New York's Carnegie Deli puts Pittsburgh eatery in a pickle over trademark
September 11, 2014 12:00 AM
Wesley Ross holds a plate of turnovers in his deli on Fourth Avenue. He had named the business the “Carnegie Deli” but was forced to change the name after being sued by New York's Carnegie Deli.
Wesley Ross at his renamed deli on Fourth Avenue, Downtown.
By Kim Lyons / Pittsburgh Post-Gazette
Pittsburgh and New York City can both lay claim to the heritage of Andrew Carnegie, but it appears that there is only room for one eatery offering sandwiches bearing the 19th-century industrialist’s name.
Longtime Pittsburgh restaurateur Wesley Ross found that out the hard way.
In February, he opened Carnegie Delicatessen and Catering in the Bank Tower building, Downtown. The veteran chef, who previously owned the Not Just Toast diner in Robinson, told the Pittsburgh Post-Gazette in April, “We have all these people moving back into town, and no more classic delis.”
The name harks back to the man whose first steel plant — the Edgar Thomson Works — still operates in Braddock and who became the richest man in the world in 1901 when he sold his Carnegie Steel business to J.P. Morgan. Today’s U.S. Steel, still based in Pittsburgh, was formed out of that deal, although Mr. Carnegie’s philanthropic endeavors are still visible in New York as well.
It didn’t take long for the New York version of the Carnegie Deli — an establishment opened in 1937 in the borough of Manhattan — to take issue with Mr. Ross’ use of the name. That company filed suit in U.S. District Court in May, accusing the Pittsburgh restaurant of violating the Lanham Act.
The suit demanded not only that the Pittsburgh deli immediately stop using the name, but that Mr. Ross “pay over to plaintiff all gains, profits and advantages realized from the sale of infringing and/or diluting goods and services,” as well as pay damages.
Mr. Ross said he immediately took down all signs with the Carnegie name at his Fourth Avenue storefront and took down his website. “I was operating for about two weeks with no name at all,” he said.
He since has changed the deli’s name to Wesley’s Deli. This time, he hired a law firm with national presence, at some expense, to research “Wesley’s Deli” as a name.
The Lanham Act deals with trademark infringement, trademark dilution and false advertising. John McIlvaine, director of Webb Law Firm, Downtown, said celebrities have used the act to sue for dilution of their trademark or image, something that the estate of Elvis Presley might do.
Regardless of whether the Carnegie Deli in New York is as recognizable as Elvis, the company does hold registered U.S. trademarks for several logos and for the “Carnegie Deli” name. That federal trademark trumps any local business name, Mr. McIlvaine explained.
Before he started the business, Mr. Ross said, he had filed a fictitious name request with the state of Pennsylvania and did the requisite local newspaper advertising of his company’s name.
Last month, after realizing the likely cost of a lengthy battle with his well-heeled opponent, Mr. Ross filed for Chapter 11 bankruptcy reorganization. His attorney said the main reason for the filing was the lawsuit from the Carnegie Deli.
The attorney for Carnegie Deli owners Rowab Enterprises said just researching the name in Pennsylvania was not sufficient.
“You could probably get some variation of the name ‘Coca-Cola’ just going through the state of Pennsylvania,” Charles Knull of Knull PC in New York City said, “but as soon as you tried to do anything with it, you’d have about 50 lawyers after you.”
Mr. McIlvaine agreed. “My advice there would have been to do a clearance search, to engage a trademark attorney to do a nationwide search of all 50 states,” he said.
In most infringement lawsuits he has seen, Mr. McIlvaine said, if the infringer stops using the trademarked name or likeness, the lawsuit ends there. The burden of proof for damages is much higher, he added, and most companies that sue just want to protect their name from commercial use by someone else.
Mr. Knull is preparing to file for an injunction that will prevent Mr. Ross and his company from ever using the name “Carnegie Deli.” With Mr. Ross in bankruptcy protection, there is little other recourse available to his clients, Mr. Knull said.
Mr. Knull said his clients would also have liked to have seen some kind of “corrective advertising,” where Mr. Ross would have made clear that no connection exists between his restaurant and the New York eatery.
“But at this point, that’s not going to happen,” Mr. Knull said.
For his part, Mr. Ross did not expect the reaction he got from New York.
“The Carnegie name is so synonymous to Pittsburgh,” he said.
While there are Carnegie libraries everywhere, and New York has Carnegie Hall (which has dubious pronunciation), Pittsburgh even has a suburb named Carnegie.
Even though Mr. Ross has stripped the Downtown deli of all traces of the Carnegie name, his struggles continue. As recently as last week, Mr. Ross, 54, said, he wasn’t sure he was going to make payroll.
But Wesley’s Deli is still serving up sandwiches at the Fourth Avenue location, near Point Park University.
On a recent afternoon, a customer asked, “Did you guys just open?”
Mr. Ross said that happens a lot, but even if customers are just discovering his deli, he’s happy to have them. He said he’s not sure at what point he may have enough, but he plans to keep plugging as long as he can.
Kim Lyons: 412-263-1241 or email@example.com. On Twitter: @SocialKimly.
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