Judge Paul Engelmayer
On July 5, the court declared Second Avenue Deli’s Instant Heart Attack Sandwich mark did not violate the Lanham Act. Its concurrent use order allowed the deli to use that mark at its Manhattan restaurants. However, the deli was denied declaratory judgment that the Instant Heart Attack Sandwich markand the Triple Bypass Sandwich markcould be used throughout the tri-state area. The court denied the deli reconsideration of its order. It noted that defendant Heart Attack Grill’s (HAG)’s prior consent to five categories of usage rights by the deli that would not create a likelihood of confusion, and that the deli’s opposition to HAG’s voluntary motion to dismiss counterclaims opened broader issues, including the scope of their respective marks’ permissible concurrent usage. HAG’s grant of rights exceeded the rights the deli had by virtue of its senior usage of the term “instant heart attack.” Further, the concurrent use order did not limit the deli’s usage rights as to the Heart Attack and Triple Bypass marks. Their use outside Manhattan was not precluded. Rather, in its July 5 order the court declined to decide if expansion beyond Manhattan might give rise to a likelihood of confusion.
