In battle over Philly cheesesteak trademark, Steak'em Up prevails

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A South Philadelphia corner store and sandwich shop can still call itself Steak'em Up, a federal judge ruled, despite a trademark challenge from national frozen food giant Steak-umm.

Four years ago, Steak'em Up was served with a cease-and-desist order from Steak-umm, a company that sells frozen steak sandwich meat and hamburgers in grocery stores nationwide, claiming that the shop had infringed on its trademark. U.S. District Judge Lawrence F. Stengel of the Eastern District of Pennsylvania disagreed, ruling that the two establishments aren't direct competitors, and there is no significant evidence that consumers are confused by the names.

In addition, Judge Stengel said the two companies had very different and distinct logos.

Judge Stengel applied a test that the U.S. Court of Appeals for the Third Circuit developed in its 1983 opinion in Interpace v. Lapp and found that nine of the 10 points in the test favored Steak'em Up.

"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," Judge Stengel said in his 39-page opinion in Steak-umm v. Steak'em Up.

The first factor asks how similar the "marks" are. Judge Stengel found that they are "visually distinct": Steak'em Up has its name written in capital letters that arch over a cartoon mobster holding a steak sandwich like a machine gun.

Steak-umm, meanwhile, packages its product in red cardboard boxes with a photograph of a steak sandwich and thick, typewritten letters that say its name, according to the findings of fact in the opinion.

Judge Stengel took the fourth and sixth factors in the 10-point test together -- weighing the length of time the names have been used and the evidence of confusion of the names.

Steak-umm was started by Gene Gagliardi in 1975 and named by a friend "after a period of quail hunting and bourbon drinking," Judge Stengel wrote in a footnote. The principal place of business for the company, now owned by Quaker Maid Meats, is in Reading, Pa.

About 30 years later in Philadelphia, Michael Lane opened his corner grocery store and sandwich shop called Steak'em Up. The name was a play on the phrase, "Stick 'em up," as "it was his intention to refer to the criminal gangster culture that he considers to be popular in South Philadelphia," according to the findings of fact in the opinion.

In the five years that both names existed, Judge Stengel said, "there is no evidence of actual confusion."

On the fifth factor, which assesses the intent of the defendant in making a trademark, Judge Stengel said, "The record clearly indicates that Mr. Lane did not intend to capitalize on the goodwill of the Steak-umm mark when choosing his mark."

Judge Stengel also noted that the companies' advertisements and target audiences do not overlap in a meaningful way, geographically or otherwise, and said that there is little possibility for public confusion of trademarks or products.

food - legalnews

Saranac Hale Spencer: or 215-557-2449. To read more articles like this, visit First Published April 23, 2012 12:00 AM


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