. Equity Indus. Corp., 635 F. Supp 625, 635 (E.D. Va.
1986); Jordache Enters., Inc. v. Hogg Wyld Ltd., 625 F. Supp. 48, 54 (D.N.M. 1985)
(“whether a consumer may perceive the products themselves as similar is little help in
determining whether there is a likelihood of confusion as to source of origin of the
products”), aff’d, 828 F.2d 1482 (10th Cir. 1987). The survey is fundamentally flawed
because it was designed to gather data irrelevant to measuring trademark source
confusion. The Klein survey was designed to measure whether consumers believe Steak
‘Em-Up uses or sells Steak Umm products in Question 1. Whether a steak shop
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purchases and uses or sells Steak Umm products does not necessarily demonstrate source
confusion. A hypothetical consumer may believe that Steak ‘Em-Up is simply a vendor
or seller of Steak Umm’s frozen steaks and hamburgers but that there is no affiliation, no
agency, no connection, and no relationship between the two. Because Mr. Klein failed to
ask the connection/affiliation question to all consumers, his survey fails to show source
confusion.
Accordingly, numerous fundamental flaws in Mr. Klein’s survey undermine the
reliability of his numbers. Dr. Rappeport estimates that no more than a 10% likelihood of
confusion is a fair estimate for Mr. Klein’s results. Dr. Rappeport’s estimate is based
solely on his expertise. I find and conclude that there is no evidence of likelihood of
confusion due to the multiple flaws in the Klein survey and Dr. Rappeport’s critique of
the Klein survey. Having no evidence demonstrating a reliable percentage of a likelihood
of confusion, this Court gives no weight to the survey results.12

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I declined to accept the Plaintiff’s expert’s conclusion that the likelihood of confusion between the parties’ marks
was either 12.9% or 24.1% after finding several methodological flaws with the surveys. Even if Mr. Klein’s expert
opinion did not contain numerous fundamental flaws and I accepted his conclusion that 12.9% or 24.1% of
consumers are likely to be confused, the overwhelming evidence in favor of Steak ‘Em-Up under the other Lapp
factors would nonetheless lead me to conclude that there is no likelihood of confusion and the Defendant would still
prevail. The Defendant also argues that the Plaintiff committed three separate acts of fraud on the United States
Patent and Trademark Office when it renewed U.S. Trademark Registration No. 1116446 for rolls and No. 2375933
(frozen food sandwich kits) used in connection with its goods and services. At his deposition, Mr. Szortyka testified
that Steak Umm had not sold rolls at the time that he made his sworn statement to the USPTO. However, Mr.
Szortyka clarified this point at trial and explained that at the time of his deposition, he forgot that one of his three
products he was selling contained rolls in the box. I conclude that Mr. Szortyka, by or though his counsel Mr.
Goldstein, did not make intentional false statements in the renewal of its applications. Section 35(a) of the Lanham
Act provides that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 15
U.S.C. § 1117(a)(3). Defendant asks for an award of attorney’s fees in this case because of the Plaintiff’s alleged
culpable conduct when pursuing its claims. I find that the Plaintiff did not engage in culpable conduct. The
Plaintiff’s claim was not unjustified, groundless, or frivolous and the plaintiff’s subjective conduct throughout the
litigation was not vexatious, as required to impose an award of fees. The Plaintiff survived a motion for summary
judgment, and prevailed on one of the Lapp factors at trial. Although the Plaintiff did not come close to meeting its
burden at trial, and the factual findings of this Court under nine of the ten Lapp factors supports a judgment in favor
of the Defendant, I do not find that this is an exceptional case justifying an award of attorney’s fees.

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IV.

CONCLUSION
For the foregoing reasons, the Court concludes that the Defendant did not infringe

on Plaintiff’s mark. Nor is the Defendant liable for any of the other claims alleged. The
Plaintiff failed to establish grounds for injunctive relief. The Defendant did not
successfully establish an unclean hands defense and this case is not an exceptional case
that justifies an award of attorney’s fees in favor of the Defendant. Judgment will be
entered in favor of the Defendant, Steak ‘Em Up, Inc., and against the Plaintiff, The
Steak Umm Company, LLC.
An appropriate Order follows.

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